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Keywords

tortplaintiffinjunctionappealtrademark

appealtrademark

Related Cases

Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 87 U.S.P.Q.2d 1385

Facts

Boston Duck Tours, a sightseeing tour operator, sued its competitor, Super Duck Tours, for trademark infringement and tortious interference. The dispute arose over the use of the phrase 'duck tour' and the design of a cartoon duck in their respective trademarks. Boston Duck claimed that Super Duck's use of these terms caused consumer confusion and sought a preliminary injunction to prevent Super Duck from using them. The district court initially granted the injunction, finding that the term 'duck tours' was not generic and thus protectable under trademark law.

Both Boston Duck and Super Duck are in the business of offering sightseeing tours via land and water in Boston, using amphibious vehicles commonly referred to as 'ducks.'

Issue

Whether the phrase 'duck tour' is generic and whether there is a likelihood of confusion between the trademarks 'BOSTON DUCK TOURS' and 'SUPER DUCK TOURS'.

Rule

Under the Lanham Act, a trademark is considered generic if it designates the class of goods rather than the source. To succeed in a trademark infringement claim, a plaintiff must demonstrate that their mark is entitled to protection and that the allegedly infringing use is likely to cause consumer confusion. The likelihood of confusion is assessed using an eight-part test that includes factors such as the similarity of the marks and the strength of the plaintiff's mark.

Analysis

The court analyzed the term 'duck tour' and found it to be generic, as it was widely used by various companies to describe similar services. The court also evaluated the likelihood of confusion between the two marks, concluding that the significant differences in the composite marks, along with the generic nature of 'duck tour', diminished the likelihood of confusion. The court noted that consumer confusion was primarily due to the lack of competition rather than the similarity of the marks.

Conclusion

The Court of Appeals reversed the district court's decision, concluding that the phrase 'duck tour' was generic and that there was no likelihood of confusion between the trademarks, thus dissolving the preliminary injunction.

The district court committed clear error by finding the phrase 'duck tour' nongeneric, and thereby according it too much weight in its likelihood of confusion analysis.

Who won?

Super Duck Tours prevailed in the appeal, as the Court of Appeals found that the district court had erred in its assessment of the term 'duck tour' as nongeneric. The appellate court determined that the phrase was widely used in the industry and did not serve as a source identifier for Boston Duck Tours. Consequently, Super Duck was allowed to continue using its trade name and logo without the restrictions imposed by the preliminary injunction.

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