First Circuit finds "duck tours" generic for, well, duck tours
In a remarkably lengthy decision, the First Circuit reversed the grant of a preliminary injunction in a trademark case concluding that the phrase "duck tour" was generic for the parties' services and that the District Court's conclusion to the contrary was clear error.
The case pitted the plaintiff--Boston Duck Tours--against its competitor Super Duck Tours. On Boston Duck Tours' motion for a preliminary injunction, the District Court concluded that the phrase "duck tours" was non-generic based entirely on a dictionary definition of "duck" that did not include any reference to DUKWs (amphibious army vehicles used in World War II) or amphibious vehicles. The District Court thus enjoined Super Duck Tours from using the phrase "duck tours" or a cartoon duck (both parties used a cartoon duck in water as part of their design marks) as a trademark in connection with its tour service in the greater Boston area.
The First Circuit reversed the grant of a preliminary injunction based largely on its conclusion that the District Court erred in finding the phrase "duck tours" to be non-generic. In reaching this conclusion, the First Circuit looked to evidence overlooked by the District Court, including third-party sources that used the phrase "duck tours" generically to refer to amphibious sightseeing tours and Boston Duck Tours' own generic use of the phrase "duck tour." The First Circuit also considered the widespread use of "duck" and "duck tours" by companies around the country that provide the same amphibious sight-seeing services (32 of the 36 tours described in the record used the term "duck" and more than 10 used both "duck" and "tour(s)").
You can find the First Circuit's opinion, including concurring opinion, here (PDF, 74 pages).
