Question: BOSTON DUCK TOURS, LP v. SUPER DUCK TOURS, LLC, 531 F.3D 1 (1ST CIR. 2008)FACTS Boston Duck Tours, LP, and Super

Duck Tours, LLC, offered sightseeing tours in Boston using amphibious vehicles known as "ducks." (The vehicles are named after World War II army amphibious vehicles called "DUKWs.") Similar types of tours are offered in several U.S. and foreign cities. Boston Duck has offered tours since 1994. Its service is well-known and popular, and over 585,000 people took a Boston Duck tour in 2006. It holds several state and federal trademark registrations for the word mark "Boston Duck Tours." Super Duck began offering its tours in 2001 in Maine. It began operating in the Boston area in May, 2007. Super Duck has a federal registration on the word mark "Super Duck Tours." Boston Duck sued Super Duck for trademark infringement, and was awarded a preliminary injunction preventing Super Duck from using the term "duck tour." Super Duck appealed, arguing that the phrase "duck tour" was generic. DECISION The appellate court reversed the award of a preliminary injunction in favor of Boston Duck. The court stated, "[A] generic term, such as ‘car' or ‘pizza,' ... does not have capacity as a source-identifier because it designates the class, or ‘genus' of goods. Rather than answering the question ‘where do you come from?', a generic term merely explains ‘what are you?'

The court went on to explain: Because they serve primarily to describe products rather than identify their sources, generic terms are incapable of becoming trademarks, at least in connection with the products that they designate. Awarding trademark rights to any user of the term, especially the first user, would harm competitors and consumers alike. Competitors unable to use a common term that describes or designates their product are at a significant disadvantage communicating to potential customers the nature and characteristics of the product. Likewise, consumers will be forced either to pay a higher price to purchase the desired goods from the seller who owns the generic term as a trademark or expend additional time investigating the alternative products available. Therefore, in accord with the primary justifications for protecting trademarks-to aid competition and lower consumers' search costs-the law does not grant any party exclusive rights to use generic terms as trademarks. In evaluating a genericism claim, the court should consider several sources to determine what the "primary significance" of the phrase is: "

(1) consumer surveys;

(2) the use of the term in media publications;

(3) use of the term by competitors in the industry;

(4) purchaser testimony concerning the term; and

(5) the plaintiff's use of the term." Here, the evidence showed that "duck tours" is widely used in the media in a generic sense to refer to amphibious, sightseeing tours.

In addition, of the at least 36 companies providing such tour services around the world, 32 use the term "duck" in their company or trade name, and more than 10 use both the words "duck" and "tour." The appellate court concluded that when consumers hear the term "duck tour," they associate it primarily with a service, not a source. Thus: To grant Boston Duck exclusive rights to use the phrase in the Boston area would be to erect a barrier of entry into the marketplace, thereby preventing other entities, such as Super Duck, from calling their product by its name. Super Duck, as well as other potential competitors, would be placed at a significant market disadvantage. The appellate court thus found that the phrase "duck tour" was generic in connection with the services (amphibious boat tours) offered by both parties.