*1 TOURS, LP, Plaintiff- BOSTON DUCK
Appellee, Cross-Appellant, TOURS, LLC,
SUPER DUCK
Defendant-Appellant,
Cross-Appellee. 07-2078,
Nos. 07-2246. of Appeals,
United States Court
First Circuit.
Heard March 2008.
Decided June *6 Pierce, R.
Robert with whom Christo- pher Engebretson D. Pierce and & Man- dell, brief, P.C. were on plaintiff, appel- lee. Dalton, M.
Joshua with whom Victor H. Polk, Jr., Martin, II, Ralph C. Lawrence Jr., Stanley, T. and Bingham McCutchen LLP, defendant, were brief for appel- lant. Lipez Howard,
Before Circuit Judges, DiClerico, Jr., Senior District Judge.* LIPEZ, Circuit Judge.
In this trademark infringement dispute, defendant-appellant Duck Tours Duck”) (“Super appeals preliminary in- junction granted plaintiff-appel- favor of (“Boston Duck”). lee Boston Tours Asserting tour” of a image splashing duck water are *7 generic, and therefore there that is no likelihood confusion between Boston marks, Duck’s marks and Duck’s Super requests appellant dissolve we injunction requiring the alteration of its logo. Appellee trade name and has also cross-appealed the order of the district court, arguing the court committed by enjoining Super clear error Duck in using from the term “duck” its trade name. carefully reviewing
After the record in dispute, this we that the conclude district by finding court committed clear error tour” and nongeneric, “duck there- by according weight it too much in its analysis. likelihood confusion Conse- * Hampshire, sitting by designation. Of the District of New Parties B. The issuing pre- in erred the court
quently, Super prevented which injunction, liminary Duck has offered Since tour” in using Duck from area and tours of the Boston sightseeing court The district name. own trade River, genuine reno largely with Charles finding a likelihood of in clearly erred also Andy II. from War vated DUKWs World and Bos- Super Duck’s confusion between Duck, Wilson, start founder of Boston Therefore, the design marks. Duck’s ton Memphis, after a visit to company ed an in- not have issued should court also experienced he where Tennessee us- Super Duck from junction preventing vehicles, The which first tour. his dismiss Boston mark. We design ing its and a rainbow of colors painted with given moot our res- cross-appeal as logo,1 Duck take with the Boston marked other issues. olution of Boston land customers to a number Street,
marks, including the State Charles Market, End, House, Quincy the North I. Duck has Newbury Street. Boston press national and international received A. Duck Tours numerous awards for coverage as well as here, facts background recite We in the The tours were featured its tours. throughout information adding additional Parade after the Boston Red Series World Both appropriate. analysis where in 2004 and won the World Series Sox Duck are in the 2002, 2004, the Patriots’ after sightseeing tours via offering business alone, In 2006 over Super Bowl wins. Boston, using amphibi- land and water 585,000 enjoyed operated customers tour commonly to as referred ous vehicles by Boston Duck. market such tours to idea to “ducks.” in the Begun Duck is also by Melvin Flath hatched public tours providing sightseeing business of purchased II. He War shortly after World using Rather than reno- land and water. “ducks”), amphibi- (pronounced DUKWs DUKWs, Super Duck uses custom- vated func- used the war to army vehicles ous Hydra- called amphibious made vehicles boats, and fitted trucks and tion as both containing several features Terras company, based seats. His them with bus virtually Be- make the vessels unsinkable. Wisconsin, Dells, became in Wisconsin features, Hydra-Terras’ which cause of country. tours in the of such purveyor first “larger and more modern” make them *8 tours have Recently, amphibious vehicles, these original Super than the DUKW many cities in the United in surfaced trade name adopt Duck decided to abroad, including San Francis- The States and in 2001. SUPER DUCK TOURS Seattle, co, Chicago, and Philadelphia, company’s super-hero theme name and the companies that Many “bigger of the of- portray London. seek to services are newer”; “duck tour” company essentially tours use the com- fer these and way describing “super” descrip- in names as a the word with the their trade bined offered, logos tours.” They also use various tion of the service their services. in theme was also reflected “super” cartoon duck and water featuring website, advertisements and company’s their businesses. represent and advertise V, logo. image of the A Section Appendix 1. for an See infra. logo provided description in detailed (“It’s parody Superman contain a C. The which Trademarks Duck!”) Super a bus. It’s a boat. It’s a as Boston Duck owns several state and fed logo, well as its which consists of a white comp registrations eral trademark for the bill, orange duck with an cartoon muscular word mark BOSTON DUCK osite2 arms, cape. and a composite TOURS and a design mark con sisting company’s of the logo name and Duck Super opened its business in Port- connection with its sightseeing tour ser land, operated Maine in 2001 and exclu- marks, vices. For both of these 2003, sively company there until when the registrations federal on the Princi and, operations ceased its in Maine seek- pal Register3 subject to disclaimers market, ing larger England New started “tours,” for the terms “duck” meaning planning operations in Boston. Unable to it possess does not rights exclusive necessary approvals obtain and Hack- separate use either term apart from own, ney begin operations licenses to on its full, See, registered mark. e.g., Dena Super purchased Duck England New Int’l, Inc., Corp. v. Belvedere Tours 2006 and thereafter obtained the (Fed.Cir.1991). Boston Duck necessary permits and licenses to conduct also owns two federal trademark registra its tours. In Super late 2006 and tions, one for composite word mark steps Duck took begin opera- its Boston BOSTON DUCK TOURS and the second tion, including website, launching its ad- composite mark, for its design in connec vertising publications, its services in local tion “clothing, namely, sweatshirts, with T- making capital substantial and re- shirts, shirts, golf sweaters, visors, and source investments in its operations. In hats.”4 Boston Duck claims first-use May Super Duck date of 1993 for three registra entered into an of its four tions; fourth, agreement Boston, with the word mark in Discover an inde- con nection apparel, with claims a pendent tours, first-use company trolley that offers date of 1995. Super Duck does not dis whereby agreed Discover Boston to sell pute that Boston Duck maintains trade tickets for in exchange tours priority rights the Boston area for a sales commission. Duck intro- respect to its marks. month; duced its tour operations the same area, Bay the tours avoid the Back a focus Super Duck maintains one federal regis tours, of Boston Duck’s instead concentrat- tration for the word mark SUPER DUCK ing on the Boston waterfront area. on the Supplemental Register,5 TOURS mark, "composite mark, 2. A mark” a mark registration that consists tered of the mark, separate registrant’s of several elements. If a mark ownership con- and of components merged togeth- registrant's tains that "are so right reg- exclusive to use the they regarded er that separate cannot be istered mark.” Id. ..., single unitary elements the mark is a McCarthy, McCarthy mark.” 4 Thomas applications In ap- connection with its Competition § Trademarks and 19:66 *9 parel, required Boston Duck was to disclaim Unfair (4th ed.2008). "Boston,” the term but not "duck” or "tours.” procedural 3. There are a number of and sub- legal registra- stantive benefits that come with may registered Supple- 5. A mark be on the Principal Register. tion of a mark on the Register See inherently mental if it is non-distinc- McCarthy, supra, (such § example, descriptive phrase), 19:9. For tive aas and is "registration Principal Register pri- on "capable achieving the of trademark status validity regis- through acquisition secondary ma facie evidence of the meaning of the the of injunction July 11. Two Super on preliminary tour services. with its connection later, judgment, days the court entered its in 2001 on for the mark Duck filed in part Boston Duck’s motion and granting application its was Principal Register, but part. it in the court denying Specifically, Patent and rejected by the United States (the nongen to “PTO”), found the term “duck tours” be which Office Trademark amphibious sightseeing tours in descrip- eric for merely ruled that was area, capable therefore the Boston and tive, protec- not entitled to and therefore protection. The court used sec- trademark Super Duck could establish tion unless test es result, eight-part likelihood of confusion meaning. Super Duck ondary As a de Pignons Mecanique de S.A. Supple- tablished register the mark on agreed Corp., to disclaim Precision Polaroid further, Register, and mental (1st Cir.1981) (the “Pignons factors” tours.” use exclusive “Pignons analysis”),6 and concluded or registered July mark has been since Duck a likeli that Boston had established Super and Duck claims a first-use on of its trade hood success the merits of 2001. date Accordingly, infringement claim. History D. Procedural enjoined “using court Duck from Super as the term ‘duck or a cartoon duck tours’ 2, 2007, July Duck filed a On Boston ... with its a trademark in association Tours, against Duck al- complaint Super sightseeing greater tour in the service infringement federal leging trademark Further, enjoined Super area.” it Boston 32(1) of Section of the Lanham violation using in a Duck from the term “duck” two- Act, § codified federal U.S.C. conjunc word or three-word trademark in competition, unfair tortious in- and state with either or “tours.” tion “Boston” prospective terference with business rela- and a state tionships, flock of other prelimi- The court denied Boston claims. federal In connection with these injunction tortious nary request on the claims, Boston court for Duck asked the claim, interference that the tortious finding prelimi- temporary restraining order by alleged conduct Boston Duck was in nary injunction Super Duck prevent Boston, in- by fact committed an Discover using logo, any from or trademark or agency Super dependent unrelated to other mark similar to Boston confusingly Finally, pursuant Duck. Fed.R.Civ.P. TOURS, Duck’s mark DUCK in 65(c), BOSTON court Duck to required Further, connection with its services. it $100,000 in the post a bond amount of sought enjoin from interfer- Super Duck security any damages costs and ing pro- with Duck’s relations may be incurred or suffered spective customers. it should be determined injunction improvidently granted. receiving
After
affidavits and exhibits
parties,
from
court held
both
the district
Both Boston Duck and
Duck chal-
lenge
appeal
non-testimonial
the motion for
on
the district
hearing
aspects
marks;
McCarthy, supra,
similarity
"the
distinctiveness.”
factors:
registered
goods;
similarity
relationship
12:1. A
cannot be
be-
term
trade;
Supplemental Reg-
Principal
parties’
on either the
or
tween the
channels of
rela-
isters.
tionship
advertising;
Id.
parties'
between the
prospective purchasers;
classes of
evidence of
confusion;
Pignons,
In
the court stated that when de-
actual
the defendant's intent in
mark;
termining
adopting
strength
whether a likelihood of
and the
confusion
*10
exists,
following
plaintiff’s
a court
mark.”
should examine the
ing
that the
“duck tours” and the
On appeal, we review
grant
the
of a
cartoon
for
image of a
duck
preliminary injunction for abuse of discre
provide.
both companies
the services
Su-
Weikert,
tion.
part of trademark in III. its services. Before the addressing specific argu
II. ments raised on we forth appeal, set as background essential some basic principles deciding When motion for of trademark law related to the use of injunction, preliminary a district court generic terms marks. “(1) though Even weighs plaintiffs several factors: Super Duck (2) acknowledged has merits; likelihood of success on the potential irreparable harm in ab mark BOSTON DUCK TOURS is entitled (8) injunction; issuing sence of an whether to protection, thereby trademark conced injunction an will burden the defendants ing the first element of less than denying injunction an would bur claim, infringement trademark Borin see (4) effect, den plaintiffs; and if quen v. M.V. Corp. Trading Corp., Biscuit any, public on the interest.” United 112, 116 (1st Cir.2006), 443 F.3d we discuss (1st Weikert, States v. Cir. background principles these trademark be 2007). factor, plaintiffs first like they genericism analysis cause inform our success, lihood of is “the touchstone of tours.” injunction preliminary inquiry.” Philip Although explicitly trademarks are not Morris, v. Harshbarger, Inc. authorized (1st Cir.1998). United States Constitut moving party “[I]f ion,7 system legal our federal offers statu cannot he likely demonstrate that tory protection adopt for entities that quest, remaining succeed in his factors curiosity.” become matters of idle New use trademarks market to advertise and contrast, ("The By gives Congress gives Congress express the Constitution Constitution laws, express authority govern power patent copyright establish laws enact I, ing patents copyrights. Congress rely general U.S. Const. art. while the must 8;§ Wright, power regulate foreign 13B see also Charles Alan Arthur interstate and com (foot Cooper, R. regulate Miller & Edward H. Federal Prac merce in order to trademarks.” (2d omitted)). 1984) tice and Procedure ed. note *11 12 To succeed on a claim of trade generally See goods and services.8
their Act). (the §§ 1051-1129 Lanham plaintiff 15 mark estab infringement, U.S.C. must justified by the substan is protection (1) This trade lish that its mark is entitled to for both that trademarks offer tial benefits (2) protection, allegedly mark and to dis Serving businesses. consumers and infringing likely use is to cause consumer goods, as well as tinguish identify and Biscuit, Borinquen confusion. 443 F.3d sources, concisely impart their trademarks “likely have confu interpreted 116. We consumers, reducing to their information sion” to mean “more than theoretical allowing to make costs and them search possibility of confusion.” Int’l Ass’n of closely that more coincide decisions Workers, AFL- Aerospace Machinists and Perry preferences. Ty Inc. v. their See Ctr., 103 Winship Nursing CIO Green (7th Cir.2002) man, 509, 510 (1st Cir.1996). 196, F.3d 200 In other (“The glance knows at a consumer who words, allegedly infringing conduct buy being he asked to whose is brand confounding must create “a likelihood if responsible to knows whom hold appreciable reasonably pru an number product whose to disappoints brand and purchasers exercising ordinary care.” dent pleases.”). future buy if brand Id. at 201. rely trade heavily on Because consumers choices, making marks when businesses mark is to A entitled trademark product an incentive to maintain also have if it is protection capable functioning they con disappointed lose quality, lest Pesos, goods. a source-identifier of Two id. sumers. See Cabana, Inc., 763, Inc. v. Taco 505 U.S. trade The considerable reliance on 769, 2753, 112 120 S.Ct. L.Ed.2d 615 an incen by marks consumers also creates (1992). categorizes law pro Trademark typically competing, tive for other less posed along spectrum marks of distinct businesses, pass “to off their successful iveness,9 capacity on their to based serve by inferior as the successful brand brand a source-identifying such function. A trademark, confusingly similar adopting a (1) (least mark is classified as: goodwill creat appropriating effect (2) (3) distinctive), descriptive, suggestive, producer ed of the successful (4) (5) (most arbitrary, or fanciful distinc designed, Trademark law is brand.” Id. tive). 768, (citing Id. at 112 S.Ct. 2753 prac part, prevent “passing-off’ to these Hunting Abercrombie & Fitch Co. v. that re tices and the consumer confusion World, (2d Cir.1976)). Inc., 9 it. in sults from See id. Trademark Marks suggestive—COP— classified as fringement specifically targeted law is to screen10—arbitrary— concern. COPP ERTONE address this throughout ing, designation legal 8. The term "trademark” is used does not have the ” opinion this both include trademarks and status of a ‘trademark’ or 'service mark.’ identify § McCarthy, supra, Trademarks service marks. serve 11:2. distinguish goods; perform service marks suggestive imagi- requires 10."A if it term the same function services. In the context nation, thought perception reach a appeal, it without this is a distinction goods.” conclusion as the nature of difference. Techs., Equine Equitechnology, Inc. v. (1st Cir.1995) key (quoting is a of art F.3d term 'distinctive' term Blinded "The designation law.... If a is not Ass’n v. Veterans trademark Veterans Blinded Am. 'distinctive,' Found., (D.C.Cir.1989)); it is not a 'mark.' Without achiev- distinctiveness, ing inherently McCarthy, supra, either or see 11:62. acquisition secondary through suggestive lotion mean- COPPERTONE suntan
13 (D.C.Cir.1989)), computers APPLE 11—or fanciful— such as for SPORTS ILLUS- products12—are petroleum EXXON for TRATED for a sports magazine. Because inherently all distinctive be- considered descriptive inherently marks not capa- are a they capacity cause have the to serve source-identifiers, serving ble of as such source—identifying upon function first may only registered marks be on the Prin- use. the Fourth has recited: As Circuit cipal Register after the provid- owner has is,
The more distinctive the trade mark ed sufficient evidence establish that the greater stimulating its influence public associates the term or not sales, memory hold on of pur- only a specific with or quality, feature but associating of and the likelihood chaser a single also with commercial source. See designations goods similar on other with McCarthy, § 2 supra, 15:1. aWhen de- If trade mark is a same source. scriptive phrase becomes with a associated word, Kodak, such it coined as is more source, single commercial the phrase is probable goods that all which a simi- said have “acquired or distinctiveness” designation regarded lar is will be used “secondary meaning,” and func- therefore emanating as from the same source than a tions as trademark. See 15 U.S.C. when trade-mark one in is common 1052(f) § (“[N]othing pre- [herein] shall variety goods, use on the of such as registration vent a mark used or “Gold Seal” “Excelsior”. which applicant has become distinctive Co., Arrow v. Brewing Distilleries Globe commerce.”). applicant’s goods For (4th Cir.1941) 117 (quoting F.2d 349 example, when public perceives (First) § Restatement 731 e Torts cmt. phrase SPORTS ILLUSTRATED as a (1938)) omitted). (quotation marks Ac- particular sports magazine in addition to suggestive, arbitrary, cordingly, and fanci- its primary meaning as a of a description may ful registered terms be as trademarks element, specific feature or has Principal Register on the under the Lan- “acquired or “secondary distinctiveness” producing any ham Act without actual evi- may meaning” pro- receive trademark source-identifying dence of their attributes is, therefore, “A tection. mark considered public’s perception or the of these marks. (and, thus, eligible distinctive for trade-
Descriptive marks are those mark protection)
inherently
if it either is
“convey!
an
idea
]
immediate
or
acquired
distinctive
exhibits
distinctive-
ingredients, qualities or
characteristics
gained through secondary meaning.”
ness
goods”
attached,
they
to which
see
Biscuit,
Borinquen
ing “pizza,” “car” Blinded Veterans Ass’n or is one does not have Blinded Found., Am. Veterans capacity as it source-identifier because computers because it hints the nature of the connected its use connection product. technological other items. arbitrary 11. “An of a or consists word 12. "A fanciful mark a word that coined is is symbol usage express functioning purpose that is in common in the lan- for the guage, arbitrarily applied goods any but to the It be trademark. could also or obscure question way or buyers.” services in in such that it is archaic term not familiar to descriptive suggestive.” McCarthy, McCarthy, supra, § or The 11:4. mark EXXON supra, arbitrary 11:4. mark APPLE is is fanciful because it was or de- invented computer-related signed solely designate petroleum because items its com- and oth- fruit, goods. meaning. mon is a definition which unrelated er related It has no other class, expend time goods. or as a trademark or additional “genus” designates the Fitch, 9; products F.2d at alternative investigating & See Abercrombie *13 Firearms, Therefore, v. Bushmaster in accord with LLC available. Id. Colt Def. (1st Cir.2007) (“ 701, 705 ‘A justifications primary protecting the for one does not distin- competition is and lower generic term trademarks—to aid producer one from the the guish goods costs—the law does not consumers’ search Instead, it is one that goods any of others. to use grant party rights exclusive through or common definition either generic terms as trademarks. as refer- to be understood
use has come Super turn to Duck’s several We now particular to of which the ring genus the challenges to the conclusions of the district ” Keebler (quoting Co. product species.’ is a court. 366, 373- Corp., 624 F.2d v. Rovira Biscuit Cir.1980))). (1st answer- Rather than 74 IV. you “where do come ing question the from?”, merely explains term generic a begin We with Boston McCarthy, 2 (quoting Id. you?” “what are infringement against trademark claim Su 12:1). supra, Duck the per parties’ based on word appeal, Super challenges marks. On Duck they primarily serve to
Because
Super
the district court’s conclusion that
than identify
rather
products
describe
Duck’s use
its mark
DUCK
SUPER
sources,
incapable
generic
their
terms are
likely
among
to cause confusion
trademarks,
TOURS
least in con
at
becoming
public
the relevant
consumer
they desig
products
nection with the
Duck’s use
its mark
Fly,
‘N
v. Dollar
BOSTON DUCK
nate.
Park
Inc.
See
Inc., 469
189, 193-94, 105
it
that the
Specifically,
argues
TOURS.13
Park &
U.S.
Fly,
(1985).
by finding
court erred
the
L.Ed.2d 582
Award
S.Ct.
any
nongeneric
amphibious
to
user of
“duck tours”
ing
rights
for
trademark
term,
user,
sightseeing
would harm
especially
capable
the first
tours
therefore
receiving
protection.
alike. Com
Because
competitors and consumers
trademark
conclusion,
a
term that
of this
Duck
petitors
Super
unable to use
common
erroneous
product
asserts that the district court
undue
designates
gave
describes or
their
to
significant disadvantage
weight
at a
communicat
“duck tours”
ing
potential
parties’ respective
analyzing
to
the nature and
marks
customers
when
product.
the relevant Pignons
characteristics of the
See Vanes
factors. For exam
Pierce,
focusing
sa
it
like a
rather
ple,
nongeneric
Bowman
Walks
Duck
than
If
Quacks
Duck,
mark,
it be
portions
party’s
like a
of each
“BOSTON”
Shouldn’t
“SUPER,”
Approach
respectively,
compar
Duck?:
How
“Functional”
when
marks,
Discontinuity
ing
the court
each ele
Ameliorates
Between
treated
“Primary Significance”
Tests
Ge ment
marks
parties’ composite
Meaning,
equally
comparing
nericness and
one
Secondary
when
them with
(2007).
Likewise,
If
N.M.
another.
L.Rev.
the district court had deemed
pay
tours”
generic
requires,
consumers will be forced either
law
contends,
higher price
goods
it
de-
purchase
the desired
would have
emphasized
party’s
from the
owns
term
seller who
that element
each
13. properly
court
noted that
ment
it owns a
entitled to
district
Su-
action—that
mark
Biscuit,
per
required
protection.
Borinquen
conceded
trademark
See
Duck had
the first
infringe-
element
in Boston Duck’s trademark
that the
be-
in dispute
and found
differences
facts were not
and the dis
significantly
position
tween the
marks
trict court was
no better
Pharm.,
Further,
matter);
Kos
Inc. v.
decide the
outweighed the similarities.
(3rd
Corp.,
factors,
Pignons
Andrx
analysis
other
court’s
Cir.
2004) (noting that
including Super
adopting
Duck’s intent in
it would
abe waste of
judicial
its mark and the consideration of
resources to
evidence
remand
trademark
confusion,
of actual
would
been
action
also have
where
district court committed
result,
error,
legal
altered in favor of
Duck. As a
but
necessary
facts
*14
necessary
the district court would not have found a make the
of
likelihood
confusion
are undisputed); Opticians
likelihood of
between
marks
confusion
the
determination
Indep.
Am.,
favor of Bos- Ass’n Am. v.
granted
injunction
and
an
Opticians
of
of
(3d Cir.1990) (ad
ton
Duck.
F.2d
194-98
the
dressing
remaining
necessary
elements
Eight-Factor Pignons
A. The
Test
support
preliminary injunction without
remand where the district court had erro
To
whether
determine
the district
neously found that plaintiff
unlikely
was
regarding
court’s
in
conclusion
the second
claim).
the
succeed on merits of its
Where
fringement
requirement—a likelihood of
the
analysis
district court’s
a legal
reveals
clearly
confusion between the marks—was
error, we address those conclusions de
erroneous, we must assess the district
novo.
the remaining
On
factors—the simi
Pignons analysis
court’s
composite
of the
larity
goods,
of the
the relationship be
marks BOSTON DUCK TOURS and SU
parties’
tween
trade,
the
of
channels
the
PER DUCK TOURS. We
the dis
review
relationship
parties’
between the
advertis
Pig
trict
findings
court’s factual
for each
ing,
the
prospective pur
classes of
nons factor
Equine
See
error.
for clear
defer
chasers—we
to the district court’s
Techs.,
that Boston Duck was able to show Strength the Mark of
likelihood of confusion between Plaintiffs determination marks—is erroneous. “The eight-factor Pignons Although anal- as to whether a likelihood of confusion ysis typically begins with an evaluation of fact, question exists is a of which we re the similarities and differences between error.” Id. view only for clear issue, necessary no marks there is Where the analysis eight-factor analysis. district court’s in the sequence In legal premise, case, based on an incorrect or it this has asserted an mark, has not relevant required addressed element Boston Duck’s “duck issue, tours,” we could remand the case to the generic. genericism This chal- district court for further in lenge implicates consideration strength light legal Moreover, errors we have identified. Duck’s mark. reasons However, Duck, where the underlying facts asserted if the district largely they as undisputed, are in this genericism ques- court’s conclusion on the ease, we think clearly erroneous, that course of action would tion was the court’s judicial a waste Pignons be resources incom analysis of several other factors patible urgency Thus, with necessarily of the issues be was flawed as well. we fore us. See Guglietti Sec’y Health & begin our discussion district Servs., (1st Human 399-400 phrase court’s evaluation “duck Cir.1990) and, not (choosing analysis to remand where consequently, tours” clearly refer dant, not “duck tours” does composite Duck’s of Boston strength broad, category of services. general to a DUCK TOURS. BOSTON
trademark Rather, on the play “duck” is a the word genericism court’s The district a. vehicles, amphibious II WAR World analysis DUKWs, pre- which were the distinctive by Plain- the vehicles used strength of Boston decessors of Evaluating the mark, tiff, The tour itself district court Duck Tours. creatures, ducks, exclusively to not involve limited its discussion does tours,” assessing both name Contrary to what any way. “duck inherent strength—its conceptual the tour does phrase’s may imply, tours” commercial watching distinctiveness—and or duck involve either duck found the The court strength.14 Thus, felt” or unlike “wool hunting. reaching In nongeneric. “duck tours” generic terms in which the “crab house” exclusively conclusion, relied the court this public exactly to what referred “duck,” *15 of which dictionary definition on a mean, the to would assume the words reference to DUKWs any include did not attenuated. link here is more McCarthy, 2 vehicles. See amphibious or classify “duck tours” as it did not Although “dictionary defini (listing § 12:13 supra, fanciful, it con- descriptive, suggestive, or a court of several factors as one tions” of re- capable cluded that the con determining whether when consider should ceiving protection.15 trademark analysis generic). The court’s phrase is issue consisted court was correct genericism The district of following: conceptual and com analyzing both the mark in this strength plaintiffs mercial of felt” and examples of “wool
Unlike tended to focus Although case.16 we have by the defen- house” identified “crab remains capable protection as a trademark "conceptual strength” mark refers of a 14. of determining scope protec- of spectrum relevant for placement on the of mark's to the composite mark strength” which Boston Duck’s de- tion to “Commercial distinctiveness. whether recognition was entitled and therefore value the mark’s consumer *16 presence or secondary meaning absence of to 18. In we were faced evaluating with Attrezzi noninherently determine whether a strength distinctive the protectable of a consisting mark designation mark.”). is or is not a valid Al- single of a element—ATTREZZI—inthe face though the district court cited evidence of of a claim that mark inherently the was weak secondary meaning in with only connection suggestive because it was of the relevant analysis alone, phrase of the "duck goods the Attrezzi, tours” arbitrary. rather than See 436 applies equally evidence F.3d at rejecting 40. In May- the defendant composite mark BOSTON tag’s argument DUCK TOURS. rely the exclusively that court on conceptual the strength mark's in that disagree 17.We concurring opinion case, with the we stated conceptual that a mark's when it states that a "where is mark classified strength, distinctiveness, or inherent is irrele- spectrum on the of distinctiveness is not evi- vant when making strength such determina- dence of the decision-making and choices that tions. Id. a consumer marketplace.” faces in the In fact, where a spectrum mark lies on the 19. Genericism parties’ was the focus of the part dependent distinctiveness is in arguments market appeal. below and on We think and societal conditions. Words do not exist that focus appropriate. respectfully We definitions, They in a vacuum. have disagree associa- reading the concurrence's tions, connotations, all of which contrib- any would foreclose in Attrezzi all cases ute conceptual strength to the analysis be- consideration genericism evaluating when they cause mark, how reflect consumers view the strength of a composite or other- marketplace. wise, words in the example, For “ice part as of the likelihood of confusion "pizza” generic cream” and are terms be- analysis. perceive cause specific consumers them as goods and par- do not associate with a Although them suggests the concurrence other- wise, ticular reality brand. This by is reflected our phrase evaluation of whether the genericism, factors we use to evaluate includ- generic "duck tours” is in the course of evalu- ing the use of industry by the term in the ating strength of Boston Duck's media, surveys, dictionary consumer mark does not contravene the well-established definitions, product which a themselves “anti-dissection McCarthy rule.” As notes in market and societal forces. the same section the concurring opinion phrase of the significance” Labs., “primary 800 F.2d
Connaught in- the law public,” “to the relevant Cir.1986) the same issue (2d (noting that for factors courts to consider several structs grant law does not trademark reasons (1) analysis: con- undertaking this it when phrases, words or generic protection (2) the use of the term surveys; gener- a sumer protection to not extend also does (3) by trademark). use of the term publications, Although media aof component ic (4) industry, purchaser competitors generic term or of a presence (5) term; and testimony concerning the mark, “pizza” in DOMI- such as in a full Def, the term. Colt plaintiffs use of the entire PIZZA, not “render will NO’S Nevertheless, noted at 705. invalid, does affect presence above, exclusively on one court relied competitor’s mark a analysis of whether dictionary of “duck” to reach likely definition component same containing the nongeneric. above, that “duck tours” is conclusion As noted Id. create confusion.” or absence of Although presence signif- “primary whose term is one correspond- dictionary, and its an word public” is as the relevant icance ... of how the ing meaning(s), is evidence rather good, nature of identifier term, 705; Surgicenters public perceives Def., 486 F.3d at Colt than its source. Co., 1064(3). Am., Surgeries, Inc. v. Med. Dental question A § 15 U.S.C. see also Cir.1979) (9th n. 11 12:12, “the fact, McCarthy, supra, (“While determinative, dictionary defi- finding [that district court’s persuasive and often only nitions are relevant subject to review ... nongeneric] [is] a term is understood determining how error,” Beer Co. v. Slesar for clear (1st the ultimate test Co., consuming public, Brewing Bros. ”), generic .... Cir.1993). of whether a trademark is many factors to consider. only it is one of owed to the Recognizing the deference analysis remains the The touchstone of the pres- time the inherent district court and significance to the rele- phrase’s primary *17 deciding complex when sures a court faces public. vant injunction preliminary matters that the conclude phase, we nevertheless addition, In the district court focused by finding court committed clear error “tours,” “duck” and separate terms nongeneric. phrase that the “duck tours” phrase. Filipino Yellow the entire See analysis, In the district undertaking Publ’ns., Pages, Inc. v. Asian Journal identify apply appro- court did not Cir.1999) (9th Inc., 1143, 1150 in this case. As priate legal standard genericism analysis (finding that result, generi- on the its factual conclusion by looking at an en- should be conducted question cism was erroneous. dissecting mark rather than it into its tire analyzing than parts). smaller Rather Legal
i. Standard thereby altering the separately, each word inquiry, the court should undertaking genericism context of the In “duck tours” as a unified relevant evi have considered analysis, the court overlooked courts have found in related genericism phrase. on the As dence in the record contexts, may complete phrase signify determining question. Tasked with cites, probable conflicting customer reaction to the a violation of the anti-dissec- "[I]t is not McCarthy, supra, composites 3 component parts of con- as whole.” tion rule to view the comparison flicting step 23:41. Our ultimate is be- preliminary as a marks parties' composite way tween the marks. on the to an ultimate determination
19 berg, than the sum of something different Tattoos and Views The Best-Known Enters., Renzi, Designs Artists Their AmCan Inc. v. Some parts. See Craft Cities, (7th Cir.1994) Region’s Most Interesting Boston (“yellow Globe, 13, 2002, Oct. at M13. Another Bos- generic telephone for a business pages” published ton Globe article in 1997 used directory); Express American Co. phrase generically, but in a different F.Supp. Mastercard Int'l. context. In asserting that the Boston (S.D.N.Y.1988) (“gold generic card” mayor manage needed to traffic issues bet- services). credit card The district court’s city, ter in the the author wrote: “It is exclusively decision to focus on the individ important city government that remem- phrase, ual elements of the and each buses, bers that it owns the streets. Tour definition,21 respective dictionary word’s trolleys, ersatz and amphibious duck tours inquiry proper removed the from its con need to have their routes and parking analysis. text and tainted the overall carefully DiCara, examined.” Lawrence S. Running Against Himself; Mayor Meni- ii. Application no’s Real Forge Legacy Race will be to Because the district court misappre- Tuesday, Globe, Reelection after legal hended the governing framework 2, 1997, Nov. at Cl. These articles from genericism inquiry, its ultimate factual join many others from around the nongeneric conclusion “duck tours” is country gener- which use “duck tours” in a necessarily erroneous as well. In See, IP, ic e.g., manner. Schwan’s LLC v. conclusion, reaching its the district court Co., (8th Pizza Kraft did not consider evidence in the record Cir.2006) (discussing the relevance of suggesting that “duck tour” is newspaper using articles “brick amphibious, sightseeing for the type pizza oven” to name a rather than by parties. Specifically, tours offered both brand). a specific types the court did not consider three Second, the court overlooked the wide- typically evidence integral considered spread generic use of “duck” and “duck (1) genericism by determination: uses by companies tours” other around the (2) parties, the media and other third with- country provide amphibious the same (3) industry generally, in the Bos- sight-seeing According services. to the ton Duck itself. record, there are at least companies respect to type With the first of relevant operation today provide tour services *18 evidence, the district court overlooked arti- in cities around the United States and the cles in the third-party media and other world. Of these 36 tours in the described phrase sources that use the “duck tours” record, in 32 include the term “duck” their generically amphibious, sight- refer to name, company or trade than and more seeing example, tours. For a Boston “tour(s)” use both the terms “duck” and in article Globe from 2002 notes that rather Many compa- their trade name. of these Portland, walking than around Maine on gener- nies characterize their own services foot, a may trolleys, visitor use “town duck ically together, as “duck tours.” Taken tours, and harbor cruises.” Beth Green- this evidence indicates that when consum- circumstances, however, acknowledge assessing 21. We that when the whole. In these the dictionary phrase, may definition of a it be dictionary helpful definition becomes less for necessary to define the individual elements of determining public significance the of the en- phrase the and then combine those definitions phrase. tire meaning phrase to ascertain the of the aas generally, tences, more the website tours,” they asso- term “duck ers hear the inform Duck to by Boston published rather product awith primarily it ciate and around area the Boston consumers in F.3d at Def., 486 See Colt than a source. history and company’s the the world about generic (“This probative evidence instructs Accordingly, the site the services. members of more ‘[t]he because use phrase the “duck in these customers by competitors used a term public see used to de- phrase is the common tours” likely they will be field, the less rather sightseeing tours amphibious pro- scribe particular one term identify the ” alone. product Duck’s than Boston Corp. Int’l Foods Classic (quoting ducer.’ Foods, F.Supp.2d Kettle addition, articles submitted several In (alteration origi- (C.D.Cal.2007)) in the district court Duck to by (find- IP, at 975 nal)); Schwan’s recogni fame and company’s establish company’s a term use of ing generic company’s ge evidence of the provide tion public percep- indicative of competitors is tours” and “duck neric use of tion). ge of the acknowledgment unwitting an aIn Business phrase. neric nature did not the district court Finally, 1998, the author states from Week article generic use of own consider time the founder [when “[a]t tour,” provides which idea], there up came with Boston Duck claim that the against its strong evidence in the Duck tours only two other were with its com associated primarily term A Nice country.” Updike, Edith Hill it provides. than services pany rather Nice, Being Business Built on Business Servs., Publ’g, v. Freebies Inc. See Retail 14, 1998, In a Week, similar Sept. Cir.2004) (“[E]vi- (4th 535, 545 F.3d history of Boston describing the article use, partic in owner’s dence of the Journal, ” the writ in Business Duck Boston genericness.’ ular, strong evidence of ‘is have been tours “[d]uck er states that 12:13)). McCarthy, supra, (quoting 2 Country in the Lake for decades popular website, company notes that On its resort and in southern Wisconsin belief, idea unique “[cjontrary to local John, Road to Rough Lauren towns.” originate Bos did [t]our of a[d]uck Charles, Bos Landing on Amphibious been have exis operations ton. Duck Journal, 30, 1995. June ton Business decades, and tence in Midwest evidence, Indeed, especially did, of this we all fact, thrive. What continue and “duck use of “duck” widespread product however, unique is take industry, indi- by companies it, tours” at the same enhance while improve and “commonly used” cates that other major metropolitan no it to a time bringing sight- Tours, “alternative[s]” effective denote http://www. city.” See Boston offer. See seeing parties services both company—history— bostonducktours.com/ Honickman, 2008). (last Co. A.J. visited March main.html Canfield *19 Cir.1986). (3d alter- 291, Although 305-06 quick point Boston Duck Although is exist, “amphibious such natives do as to its website introductory clause out the tours,” widely adopted have been that the local none statement, which asserts tours,” they Unlike “duck industry. Duck is the believes Boston population accurately and tours,” fail to the services specula this describe “duck only provider of Drug Bayer Co. United concisely. the Boston See pop about what tive statement (S.D.N.Y.1921) Co., 505, (finding 272 F. irrelevant largely is ulation believes pub- part generic because “Aspirin” sen- analysis. The two purposes our lie did not accept the alternative requiring names to disclaimer the term “duck” product); describe the Inc. v. Ty or the phrase “duck tour” suggest that the Softbel- (7th Cir.2003) ly’s, 528, 353 F.3d terms generic are neither nor descriptive. (“[B]ecause ‘beanies’ much shorter so Third, Boston Duck claims that Super than punchier that alternatives Duck should not permitted be to claim that emerged have far so for designating the generic tours” is given now previ- product, ‘plush animals,’ such as beanbag ous stance before the PTO that neither the Ty may fighting be a losing keep war to term “duck” nor the phrase “super duck ‘Beanies’ trademark from becoming ‘bean- tours” generic or descriptive. Finally, term.”). generic ies’ a Because of the lack Boston Duck argues that the dictionary alternatives, of adequate “duck tours”— definitions indicate that “duck” is nongen- the most common and accepted term to eric. We address each argument in turn. describe the services at issue—may not be appropriated for one party’s exclusive use. (a) Consumer Confusion grant
To Boston Duck rights exclusive Although the documentation pro use phrase in the area Boston would by vided Boston Duck establishes numer be erect entry a barrier of into the ous instances of consumer confusion be marketplace, thereby preventing other en- tween the provided by services parties, tities, Duck, such as from calling the confusion suggests alone little about product their by Duck, its name. Super as whether term “duck tours” is generic. well other potential competitors, would The confusion that Boston Duck cites can placed be at a significant market disadvan- easily be attributed to Boston Duck’s sta tage. See Devan R. & Desai Sandra L. tus as the purveyor exclusive Rierson, amphibi Confronting the Genericism Co- ous tours nundrum, area for over a 28 Cardozo L.Rev. decade rather (2007). than the source-identifying
attributes of the “duck tours.” Al Boston Duck’s Counter-Arguments though trademark designed pre law vent consumer confusion between inher
Seeking to convince us that ently distinctive marks or descriptive district nongenericism court’s determina acquired marks have secondary tion mean erroneous, was not clearly ing, it is not intended to prevent Duck confusion raises a raft of arguments in support similar, marks, between two generic of its position that “duck see is nongen- tours” Blinded Veterans Ass’n v. Blinded eric. Boston Duck Am. signifi asserts Found., cant Veterans evidence of actual 1043-45 confusion con (D.C.Cir.1989), or, relatedly, sumers the marketplace between between the marks when one mark acquired marks BOSTON DUCK has TOURS and “de SU secondary PER facto meaning” through DUCK TOURS indicates that its ex “duck tour” clusive use of a possesses term that source-iden causes tifying customers to attributes. Confusion associate the term could not with that arise, source, Online, Boston Duck argues, specific see Am. unless consum Inc. v. AT (4th ers T Corp., Cir.2001) associate “duck & tours” with Boston (“[T]he Second, Duck’s services specifically. repeated Bos of ordinary use words ton argues functioning the numerous rec within the heartland of their showing ords that the processed ordinary meaning, PTO has distinctively, and not *20 applications trademark for services similar give cannot AOL a proprietary right over provided by parties words, those both without those even if an association devel- (in- AOL.”); any legal significance.” 1 of a disclaimer the words ops between omitted)). ternal citation § 7:66. Boston McCarthy, supra, therefore, confusion, has of actual evidence Moreover, Duck in although Boston of question on the value probative little applica relevant trademark vokes several gener- is “duck tours” phrase whether of “duck” or tions where no disclaimer ic. applica required, tours” was other For exam tions include such disclaimers.
(b) Treatment PTO Tours, Liberty Duck eqtity an named ple, Duck overstates pending applica maintains several LLC22 the decisions give must weight a court phrase LIBERTY DUCK tions for Al disclaimers. regarding of the PTO use of the that disclaim exclusive TOURS Attorney Examining is though the PTO Further, because “duck tours.”23 phrase a disclaimer whether obligated to consider of crucial date for the determination “[t]he re application each appropriate for on which the al genericness is the date viewed, remains discretion the decision with infringer entered the market leged legal than a conclusive ary choice rather term,” Yellow Cab disputed mark or re Creative Gold See In determination. Elk v. Yellow Cab Co. Sacramento of Wash., Inc., U.S.P.Q. (9th Grove, Inc., smiths Cir. (“[W]e (T.T.A.B.1986) it conclude that 2005)—here, early late 2006 and 2007—the Examining of an within the discretion by Boston Duck of put evidence forward of an the disclaimer Attorney require applications past the PTO’s treatment (such as a com unregistrable component only to the district has limited relevance name) of a descriptive, generic, mon or inquiry. The PTO’s most recent court’s registered to be sought on this issue is its treatment decision provi under the Principal Register LIBERTY applications DUCK 2(f).”); TOURS, see also Trade sions of considered Section which were Procedure, which, Examining year, at least in only mark Manual PTO last ed.2007). 1213(a)-(c) (5th Therefore, a sightseeing § with the services connection case, require either contain a disclaimer for by the PTO to issue this decision merely single piece phrase “duck tours.” not is disclaimer or generi- overall of evidence in the court’s (c) Estoppel Corp., Nat’l Data analysis. cism See In re (“The (Fed.Cir.1985) from Duck is not foreclosed accept require or power arguing now that the term “duck” or the the PTO discretionary under the stat it disclaimers is “duck tours” is because ute, years ago years argued contrary has to the several practice and its over Thus, contrary argu That inap it is front of the PTO. been far from consistent. simply ment is another factor the evi- or absence propriate give presence TOUR, Tours, company yet the PTO informed the that it Liberty 22. has not com- LLC appli- connection with menced use of its mark in for its need not maintain disclaimer products. applica- duck or tours other clothing items. cation in connection with with- intent-to-use basis tions were filed on an Nevertheless, give Liberty the PTO did not any provided. See 15 U.S.C. out first-use date option to remove the Duck Tour the same 1051(b). application from its for LIBERTY disclaimer sightseeing DUCK TOURS in connection Although Liberty Duck Tours decided to tour services. in each of its disclaim the “duck tour” applications DUCK trademark for LIBERTY
23 Keebler, tours,” dentiary generic mix. 624 F.2d at See entitled to no all, argue protection “Boston,” to in an trademark with (allowing n. 7 the defendant at weak, plaintiffs descriptive term that infringement action that mark deserves Thus, protection. minimal generic despite previous attempt conceptually, to BOSTON DUCK as a composite the mark the Puerto Rico TOURS register under However, Rice, mark is statute); weak. BOSTON Am. Inc. v. DUCK trademark significant TOURS has obtained U.S.P.Q. secondary Corp., H.I.T. (“It meaning as a (T.T.A.B.1986) result of its continuous in use is clear while these the Boston the past years. area for positions party] may earlier the be [of secondary meaning This overcomes the evidence, equitable estop- considered as no mark’s initial McCarthy, weakness. su- may pel be derived from earlier inconsis- (“[A] mark, § descriptive 11:80 (internal pra, upon positions.” citations omit- tent attaining may secondary meaning pro- be ted)). just if ‘strong’
tected as it had been (d) arbitrary or inception.”). fanciful at its Dictionary Definitions noted, already dictionary As defini- the of secondary The evidence mean in the record not conclusive on tions ing also supports strength the commercial question of public perception. mark, the which is assessed Duck offered the definitions “duck” by examining length “the of time mark the dictionaries, from several common none of used, has been the trademark holder’s re amphibious includes a which reference in industry, potency nown of the Conversely, (as II World War vehicles. Su- product mark field measured single per offered a definition of registered marks), the number of similar English from “duck” the Oxford Reference and the trademark holder’s efforts pro Dictionary, that a duck which states is an mark,” protect mote and Borinquen “amphibious landing-craft.” Biscuit, 121; Because dic- see 2 McCarthy, tionary (“When definitions are not conclusive indi- supra, determining 11:82 public cators of overall and the perception, marketplace strength commercial or of a specific dictionary by mark, definitions offered to the same courts look kind of parties in this not significantly case do recognition evidence of real world of the other, party favor one over the this factor presence mark as is used to decide or materially Boston Duck help does meaning secondary absence deter court convince us that the district did not noninherently mine whether a distinctive genericism mark.”). clear error in commit deter- designation is or is not valid mination. significant Boston Duck has received na- press in tional and international connection Strength Composite
c. Mark services, including coverage Attach, Having Airways Magazine, that the concluded U.S. W Cosmo- UK, parties’ “duck tours” is for the Christian politan and the Science services, Monitor, we remain to assess the as well numerous obligated awards since strength mark mark in 1994. plaintiffs was first used For Evaluating example, DUCK Duck won BOSTON TOURS. 1996 Boston conceptual first, we for Best strength Magazine conclude that Boston award Tour purveyor BOSTON DUCK TOURS is Boston. As the exclusive duck highly descriptive of services Boston services in the Boston area for over a tour decade, has company Duck offers. The mark combines “duck become well *22 24 features,” Pignons, 657 son of individual and number of
known, its revenue substantially. 487; Trading ApS The v. grown see I.P. Lund have F.2d at customers by company (1st Cir.1998), has Co., used of ducks number 43 Kohler twenty-four in in 1994 to four grown from generic portions to the give weight less we 585,000 Moreover, customers en- 2006. composite respective, the parties’ by Boston operated tour joyed a duck (“If § McCarthy, supra, 4 23:49 marks. Further, a num- although Duck in 2006. conflicting the two portion common country around the entities of other ber name, public generic domain marks is in their trade tours” phrase “duck use upon should be emphasis enquiry services, none to describe similar names nongeneric confusing similarity of the area. greater Boston operate within ultimate determined with the issue portion, indicate that these facts Together, similarity of the total by confusing DUCK TOURS mark BOSTON composite marks.”); Banff, see impression of both an identifi- reasonably strong overall as is Stores, Inc., Dep’t Federated Ltd. v. in the Duck’s tour services er of (2d Cir.1988) (finding a likeli area, of the mark— although part B hood of confusion between WEAR to no trademark tours”—is entitled clothing); BEE for womens’ Am. WEAR all. protection at (HibVAX F.2d at 309 does Cyanamid, 800 infringe HIB-IMUNE because the the Marks Similarity 2. mark are nongeneric portions of each suffi similarity be degree The Mut., dissimilar); ciently Beacon cf. marks—-here, BOSTON DUCK tween two similarity between (finding F.3d at 19 two DUCK TOURS—is TOURS and SUPER where the dominant ele composite marks analyzing sight, their by determined similar). very ments of each mark were sound, meaning. Volkswagenwerk Ak Accordingly, compare nongeneric we “the Wheeler, tiengesellsehaft a mark ... in the context of components of Cir.1987). (1st Although “similarity is Banff, mark.” composite the overall of the total effect on the basis determined compari- rather than a F.2d at 491.24 designation, of the registration ordinarily explicitly trademark are not Although the concurrence disa- analytical approach using an that part composite vows the dominant of a word of a considers the inherent distinctiveness agree mark.” We with the concurrence elements, composite mark’s individual de-empha- be that disclaimed terms must implicit genericism makes an concurrence comparing when the marks at issue. sized comparing when the similari- determination however, note, requires We the PTO ty parties' composite marks. The only generic disclaimers and other un- "[T]he states: term ‘duck concurrence registrable composite mark. elements in commonly understood to mean an tours' is 1056(a) (“The § U.S.C. Director [of See 15 amphibious sightseeing excursion.... may require applicant to dis- PTO] therefore, suggests impression, overall unregistrable component of a mark claim an enterpris- similar tour offered different added); registrable.”) (emphasis otherwise relying genericism on a es.” Rather than Examining Procedure Trademark Manual of de-emphasize determination 1213.03(b) ("If comprised a mark is comparing parties’ "duck when tours” that, applied part of matter to the marks, the concurrence instead goods/services, not func- or does the terms “duck” relies on the fact mark, tion as a the matter must be dis- are disclaimed in Boston and “tours” permit registration....”). More- claimed to registration trademark and that Duck's over, the decision as to what elements must "duck tours” is disclaimed in made when a trademark be disclaimed is registration. The concurrence states being registration application processed, the course that were disclaimed in "[w]ords mistakenly Having concluded that cant overlap between the companies’ chan- trade, nels of advertising, and nongeneric, prospective “duck tours” was *23 Super consumers. Duck does dispute placed emphasis district court undue on that companies competitors, are close similarity of that in parties’ and the findings court’s are supported by marks and concluded that the differences the record. between the “slight.” marks was
Analyzing the similarities ourselves with
7. Evidence Actual
Confusion
genericism
mind,
the correct
in
conclusion
“While evidence of actual con
inquiry,
we focus our
exclusively,
albeit not
fusion is ‘often deemed the best evidence
on the similarities and differences between
possible
confusion,’
future
proof of actu
“Super,”
words “Boston” and
the non-
al confusion is not essential to finding like
generic elements of each mark. Allowing
lihood
Biscuit,
of confusion.” Borinquen
largely drop
“duck tours” to
out of the
Attrezzi,
ed
together,
factors
see Beacon
Whether the defendant acted
F.3d at
signifi-
district court found
adopting
bad faith in
its mark is another
prior
which
immediately
often occurs
analysis
exclusively
or
tence that its
relies
after the mark is introduced
marketplace
into the mar-
factors to evaluate likelihood
Thus,
ketplace.
the concurrence's
insis-
of confusion is overstated.
Inc. v. Van-
Maps,
Streetwise
determining
(quoting
considered
to be
factor
(2d Cir.1998)
Dam, Inc.,
739, 745
Attrez
consumer confusion.
likelihood
omitted)). Moreover,
(internal
Su-
zi,
The district court
citation
at 40.
logo years
mark and
per
Duck’s intent
se
Duck created its
concluded
market,
DUCK TOURS
it
the Boston
when
the mark SUPER
before
entered
lecting
Portland,
least,
explained
It
this
suspect.”
operations in
Maine.
began
“at
it
stating
“[Super Duck]
conclusion
Likelihood of
on the
B. Conclusion
intentionally entered the
knowingly and
*24
Analysis
Confusion
service, mark
offering
market
a
nearly
to that of Boston
identical
logo
and
all of the factors
Considering
Tours, an established and successful
Duck
conclude that
Pignons analysis,
we
the
enterprise.”
finding that Boston
the district court’s
on the merits
likely
Duck was
to succeed
regarding Super
court’s conclusion
claim is
infringement
trademark
of its
it
intent was clear error because
Although
compa
the
clearly erroneous.
premise that
on the erroneous
was based
competitors because their
and
nies are direct
the marks SUPER DUCK TOURS
customers,
of
highly
potential
simi-
channels
products,
DUCK TOURS
BOSTON
already
trade,
noted in our discussion of
ov
advertising
significantly
lar. As
and
all
factor,
the
similarity of the marks
erlap,
the
these factors alone are insufficient
reasonably dissimilar because
infringe
marks are
of
to establish a successful claim
party’s
in each
mark is
See,
the shared element
e.g.,
Ass’n
ment.
Prof'l Golfers
of
generic phrase
Co.,
the
tours.” Because
Bankers
& Cas.
514 F.2d
Am. v.
Life
(5th Cir.1975) (“[D]irect
element of the court’s
this foundational
competi
incorrect, its conclusion that
analysis was
qua
tion is not the sine
non of trademark
least, suspect”
Duck’s intent was “at
Super
infringement;
gist
rather
of the
necessarily mistaken as well.
was
action lies in the likelihood of
[trademark]
public.”).
to the
Boston Duck
confusion
a
Super
adopted
Duck
name
com
has failed to demonstrate bad faith on the
generic phrase describing
prod
bined
adopting
Duck in
the mark
part
significantly
descrip
uct
different
DUCK TOURS.
Its evidence of
SUPER
Although there are similarities
tive term.
actual trademark confusion between the
marks,
services,
logos,
between the
and
parties’
probative
marks has little
value
degree
and
Duck benefited to some
largely
because the confusion shown is
introducing
from Boston
the Boston
competi
on Boston Duck’s lack of
based
duck
population
product,
to the
tour
these
early years
party’s
tion in its
and each
use
consequences
having
effects are natural
generic phrase
of the
“duck tours” in its
in the
competition
marketplace. See Nora
parties
mark.25
are direct com
Am.,
Where
Beverages,
Group
Inc. v. Perrier
(2nd Cir.2001) petitors,
important
the most
factor
Inc.,
114, 124
269 F.3d
(“While
Pignons analysis
similarity-of-marks
is the
can
copying
intentional
raise
Nutritionals,
confusion,
inquiry.
McNeil
LLC v.
See
presumption of consumer
‘[t]he
Sweeteners, LLC,
Heartland
compete by imitating
intent to
the success
Cir.2007) (“
(3d
goods
are di
product
vastly
‘[W]hen
ful features of another’s
rectly
undisputed
in the
pur
competing [as
from the intent to deceive
different
”)
case],
product.’
precedent
to the source of the
instant
both
and common
chasers as
Biscuit,
acknowledge
infringement
Borinquen
25. We
actual
action. See
evidence of
required
confusion is not
on an
marks—with on Although the eight several of factors “Super”—are words sub- “Boston” independent analysis warranted directed dissimilar, sound, stantially sight, based specifically parties’ design marks— any meaning. similarity To the extent including marks, similarity of the marks, between the exists confusion, evidence actual and the similarity party’s is a result of each deci- strength of Boston Duck’s only mark—the to use a to describe sion factor the court separately considered conclude that product. Accordingly, we similarity designs. On this fac- Pignons factors do establish tor, the court single limited its focus to a *25 parties’ of likelihood confusion between within element each mark—the central im- word That composite marks. conclusion age of a cartoon in splashing duck water— that has failed to means Boston Duck es- elements, the exclusion of other includ- a on the tablish likelihood of success mer- ing the in present image, colors each infringement of its its trademark claim. background images, the content and de-
sign mark, of the in textual elements each Y. their appearance. overall In the ab- of sence a of the strength discussion of infringement analy- turn now to the We mark, Boston Duck’s the similarities be- parties’ composite of design sis parties’ design marks, composite tween In reviewing peti- marks.26 Boston Duck’s by and evidence of actual confusion a preliminary injunction, tion for the dis- court, district we address these factors de trict court also found that Boston Duck novo, and then our evaluate conclusions in likely to succeed on its trademark conjunction with the district court’s find- relating infringement parties’ claim to the ings and our own earlier discussion of the design Accordingly, marks.27 the court en- remaining Pignons factors. in joined Super using, Duck from connec- services, design with its that any tion con- 1. Strength Mark a
tained cartoon duck in water. of Plaintiff’s analysis our Again, begin we with Eight-Factor Pignons A. Test strength composite plaintiffs design of mark, evaluating Pignons including inquiry into Without each factor an whether separately, par- the court that the the central that im found mark—the element design “strikingly] age of a in splashing ge ties’ marks were simi- duck water—is and, in consequently, Super plaintiffs that neric connection with duck lar[ ]” above, a logo “nearly Duck’s decision to services. noted choose tour As determination, strength including identical” to that of Boston Duck’s called the im question choosing genericism component, weigh portant into intent or, alternatively, Appendix images parties’ 26. See distinctive it has ob- respective composite design marks. secondary meaning long tained based on its and continued use in connection with Boston Duck did not contest Duck's services. inherently design mark is Duck's evidence, argues of the other From this in our consideration heavily image a cartoon duck that the water factors. Pignons merely tour services rather describes duck thereof, specific provider than a a. Genericism therefore, image, generic. subject The district court did design genericism to a anal Although many tour provid duck assessing ysis context of in the of a duck water in image ers use as mark. Just a strength plaintiffs products, many connection with their oth may gener classified as or be use, word industry not.28 than ers do Other that de ic, logo an or image too can so is no in the record estab there evidence or category goods a services scribes lishing population per how the consumer See 2 specific Therefore, than a source. image rather question. ceives the (“A McCarthy, supra, 12:34 little upon we have basis which conclude goods of an illustration of image consists that the of a duck in water is viewed may ‘generic,’ merely synonymous be hence public themselves serving tour,” trademark function it incapable such that has no all.”); Winery, Ltd. capacity at all. source-identifying Kendall-Jackson More over, Winery, in the record suggests E. evidence & J. Gallo (9th Cir.1998) image an that there are effective alternatives to the (finding that of a image identify was not itself duck in water grape leaf on a wine bottle *26 Accordingly, of duck tour services. protectable it cannot source mark because serve brands). grant entity to an the exclusive use of Accord such distinguish to between design, thereby preventing a other image the entities Super argued Duck ingly, using confusingly a design from similar to in generic cartoon duck is for a water it, give would not the first user signifi these im duck tour services and therefore competitive advantage. cant Based on a minimal role in ages play should the factors, these we cannot conclude that the analysis design Pignons marks. in clearly implicit district court erred court, however, The district did ad finding design nongeneric.29 is the instead, directly; it com dress this issue (“[T]here McCarthy, 2 12:20 supra, See pared underlying marks with the as only describing is a fine line between [a that all of the elements of Boston sumption [it].”). product] naming logo nongeneric. Duck’s were However, contests the we have appeal, although dis- insuf On conclusion, implicit arguing image ficient evidence conclude that the trict court’s ignored splashing generic establish- of a duck in water that the court evidence is for services, virtually every company tour tour conclude ing that duck duck we do that the country image highly parties’ uses duck in descriptive in the a cartoon for services, many image a cartoon duck has logo, and those use hence the weak conjunction image in with an See source-identifying water. attributes. Law- Although analyzing the record include the 28. does not Our conclusion is limited design every provider marks for duck tour in district court’s conclusion based on the evi- nation, present design it does marks dence in the We need not record. decide providers, excluding for sixteen such both image duck here whether the of a in water Boston Duck and Duck. Of the sixteen generic for could ever be deemed duck tour providers, image seven use of a duck services. part design water as of their marks. Co., F. 762 mercial Sharpless impression, especially P.E. if the rence v. simi (E.D.Pa.1913) cow limited to (finding image descrip larities are or dairy Nutritionals, In re descriptive products); tive elements. See McNeil (“[F]orceful Ball, Inc., U.S.P.Q. 1183 511 F.3d at Eight and distinctive (T.T.A.B.1983) of an (finding picture design weighed features should be more pool merely descrip- they and a cue eight heavily ball because likely more services); parlor billiard also 1 impact impression.”); tive of see the overall see also Bank, McCarthy, supra, § relevant (listing 7:36 First Sav. F.S.B. v. First Bank cases). Accordingly, (10th be weight Sys., less should Cir. 1996) (“When given specific similarity to this simi- the primary weakly term is larity-of-the-marks analysis. with, protected begin minor alterations
may effectively negate any confusing simi Strength of the Mark Composite b. marks.”). larity Further, between two the marks should be “sequentially viewed
Examining strength the overall if [as were] one the context of the mark, which plaintiffs design rather marketplace” side-by- than “in a conjunction image the duck consists side comparison.” Louis Vuitton Malleti design elements and Boston with other Bourke, Inc., Dooney er v. & name, trade we that the Duck’s conclude (2d Cir.2006). and commercial of this conceptual strength mark are similar design to that of Considering the parties’ respec word mark DUCK BOSTON whole, designs they tive as have been widespread recognition Given its TOURS. record, depicted in the including the colors use in the area for continued used, text, and the design various ele decade, composite design over therein, ments contained we conclude that reasonably fact that strong, despite design parties’ substantially marks are it contains elements that an inherent have *27 Although dissimilar. each contains the capacity ly weak as source-identifiers. water, central of a cartoon in image duck in significantly the ducks are different Similarity 2. the Marks of Further, appearance. overall the other marks, As with word when conjunction in depicted elements with the design “similarity marks is de comparing substantially duck are dissimilar. Togeth the effect of termined on basis of the total er, these differences indicate that the de designation, comparison rather than a the signs separate, unrelat associated Pignons, of individual features.” F.2d ed rather than the same one. sources Indus., (quoting Alpha at Inc. v. Al Inc., 616 pha Shapes, highlight Steel Tube & To the differences between the (9th Cir.1980)); marks, McCarthy, briefly describe the of see we features (“Obviously, logo § 23:25 and each. Duck’s a supra, picture consists of (as marks), a design opposed purple background marks to word enclosed within similarity top appearance controlling.”). Encircling black-bordered circle. the the party’s background Even if elements of each of the name BOSTON black, visually similar, or are marks in a overlap, the DUCK TOURS sans-serif yellow a may Finally, a still create a com- font.30 cartoon duck with as whole distinct is an of the serif not. is a common sans- 30. A serif "accretion at the end font does Hastam, of roman serif Baines & Andrew stems letters.” A serif font—such font. Phil (2005). Type Typography a "serifs” sans- & —contains whereas in our factors undertaken Pignons five center of the hat the camouflage sits a Be- wings parties’ into some water the word marks. circle, discussion of flapping blue-and-white-tipped wa- causing par- the focus on the and cause those five factors cir- the contained splash outside themselves, ter to goods or the and services ties cle. marks, analy- issue, the rather than the supra Part IV.A. Four sis is identical. See contrast, logo Duck’s has a Super
By similarity of water, factors—the the of those denoting con- background, blue relationship par- as an the orange elements accent. the between goods; tains several logo, getting trade; of the top portion relationship At channels of ties’ motion logo suggest across the smaller advertising; and parties’ between logo portion left from the purchasers—weigh prospective classes name portion, the trade right above, Duck. As noted in favor of Boston in a serif font. orange, printed Tours is of the mark. strength so too does logo is a white cartoon the center of At However, of bad faith Su- the absence actual duck tour duck, depict an shaped of in- weighs against finding per Duck vehicle, the move from land simulating And, importantly, fringement. most makes. vehicle The to water that tour dissimilarity weighs designs’ overall orange cape and hold- wearing an duck is likely confu- against finding strongly one of its orange flag with two ing up an Nutritionals, McNeil sion. See togeth- crowd Passengers arms. muscular similarity-of-the- (noting at 367 duck, which has on the deck er important factor more marks becomes Duck Tours” emblazoned “Super directly at issue com- products where the water, the duck enters white side. As another). Visually, one pete with splash into the air. of water pockets substantially different. marks are The differences between many specific im- greatest similarity them—the between reaffirm our conclusion two marks mini- a cartoon in water—is of age of duck if enquiry: consumers about the central highly of its de- significance mal because sequentially these two marks viewed Thus, conclude scriptive nature. we they not consider them marketplace, would the district court’s determination that substantially similar. of confusion between there is likelihood design mark and Boston Duck’s Evidence Actual Confusion clearly design mark is erroneous. *28 contains Although the record evidence that Again, that conclusion means parties’ ser- that customers confused Duck has failed to likelihood of establish names, vices, their trade perhaps we infringement of its success on merits any evidence of actu- are unable to discern claim. specifically to the al confusion traceable event, In parties’ logos. any as we noted
above,
of actual confusion is not
evidence
VI.
on a trademark in-
necessary to succeed
concluded that
Although we have
we
Volkswagenwerk,
fringement action. See
must reverse the
of the district
decision
F.2d at 818.
court,
luxury
of time
we have had
the Likelihood
B. Conclusion
case-
reaching our
this difficult
decision
Analysis
Confusion
luxury
that
the district court did not
constraints,
dis-
Despite
have.
those
factors in
consider the above three
We
thoughtful opinion
trict court
issued a
analysis of the other
conjunction with our
parties
phrase
which allowed the
to focus their
analysis
uses that
to conclude
mark,
arguments
help-
in a manner that has
that the asserted
been
BOSTON DUCK
TOURS,
strength,
ful
lacks
making
to us.
consumer
unlikely.
confusion
In
doing,
so
the ma-
herein,
For the reasons stated
jority has conflated the first and second
Duck failed to establish a likelihood of
elements of the trademark infringement
success on its claims of trademark in
standard,
my opinion
which in
should be
fringement. Accordingly,
the district
separately.
I
separately
treated
write
court
preliminary
should not have issued a
explain my conclusion that
preliminary
injunction against Super
precluding
Duck
injunction must be vacated.
the use of its word and design marks.31
We reverse the district court’s order and
I.
remand the matter to the district court for
It
important
to begin with a brief
proceedings
further
consistent with this
review of
procedural
history of this
opinion. Costs are awarded in favor of
case
posture
and the
in which it reached
Appellant Super Duck Tours.
court,
this court.
In the district
par-
ordered.
So
agreed
ties
that BOSTON DUCK TOURS
protected
is a
mark. The district court
DICLERICO,
Judge,
District
recognized
agreement
held,
this
in its
concurring in
judgment.
order granting
prelimi-
the motion for a
Although
agree
I
that
the preliminary
nary injunction, that
challenge
“there is no
injunction
erroneously
issued and to
plaintiffs ownership
protected
of a
vacated,
must be
I respectfully disagree mark,”
Tours,
Boston Duck
LP
majority’s
with the
reasoning
reaching
Tours, LLC,
514 F.Supp.2d
that conclusion.
agree
We
on the
(D.Mass.2007).
basic
Because the first element
standard for determining infringement,
infringement
established,
claim was
(1)
requires proof
which
that:
the asserted
required
the court was not
to consider
trademark is
pro-
entitled to Lanham Act
whether BOSTON DUCK
is a
TOURS
(2)
tection, and
allegedly
“the
infringing
protected
Therefore,
mark.
the court
likely
use is
result
consumer confu- properly turned to a consideration of the
Biscuit,
Borinquen
sion.”
because “duck tours” commonly is a used support In prelimi- of its motion for a phrase and is shared both of the trade- nary injunction, Boston Duck focused on case, marks at issue in this similarity Duck’s mark and insignificant in determining whether the own, logo to along with evidence of *29 likely marks are to cause consumer confu- confusion, actual consumer to show a likeli- sion. hood of infringement success on its claim.
I part company with the majority, how- Super responded that Duck ever, majority because the separately likely prove infringement, clas- was not pri- phrase sifies the “duck generic tours” as a marily due to the weakness of its mark. 31. Our conclusion that cross-appeal the district respect court’s Boston Duck’s grant injunction against of an Super Duck injunction's scope. was an abuse of its discretion renders moot vigorously dis- expected, plaintiff part of Boston As argued that
Super Duck
tours,”
court then con-
mark,
is
Id. at 126. The
phrase
agrees.”
“duck
Duck’s
phrase
to Lanham Act
“duck tours”
not entitled
sidered whether
generic
Duck ar
protectable
it was
response,
generic
In
was
or whether
protection.
mark, BOSTON DUCK
Act and concluded:
its
under
the Lanham
gued
TOURS,
generic.32
not
protected and
convinced that
“Although
was
the Court is not
Therefore,
is,
first instance
parties
mark it
very strong
a
‘duck tours’ is
into the
“generic”
the term
least,
introduced
mark. The
de-
generic
not a
Court
infringe
analysis of the second element
time whether it is
to decide at this
clines
arbitrary
ment.
or
but
descriptive, suggestive
mark, there
descriptive
if it is a weak
even
part
of art used as
is a term
“Generic”
acquired
that it has
persuasive
is
evidence
analysis to determine
of the classification
secondary meaning in the Boston area
a
entitled to Lan
a trademark is
whether
years.”
Id. at 127.
during
past
under the first element
protection
ham Act
analysis by finding
concluded its
The court
infringement.33 If the as
of trademark
generic.
not
that “duck tours” was
protection,
mark is entitled
serted
infringement analy
element of the
second
II.
alleg
the use of the
focuses on whether
sis
case, however,
is
In this
“duck tours”
likely to cause
edly infringing mark is
claimed as a trademark at all. Boston
mark. Bor
not
protected
with the
confusion
Biscuit,
allege
Super
not
Duck is
Duck does
33
analysis
supported by
ment
that
is
this
generic
protected
or
is
a mark is
whether
precedent.
circuit’s
an
part
in the first
of
one that is addressed
analysis.
Borinquen
See
infringement
addition, Super
ques-
In
the
raised
Biscuit,
the
470 F.3d Cir.1981)). provide guid- factors eight element of The the second explains, Attrezzi may weight more or less analysis, using given whether ance and be infringement likely particular cause con- circumstances depending mark is on the accused confusion, of requires consideration Beacon Mut. Ins. Co. v. One- of the case. sumer (1st 8, of life, marketplace evidence practical, Group, real Ins. 376 F.3d 15 Beacon Cir.2004). at 40. of confusion. 436 F.3d the likelihood spec- classified on the a mark is Where Similarity the Marks is not evidence trum of distinctiveness decision-making the choices must deter- similarity The of marks be marketplace. in the In- faces consumer by comparing mined the total effect stead, the second element considers mark, parts. As- separate each not their allegedly infringing mark actual use of the Prods., v. Beckman In- tra Pharm. Inc. likely on commerce. There- and its effect (1st Inc., struments, 1201, F.2d 1205 718 fore, establishing Attrezzi as an I read Cir.1983). Nevertheless, if the most domi- that is different from analytical framework nant feature of both marks is the same or in other circuits and that that followed similar, may similarity then that cause con- legal issue of a distinguishes between Mut., at 18. Beacon 376 F.3d fusion. strength prac- and the conceptual mark’s that were in the course Words disclaimed strength. tical of its commercial issue ordinarily registration of trademark are part dominant of a word not the III. 23:42; 4 McCarthy mark. See see also opinion, the cited differences of Despite Floors, Country P’ship Composed Inc. v. I the same result under the follow- reach (3d Ford, 1056, F.2d 1065 Gepner & 930 ing analysis. Cir.1991); Corp. Temple, Pizzeria v. Uno (4th 1522, Cir.1984); 747 F.2d 1530 Giant A. Likelihood of Consumer Confu- Brands, Eagle, Inc. v. Giant sion—Pignons Factors (D.Md.2002). In F.Supp.2d addi- infringement requires proof Trademark tion, logo distinguishing or additional likely are to be confused as that consumers may features used with a mark reduce the product they buy- to the source of likelihood of confusion. Int’l Ass’n Ma- Trading ApS ing. I.P. Lund v. Kohler Aerospace Winship v. chinists & Workers (1st Cir.1998). Co., (1st Ctr., Nursing Green confusion measured con- potential for Cir.1996). sidering Pignons factors: (1) (2) similarity marks; of the SUPER DUCK TOURS and BOSTON (3) similarity goods; of the relation- both include the DUCK TOURS ship parties’ between channels of part “duck tours” which makes that (4) trade; relationship between the marks identical. Boston Duck disclaimed (5) parties’ advertising; the classes of during regis- both “duck” and “tours” (6) prospective purchasers; evidence of process tration Duck disclaimed (7) confusion; in- actual the defendant’s addition, “duck tours.” In the term “duck (8) mark; adopting tent in commonly tours” is understood to mean an strength the plaintiffs mark. amphibious sightseeing excursion. There- fore, “duck tours” should not be consid- Borinquen, (citing Pig- Mecanique part nons ered the dominant of their marks. S.A. de de Precision *32 Instead, vehicle, the marks’ first words are their theme and its new while Boston “Super” most salient features. refers to logo Duck’s focuses on the duck’s head tour, the characteristics of the while “Bos- hat, camouflage with a a reference to the suggests geography. ton” its The overall II by World War vehicles used therefore, impression, suggests a similar Duck. The obvious differences between the by enterprises. tour offered different logos strengthen marks and the conclusion they not confusingly similar. If logos The reinforce the differences. consumers viewed the logos marks and logo Boston Duck’s consists of a white oval marketplace, prior exposure without within which is a circle with a black border only logo, Boston Duck’s mark and they framing yellow cartoon duck. The duck would not be confused. facing directly sits on water out blue from purple the center of the circle with a back- Similarity Services
drop. top around the of the circle Written is the name BOSTON DUCK TOURS The tour by services offered lettering. yellow uniform car- black The similar, Duck Super and Duck are and the camouflage toon duck wears a hat and is district virtually court found them to be water, flapping wings causing its into Super identical. Duck does not challenge blue-and-white-tipped splash water to out- part of the district court’s order. side of the circle. logo Duck’s a blue oval with Trade, S. Advertising, Channels and accents, darker blue denoting water. To- Customers top ward logo, getting third, fourth, Pignons and fifth fac- smaller logo suggest across the motion tors are together. often considered At- from left right, the trade name SUPER trezzi, 436 F.3d at parties 39. The do not printed orange. DUCK TOURS is dispute they trade, share channels of largest promi- “SUPER” is the and most customers, advertising. nent feature of the mark as used in the logo. logo At the center of the is a duck Ip. Actual Confusion tour vehicle with a cartoon duck head actually Evidence that consumers are wings on the front and a tail duck on the confused similar provides marks rear of the duck vehicle. The vehicle with proof of the best likelihood of future confu- depicted moving wheels from a black sion. Id. at 40. Evidence of actual confu- road into the water. On the front of the sion, however, may be the result of exter- vehicle are the head and shoulders of a nal similarity factors unrelated to the cartoon an orange cape flowing duck with Anheuser-Busch, the marks. L Inc. v. & behind and over the vehicle. With one (4th L Wings, wings, holding its two muscular the duck is Cir.1992). While trademarks are intended up an orange flag with the words “Charles- protect against competition, they unfair town, Passengers MA” it. crowd to- perpetuate product are not intended to vehicle, gether along the side of the duck monopolies. Id. which Duck “Super has Tours” written on its side. As the duck vehicle enters the provided Boston Duck evidence that water, splashes white water into the air. some consumers were confused when Su- ducks,
Although logos both per began operations show cartoon Duck Boston in differently. Super the ducks are used the summer of 2007. Some consumers logo emphasizes super buy hero would tickets for tours that consumer confusion is depar at Boston Duck’s does not show arrive and then unlikely. proper in the Id. for tours. Taken ture sites *33 however, that context, the confusion has Super Duck Duck argues Boston Duck and Boston Super between occurred trade off of Boston Duck’s intended to Super the first few weeks of during Duck goodwill by using SUPER DUCK TOURS in the Boston area was operations theory, support mark. In of that its likely by Boston’s Duck more caused Duck Super Duck contends that Boston years position during the thirteen unique trademark, was aware of Boston Duck’s its only operated amphibious that it tour it logo, reputation and its associated when result, in the Boston area.36 As service Portland, Maine operations moved its from enjoyed in monopoly Duck has Boston circumstances, to Boston. Those Boston industry segment of the tour service asserts, an support Duck inference Su- contrast, In if several in the Boston area. faith. per Duck’s bad operat tour services had been amphibious however, shows, The evidence that Su- Super area when Duck ing in the Boston adopted began it per Duck its when began operations, a duck tour would be operating years in Portland six before it likely single associated with a less to be moved to Boston. Boston Duck does not company.37 contend that use of the mark in Portland laws, however, Trademark cannot be infringed its trademark. The circum- if perpetuate product monopoly used to support here do not an inference stances trademarks are not competing other- of bad faith. confusingly similar. Because I con- wise Strength 6. the Mark Super that Boston Duck’s and
clude logos confusing- and are not Duck’s marks Pignons last factor evaluates the The similar, ly unpersuaded by I am the evi- strength relative of the marks based on actual confusion. dence of Attrezzi, practical considerations. Strength by 40. is measured con- Intent sidering length “the of time the mark has used, been the trademark holder’s renown the defendant acted in bad Whether in industry, potency of the mark in adopting faith in its mark is another factor (as product by field measured determining to be the likeli- considered marks), registered number similar Attrezzi, hood of consumer confusion. promote the trademark holder’s efforts to F.3d at 40. Evidence that the defendant protect Borinquen, the mark.” advantage plain- intended to take F.3d at 121. reputation, goodwill, promotion tiffs product by adopting a similar mark is shows that Duck evidence Boston probative of the likelihood of consumer has used logo Tours its trademark and Servs., began confusion. Star Fin. Inc. v. since 1994. use its AAS- (1st later, Mortgage Corp., years TAR mark seven in Port- Cir.1996). land, appar- Evidence of the defendant’s Maine. The first duck tour mark, good adopting however, ently faith in began just after World Wisconsin suggests example, 36. The record also that confusion 37. For consumers would not con- "Super may fuse “Boston Pizza” with Pizza” be- company have been exacerbated they expect variety pizza cause businesses Super Duck hired to sell its tickets. to co-exist. mark, apart “tours” from its BOSTON Indeed, Duck acknowl- II. Boston War that it is not the first Boston Duck states that its website DUCK TOURS. edges on Therefore, al- tour. only duck promotes logo by using or it its mark and longevity Duck has more though Boston website, on its on its ticket sales them Duck, Duck was not than booths, and on the tour vehicles. apparently it duck tour nor is the first recognition in the Despite Boston Duck’s industry. running duck tour longest industry registration Boston tour and its it is re- Duck demonstrates *34 logo, given of mark and promotion and its sightsee- in Boston area for its nowned the common use of the term “duck tours” part, at least in tours. Its fame is due ing pro- to describe the service Boston Duck however, enjoyed it as position to the has vides, BOSTON DUCK TOURS is not a in only tour service the Boston duck strong mark. in recognition Duck’s tour area. Boston it cites are fo- magazines and the awards service. As unique Weighing Pignons on its Boston 7. Factors
cused such, that Bos- does not show the evidence Although pertinent several of the factors in the indus- ton Duck has unusual renown determining whether Boston Duck has whole, amphibi- try compared when shown a likelihood of consumer confusion ous tours offered elsewhere. logo Super its mark and and between many The record evidence shows conceded, logo Duck’s mark are those and com amphibious sightseeing vehicle other contested, that are when viewed under the Boston, provide the panies, outside of standard, appropriate weigh strongly service, “duck” or use the term same finding a likelihood of consumer against describing in tour” in their names or “duck Duck Tours is not a confusion. Boston services, in a cartoon duck their and show mark, repu- its strong particularly because means logos.38 Even Boston Duck’s their part having in tation is built at least DUKWs, II conveyance, the War of World amphibious tour service to introduced also shows that unique. is not The record having only such tour Boston and been applied to companies duck tour have other tours, years. Duck in Boston for thirteen tours,” names the term “duck register with however, to be have been and continue Duck, that other including Super country cities in this available other which include the term “duck trademarks internationally. registered have been with the PTO. tours” use of the Despite their shared by reg- protected
Boston Duck
tours,”
impression
the overall
logo
mark and its
istering its word
Duck
Duck and
marks
Boston
represents
Duck
the PTO 2002. Boston
not
Al-
logos
they
is that
similar.
use and ineontesti-
that its declarations for
though
provided
Duck
evidence
Boston
bility
accepted
the mark were
confusion,
confusion
actual consumer
such
registration,
In
July
of 2007.
PTO
Duck’s
likely more the result of Boston
however,
right
Boston Duck disclaimed the
any
than
position in Boston rather
unique
and the word
to use the word “duck”
Co.,
fact,
(Fla.Dist.Ct.App.2007);
dispute
about
Dells Boat
In
this is not the first
Delton,
WL
Village
Lake
that has landed a duck tour
Inc. v.
similar services
29, 2001);
(Wis.Ct.App.
See,
Nov.
Old
company
in court.
e.g., Ride the Ducks
Tours,
Tours, Inc.,
Mayor
WL
Inc. v.
& Aldermen
South Duck
LLC v. Duck Boat
Phil.
Savannah,
6, 2005);
(3d
tion.
not entitled
infringe-
likely
injunction
it
to succeed on its
to the
that was issued. New
Servs.,
con-
APPENDIX *35 Associates, Inc., Freedenfeld Warren Counterclaim, Defendant Appellee, v. McTigue, D.V.M.,
Michael P. Counterclaimant, Appellant. 07-1602, Nos. 07-1603. Appeals, United States Court of First Circuit. 5,May Heard 2008. Decided June WARREN FREEDENFELD ASSOCIATES, INC.,
Plaintiff, Appellant, McTIGUE, D.V.M.,
Michael P. et
al., Defendants, Appellees.
notes
DUCK
supra,
use
its own mark SUPER
marketplace.
McCarthy,
Duck's
of
in the
likely
cause confusion with
greater
TOURS was
to
explain in
detail be-
§
As we
11:83.
Thus, contrary
low,
strength
mark.
Boston Duck's
typically evaluate a mark's
we
suggestion, we are not conflat-
concurrence's
of its commercial
primarily on the basis
analysis with
ing
likelihood of confusion
analyzing
"the
strength,
such factors as
analy-
infringement
the first element of the
length
has been used and the
of time a mark
field;
protection.
strength
a mark is entitled to
sis—whether
in its
relative renown
business;
undertaking
genericism analysis
and We are
plaintiff's field of
the mark in
scope
protection af-
only to determine the
promoting the mark.”
plaintiff's action in
Techs.,
(internal
composite
quota-
to Boston Duck's
mark.
F.3d at 547
forded
Equine
omitted).
tion marks
specific
examining the
commer-
16.Without
typically rely upon, the district
we
that the
cial factors
agree with the concurrence
15. We
indirectly
the commercial
by assessing
court
considered
whether the
district court erred
assessing
strength
plaintiff's
by
mark
owned
phrase "duck tours” was
trademark
secondary
acquired
the mark had
light
Duck's
whether
by
Duck in
of Boston
meaning
connection with Boston Duck's
only sought
it
to establish
assertion that
McCarthy, supra,
11:82
See 2
SUPER
services.
likelihood of confusion between
(“When determining
mar-
the commercial or
mark BOS-
DUCK TOURS
mark,
However,
strength
the courts look to
ketplace
of a
the district
TON DUCK TOURS.
recog-
of real world
phrase
the same kind of evidence
underlying
that the
court’s
conclusion
as is used to decide
generic
nition of the mark
was not
and therefore
"duck tours”
strength analysis
our
“practical
matters warranted.
Specifically, we would risk
to a mark’s
perception
[related
the mar-
recognizing
strength
commercial
is
ketplace] and
legal
not the
classification of
the result of the descriptive force of the
mark,” Attrezzi,
v. Maytag Corp.
unprotectable
LLC
generic
element
“duck
(1st
Cir.2006);
see Beacon
tours.”18 See
Def.,
Colt