Boston Duck Tours, LP v. Super Duck Tours, LLC , 531 F.3d 1 ( 2008 )

United States Court of Appeals
For the First Circuit
Nos. 07-2078
07-2246
BOSTON DUCK TOURS, LP,
Plaintiff-Appellee, Cross-Appellant,
v.
SUPER DUCK TOURS, LLC,
Defendant-Appellant, Cross-Appellee.
APPEALS FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Nathaniel M. Gorton, U.S. District Judge]
Before
Lipez and Howard, Circuit Judges,
and DiClerico, Jr., Senior District Judge.*
Robert R. Pierce, with whom Christopher D. Engebretson and
Pierce & Mandell, P.C. were on brief, for plaintiff, appellee.
Victor H. Polk, Jr., with whom Ralph C. Martin, II, Joshua M.
Dalton, Lawrence T. Stanley, Jr., and Bingham McCutchen LLP, were
on brief for defendant, appellant.
June 18, 2008
*
Of the District of New Hampshire, sitting by designation.
LIPEZ, Circuit Judge. In this trademark infringement
dispute, defendant-appellant Super Duck Tours ("Super Duck")
appeals a preliminary injunction granted in favor of plaintiff-
appellee Boston Duck Tours ("Boston Duck"). Asserting that the
phrase "duck tour" and the image of a duck splashing in water are
generic, and therefore that there is no likelihood of confusion
between Boston Duck's marks and Super Duck's marks, appellant
requests that we dissolve the injunction requiring the alteration
of its trade name and logo. Appellee has also cross-appealed the
order of the district court, arguing that the court committed clear
error by not enjoining Super Duck from using the term "duck" in its
trade name.
After carefully reviewing the record in this dispute, we
conclude that 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. Consequently,
the court erred in issuing a preliminary injunction, which
prevented Super Duck from using the phrase "duck tour" in its own
trade name. The district court also clearly erred in finding a
likelihood of confusion between Super Duck's and Boston Duck's
design marks. Therefore, the court also should not have issued an
injunction preventing Super Duck from using its design mark. We
dismiss Boston Duck's cross-appeal as moot given our resolution of
the other issues.
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I.
A. Duck Tours
We recite the background facts here, adding additional
information throughout the analysis where appropriate. 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." The idea to market such tours to
the public was hatched by Melvin Flath shortly after World War II.
He purchased DUKWs (pronounced "ducks"), amphibious army vehicles
used in the war to function as both trucks and boats, and fitted
them with bus seats. His company, based in Wisconsin Dells,
Wisconsin, became the first purveyor of such tours in the country.
Recently, these amphibious tours have surfaced in many
cities in the United States and abroad, including San Francisco,
Philadelphia, Seattle, Chicago, and London. Many of the companies
that offer these tours use the phrase "duck tour" in their trade
names as a way of describing their services. They also use various
logos featuring a cartoon duck and water to advertise and represent
their businesses.
B. The Parties
Since 1994, Boston Duck has offered sightseeing tours of
the Boston area and Charles River, largely with genuine renovated
DUKWs from World War II. Andy Wilson, the founder of Boston Duck,
started the company after a visit to Memphis, Tennessee in 1992,
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where he experienced his first tour. The vehicles, which are
painted with a rainbow of colors and marked with the Boston Duck
logo,1 take customers to a number of Boston landmarks, including
Charles Street, the State House, the North End, Quincy Market, and
Newbury Street. Boston Duck has received national and
international press coverage as well as numerous awards for its
tours. The tours were featured in the World Series Parade after
the Boston Red Sox won the World Series in 2004 and after the
Patriots' 2002, 2004, and 2005 Super Bowl wins. In 2006 alone,
over 585,000 customers enjoyed a tour operated by Boston Duck.
Begun in 2001, Super Duck is also in the business of
providing sightseeing tours by land and water. Rather than using
renovated DUKWs, Super Duck uses custom-made amphibious vehicles
called Hydra-Terras containing several features that make the
vessels virtually unsinkable. Because of the Hydra-Terras'
features, which make them "larger and more modern" than the
original DUKW vehicles, Super Duck decided to adopt the trade name
SUPER DUCK TOURS in 2001. The name and the company's super-hero
theme seek to portray services that are "bigger and newer"; the
company essentially combined the word "super" with the description
of the service offered, "duck tours." The "super" theme was also
reflected in the company's advertisements and website, which
1
See Appendix for an image of the logo. A detailed
description of the logo is provided in Section V, infra.
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contain a parody of Superman ("It's a bus. It's a boat. It's a
Super Duck!") as well as its logo, which consists of a white
cartoon duck with an orange bill, muscular arms, and a cape.
Super Duck opened its business in Portland, Maine in 2001
and operated exclusively there until 2003, when the company ceased
its operations in Maine and, seeking a larger New England market,
started planning operations in Boston. Unable to obtain the
necessary approvals and Hackney licenses to begin operations on its
own, Super Duck purchased New England Tours in 2006 and thereafter
obtained the necessary permits and licenses to conduct its tours.
In late 2006 and 2007, Super Duck took steps to begin its Boston
operation, including launching its website, advertising its
services in local publications, and making substantial capital and
resource investments in its operations. In May 2007, Super Duck
entered into an agreement with Discover Boston, an independent
company that offers trolley tours, whereby Discover Boston agreed
to sell tickets for Super Duck tours in exchange for a sales
commission. Super Duck introduced its tour operations the same
month; the tours avoid the Back Bay area, a focus of Boston Duck's
tours, instead concentrating on the Boston waterfront area.
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C. The Trademarks
Boston Duck owns several state and federal trademark
registrations for the composite2 word mark BOSTON DUCK TOURS and a
composite design mark consisting of the company's name and logo in
connection with its sightseeing tour services. For both of these
marks, Boston Duck's federal registrations on the Principal
Register3 are subject to disclaimers for the terms "duck" and
"tours," meaning that it does not possess exclusive rights to use
either term separate and apart from its full, registered mark.
See, e.g., Dena Corp. v. Belvedere Int'l, Inc., 950 F.2d 1555, 1560
(Fed. Cir. 1991). Boston Duck also owns two federal trademark
registrations, one for the composite word mark BOSTON DUCK TOURS
and the second for its composite design mark, in connection with
"clothing, namely, sweatshirts, T-shirts, golf shirts, sweaters,
visors, and hats."4 Boston Duck claims a first-use date of 1993
2
A "composite mark" is a mark that consists of several
separate elements. If a mark contains components that "are so
merged together that they cannot be regarded as separate elements
. . . , the mark is a single unitary mark." 4 Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 19:66 (4th ed.
2008).
3
There are a number of procedural and substantive legal
benefits that come with registration of a mark on the Principal
Register. See 3 McCarthy, supra, § 19:9. For example,
"registration on the Principal Register is prima facie evidence of
the validity of the registered mark, of the registration of the
mark, of the registrant's ownership of the mark, and of the
registrant's exclusive right to use the registered mark." Id.
4
In connection with its applications for apparel, Boston Duck
was required to disclaim the term "Boston," but not "duck" or
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for three of its four registrations; the fourth, the word mark in
connection with apparel, claims a first-use date of 1995. Super
Duck does not dispute that Boston Duck maintains trademark priority
rights in the Boston area with respect to its composite marks.
Super Duck maintains one federal registration for the
word mark SUPER DUCK TOURS on the Supplemental Register,5 in
connection with its tour services. Super Duck filed for the mark
in 2001 on the Principal Register, but its application was rejected
by the United States Patent and Trademark Office (the "PTO"), which
ruled that the phrase was merely descriptive, and therefore not
entitled to protection unless Super Duck could establish secondary
meaning. As a result, Super Duck agreed to register the mark on
the Supplemental Register, and further, to disclaim exclusive use
of the phrase "duck tours." The mark has been registered since
July 2003, and Super Duck claims a first-use date of 2001.
D. Procedural History
On July 2, 2007, Boston Duck filed a complaint against
Super Duck Tours, alleging federal trademark infringement in
violation of Section 32(1) of the Lanham Act, codified at 15 U.S.C.
"tours."
5
A mark may be registered on the Supplemental Register if it
is inherently non-distinctive (such as a descriptive phrase), and
is "capable of achieving trademark status through the acquisition
of secondary meaning and distinctiveness." 2 McCarthy, supra, §
12:1. A generic term cannot be registered on either the Principal
or Supplemental Registers. Id.
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§ 1114, federal and state unfair competition, tortious interference
with prospective business relationships, and a flock of other state
and federal claims. In connection with these claims, Boston Duck
asked the court for a temporary restraining order and preliminary
injunction to prevent Super Duck from using its trademark or logo,
or any other mark confusingly similar to Boston Duck's mark BOSTON
DUCK TOURS, in connection with its services. Further, it sought to
enjoin Super Duck from interfering with Boston Duck's relations
with prospective customers.
After receiving affidavits and exhibits from both
parties, the district court held a non-testimonial hearing on the
motion for a preliminary injunction on July 11. Two days later,
the court entered its judgment, granting Boston Duck's motion in
part and denying it in part. Specifically, the court found the
term "duck tours" to be nongeneric for amphibious sightseeing tours
in the Boston area, and therefore capable of trademark protection.
The court used the eight-part likelihood of confusion test
established in Pignons S.A. de Mecanique de Precision v. Polaroid
Corp., 657 F.2d 482, 487 (1st Cir. 1981) (the "Pignons factors" or
"Pignons analysis"),6 and concluded that Boston Duck had
6
In Pignons, the court stated that when determining whether
a likelihood of confusion exists, a court should examine the
following factors: "the similarity of the marks; the similarity of
the goods; the relationship between the parties' channels of trade;
the relationship between the parties' advertising; the classes of
prospective purchasers; evidence of actual confusion; the
defendant's intent in adopting its mark; and the strength of the
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established a likelihood of success on the merits of its trademark
infringement claim. Accordingly, the court enjoined Super Duck
from "using the term 'duck tours' or a cartoon duck as a trademark
. . . in association with its sightseeing tour service in the
greater Boston area." Further, it enjoined Super Duck from using
the term "duck" in a two-word or three-word trademark in
conjunction with either "Boston" or "tours."
The court denied Boston Duck's preliminary injunction
request on the tortious interference claim, finding that the
tortious conduct alleged by Boston Duck was in fact committed by
Discover Boston, an independent agency unrelated to Super Duck.
Finally, pursuant to Fed. R. Civ. P. 65(c), the court required
Boston Duck to post a bond in the amount of $100,000 as security
for any costs and damages that may be incurred or suffered by Super
Duck should it be determined that the injunction was improvidently
granted.
Both Boston Duck and Super Duck challenge on appeal
aspects of the district court's judgment. Super Duck challenges
the district court's preliminary injunction, arguing that the court
erred by not holding that the phrase "duck tours" and the image of
a cartoon duck are generic for the services both companies provide.
Super Duck further claims that because of this error, the court
gave undue weight to the term "duck tours" and the image of a
plaintiff's mark." 657 F.2d at 487.
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cartoon duck when comparing the parties' respective marks, and
thereby improperly found a likelihood of confusion between the
marks BOSTON DUCK TOURS and SUPER DUCK TOURS as well as the
parties' design marks. Boston Duck cross-appeals, arguing that the
district court erred by not enjoining Super Duck from using the
word "duck" or "ducks" in any part of its trademark in conjunction
with its services.
II.
When deciding a motion for a preliminary injunction, a
district court weighs several factors: "(1) the plaintiff's
likelihood of success on the merits; (2) the potential for
irreparable harm in the absence of an injunction; (3) whether
issuing an injunction will burden the defendants less than denying
an injunction would burden the plaintiffs; and (4) the effect, if
any, on the public interest." United States v. Weikert, 504 F.3d
1, 5 (1st Cir. 2007). The first factor, the plaintiff's likelihood
of success, is "the touchstone of the preliminary injunction
inquiry." Philip Morris, Inc. v. Harshbarger, 159 F.3d 670, 674
(1st Cir. 1998). "[I]f the moving party cannot demonstrate that he
is likely to succeed in his quest, the remaining factors become
matters of idle curiosity." New Comm Wireless Servs., Inc. v.
SprintCom, Inc., 287 F.3d 1, 9 (1st Cir. 2002).
On appeal, we review the grant of a preliminary
injunction for abuse of discretion. Weikert, 504 F.3d at 6.
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Within that framework, findings of fact are reviewed for clear
error and issues of law are reviewed de novo. Wine and Spirits
Retailers, Inc. v. Rhode Island, 418 F.3d 36, 46 (1st Cir. 2005).
"[W]e will set aside a district court's ruling on a preliminary
injunction motion only if the court clearly erred in assessing the
facts, misapprehended the applicable legal principles, or otherwise
is shown to have abused its discretion." Id.III.
Before addressing the specific arguments raised on
appeal, we set forth as essential background some basic principles
of trademark law related to the use of generic terms as marks.
Even though Super Duck has acknowledged that the mark BOSTON DUCK
TOURS is entitled to trademark protection, thereby conceding the
first element of Boston Duck's trademark infringement claim, see
Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 116
(1st Cir. 2006), we discuss these background trademark principles
because they inform our genericism analysis of the phrase "duck
tours."
Although trademarks are not explicitly authorized by the
United States Constitution,7 our federal legal system offers
7
By contrast, the Constitution gives Congress the express
authority to establish laws governing patents and copyrights. U.S.
Const. art. I, § 8; see also 13B Charles Alan Wright, Arthur R.
Miller & Edward H. Cooper, Federal Practice and Procedure § 3582
(2d ed. 1984) ("The Constitution gives the Congress express power
to enact patent and copyright laws, while the Congress must rely on
its general power to regulate interstate and foreign commerce in
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statutory protection for entities that adopt and use trademarks to
advertise and market their goods and services.8 See generally 15
U.S.C. §§ 1051-1129 (the Lanham Act). This protection is justified
by the substantial benefits that trademarks offer for both
consumers and businesses. Serving to distinguish and identify
goods, as well as their sources, trademarks concisely impart
information to consumers, reducing their search costs and allowing
them to make decisions that more closely coincide with their
preferences. See Ty Inc. v. Perryman, 306 F.3d 509, 510 (7th Cir.
2002) ("The consumer who knows at a glance whose brand he is being
asked to buy knows whom to hold responsible if the brand
disappoints and whose product to buy in the future if the brand
pleases."). Because consumers rely heavily on trademarks when
making choices, businesses also have an incentive to maintain
product quality, lest they lose disappointed consumers. See id.The considerable reliance on trademarks by consumers also
creates an incentive for other competing, and typically less
successful businesses, "to pass off their inferior brand as the
successful brand by adopting a confusingly similar trademark, in
effect appropriating the goodwill created by the producer of the
order to regulate trademarks." (footnote omitted)).
8
The term "trademark" is used throughout this opinion to
include both trademarks and service marks. Trademarks serve to
identify and distinguish goods; service marks perform the same
function for services. In the context of this appeal, it is a
distinction without a difference.
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successful brand." Id. Trademark law is designed, in part, to
prevent these "passing-off" practices and the consumer confusion
that results from it. See id. Trademark infringement law is
specifically targeted to address this concern.
To succeed on a claim of trademark infringement, a
plaintiff must establish (1) that its mark is entitled to trademark
protection, and (2) that the allegedly infringing use is likely to
cause consumer confusion. Borinquen Biscuit, 443 F.3d at 116. We
have interpreted "likely confusion" to mean "more than the
theoretical possibility of confusion." Int'l Ass'n of Machinists
and Aerospace Workers, AFL-CIO v. Winship Green Nursing Ctr., 103
F.3d 196, 200 (1st Cir. 1996). In other words, the allegedly
infringing conduct must create "a likelihood of confounding an
appreciable number of reasonably prudent purchasers exercising
ordinary care." Id. at 201.
A mark is entitled to trademark protection if it is
capable of functioning as a source-identifier of goods. Two Pesos,
Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992). Trademark law
categorizes proposed marks along a spectrum of distinctiveness,9
based on their capacity to serve such a source-identifying
9
"The term 'distinctive' is a key term of art in trademark
law. . . . If a designation is not 'distinctive,' it is not a
'mark.' Without achieving distinctiveness, either inherently or
through the acquisition of secondary meaning, a designation does
not have the legal status of a 'trademark' or 'service mark.'" 2
McCarthy, supra, § 11:2.
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function. A mark is classified as: (1) generic (least
distinctive), (2) descriptive, (3) suggestive, (4) arbitrary, or
(5) fanciful (most distinctive). Id. at 768 (citing Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976)).
Marks classified as suggestive -- COPPERTONE for sun screen10 –
arbitrary -- APPLE for computers11 -- or fanciful -- EXXON for
petroleum products12 -- are all considered inherently distinctive
because they have the capacity to serve a source-identifying
function upon first use. As the Fourth Circuit has recited:
The more distinctive the trade mark is, the greater its
influence in stimulating sales, its hold on the memory of
purchaser and the likelihood of associating similar
designations on other goods with the same source. If the
trade mark is a coined word, such as Kodak, it is more
probable that all goods on which a similar designation is
10
"A term is suggestive if it requires imagination, thought
and perception to reach a conclusion as to the nature of goods."
Equine Techs., Inc. v. Equitechnology, Inc., 68 F.3d 542, 544 (1st
Cir. 1995) (quoting Blinded Veterans Ass'n v. Blinded Am. Veterans
Found., 872 F.2d 1035, 1040 (D.C. Cir. 1989)); see 2 McCarthy,
supra, § 11:62. The mark COPPERTONE is suggestive of suntan lotion
because it hints at the nature of the connected product.
11
"An arbitrary mark consists of a word or symbol that is in
common usage in the language, but is arbitrarily applied to the
goods or services in question in such a way that it is not
descriptive or suggestive." 2 McCarthy, supra, § 11:4. The mark
APPLE is arbitrary for computer-related items because its common
definition is a fruit, which is unrelated to its use in connection
with computers and other technological items.
12
"A fanciful mark is a word that is coined for the express
purpose of functioning as a trademark. It could also be any obscure
or archaic term not familiar to buyers." 2 McCarthy, supra,
§ 11:4. The mark EXXON is fanciful because it was invented or
designed solely to designate petroleum and other related goods. It
has no other meaning.
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used will be regarded as emanating from the same source
than when the trade-mark is one in common use on the
variety of goods, such as "Gold Seal" or "Excelsior".
Arrow Distilleries v. Globe Brewing Co., 117 F.2d 347, 349 (4th
Cir. 1941) (quoting Restatement (First) of Torts § 731 cmt. e
(1938)) (quotation marks omitted). Accordingly, suggestive,
arbitrary, and fanciful terms may be registered as trademarks on
the Principal Register under the Lanham Act without producing any
actual evidence of their source-identifying attributes or the
public's perception of these marks.
Descriptive marks are those that "convey[] an immediate
idea of the ingredients, qualities or characteristics of the goods"
to which they are attached, see Equine Techs., Inc. v.
Equitechnology, Inc., 68 F.3d 542, 544 (1st Cir. 1995) (quoting
Blinded Veterans Ass'n v. Blinded Am. Veterans Found., 872 F.2d
1035, 1040 (D.C. Cir. 1989), such as SPORTS ILLUSTRATED for a
sports magazine. Because descriptive marks are not inherently
capable of serving as source-identifiers, such marks may only be
registered on the Principal Register after the owner has provided
sufficient evidence to establish that the public associates the
term or phrase not only with a specific feature or quality, but
also with a single commercial source. See 2 McCarthy, supra, §
15:1. When a descriptive phrase becomes associated with a single
commercial source, the phrase is said to have "acquired
distinctiveness" or "secondary meaning," and therefore functions as
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a trademark. See 15 U.S.C. § 1052(f) ("[N]othing [herein] shall
prevent the registration of a mark used by the applicant which has
become distinctive of the applicant's goods in commerce."). For
example, when the public perceives the phrase SPORTS ILLUSTRATED as
a particular sports magazine in addition to its primary meaning as
a description of a specific feature or element, the phrase has
"acquired distinctiveness" or "secondary meaning" and may receive
trademark protection. "A mark is, therefore, considered
distinctive (and, thus, eligible for trademark protection) if it
either is inherently distinctive or exhibits acquired
distinctiveness gained through secondary meaning." Borinquen
Biscuit, 443 F.3d at 116-17.
Finally, a generic term, such as "car" or "pizza," is one
that does not have capacity as a source-identifier because it
designates the class, or "genus" of goods. See Abercrombie &
Fitch, 537 F.2d at 9; Colt Def. LLC v. Bushmaster Firearms, Inc.,
486 F.3d 701, 705 (1st Cir. 2007) ("'A generic term is one that
does not distinguish the goods of one producer from the goods of
others. Instead, it is one that either by definition or through
common use has come to be understood as referring to the genus of
which the particular product is a species.'" (quoting Keebler Co.
v. Rovira Biscuit Corp., 624 F.2d 366, 373-74 (1st Cir. 1980))).
Rather than answering the question "where do you come from?", a
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generic term merely explains "what are you?" Id. (quoting 2
McCarthy, supra, § 12:1).
Because they serve primarily to describe products rather
than identify their sources, generic terms are incapable of
becoming trademarks, at least in connection with the products that
they designate. See Park 'N Fly, Inc. v. Dollar Park & Fly, Inc.,
469 U.S. 189, 193-94 (1985). Awarding trademark rights to any user
of the term, especially the first user, would harm competitors and
consumers alike. Competitors unable to use a common term that
describes or designates their product are at a significant
disadvantage communicating to potential customers the nature and
characteristics of the product. See Vanessa Bowman Pierce, If it
Walks like a Duck and Quacks like a Duck, Shouldn't it be a Duck?:
How a "Functional" Approach Ameliorates the Discontinuity Between
the "Primary Significance" Tests for Genericness and Secondary
Meaning, 37 N.M. L. Rev. 147, 154 (2007). Likewise, consumers will
be forced either to pay a higher price to purchase the desired
goods from the seller who owns the generic term as a trademark or
expend additional time investigating the alternative products
available. Id. Therefore, in accord with the primary
justifications for protecting trademarks -- to aid competition and
lower consumers' search costs -- the law does not grant any party
exclusive rights to use generic terms as trademarks.
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We turn now to Super Duck's several challenges to the
conclusions of the district court.
IV.
We begin with Boston Duck's trademark infringement claim
against Super Duck based on the parties' word marks. On appeal,
Super Duck challenges the district court's conclusion that Super
Duck's use of its mark SUPER DUCK TOURS is likely to cause
confusion among the relevant consumer public with Boston Duck's use
of its mark BOSTON DUCK TOURS.13 Specifically, it argues that the
court erred by finding that the phrase "duck tours" is nongeneric
for amphibious sightseeing tours and therefore capable of receiving
trademark protection. Because of this erroneous conclusion, Super
Duck asserts that the district court gave undue weight to the
phrase "duck tours" in the parties' respective marks when analyzing
the relevant Pignons factors. For example, rather than focusing on
the nongeneric portions of each party's mark, "BOSTON" and "SUPER,"
respectively, when comparing the marks, the court treated each
element in the parties' composite marks equally when comparing them
with one another. If the district court had deemed "duck tours"
generic as the law requires, Super Duck contends, it would have de-
emphasized that element in each party's mark and found that the
13
The district court properly noted that Super Duck had
conceded the first required element in Boston Duck's trademark
infringement action -- that it owns a mark entitled to trademark
protection. See Borinquen Biscuit, 443 F.3d at 116.
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differences between the composite marks significantly outweighed
the similarities. Further, the court's analysis of other Pignons
factors, including Super Duck's intent in adopting its mark and the
consideration of evidence of actual confusion, would also have been
altered in favor of Super Duck. As a result, the district court
would not have found a likelihood of confusion between the marks
and granted an injunction in favor of Boston Duck.
A. The Eight-Factor Pignons Test
To determine whether the district court's conclusion
regarding the second infringement requirement -- a likelihood of
confusion between the marks -- was clearly erroneous, we must
assess the district court's Pignons analysis of the composite marks
BOSTON DUCK TOURS and SUPER DUCK TOURS. We review the district
court's factual findings for each Pignons factor for clear error.
See Equine Techs., 68 F.3d at 546. Then we assess whether the
court's overall conclusion -- that Boston Duck was able to show a
likelihood of confusion between the marks -- is erroneous. "The
determination as to whether a likelihood of confusion exists is a
question of fact, which we review only for clear error." Id.Where the district court's analysis is based on an
incorrect legal premise, or it has not addressed a relevant and
required issue, we could remand the case to the district court for
further consideration in light of the legal errors we have
identified. However, where the underlying facts are largely
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undisputed, as they are in this case, we think that course of
action would be a waste of judicial resources and incompatible with
the urgency of the issues before us. See Guglietti v. Sec'y of
Health & Human Servs. 900 F.2d 397, 399-400 (1st Cir. 1990)
(choosing not to remand where the facts were not in dispute and the
district court was in no better position to decide the matter); Kos
Pharm., Inc. v. Andrx Corp., 369 F.3d 700, 712 (3rd Cir. 2004)
(noting that it would be a waste of judicial resources to remand a
trademark action where the district court committed legal error,
but the facts necessary to make the necessary likelihood of
confusion determination are undisputed); Opticians Ass'n of Am. v.
Indep. Opticians of Am., 920 F.2d 187, 194-98 (3d Cir. 1990)
(addressing the remaining elements necessary to support a
preliminary injunction without remand where the district court had
erroneously found that plaintiff was unlikely to succeed on the
merits of its claim). Where the district court's analysis reveals
a legal error, we address those conclusions de novo. On the
remaining factors -- the similarity of the goods, the relationship
between the parties' channels of trade, the relationship between
the parties' advertising, and the classes of prospective purchasers
–- we defer to the district court's analysis.
1. Strength of the Plaintiff's Mark
Although the eight-factor Pignons analysis typically
begins with an evaluation of the similarities and differences
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between the marks at issue, there is no necessary sequence in the
eight-factor analysis. In this case, Super Duck has asserted that
an element of Boston Duck's mark, "duck tours," is generic. This
genericism challenge implicates the strength of Boston Duck's mark.
Moreover, for the reasons asserted by Super Duck, if the district
court's conclusion on the genericism question was clearly
erroneous, the court's analysis of several other Pignons factors
was necessarily flawed as well. Thus, we begin our discussion with
the district court's evaluation of the phrase "duck tours" and,
consequently, its analysis of the strength of Boston Duck's
composite trademark BOSTON DUCK TOURS.
a. The district court's genericism analysis
Evaluating the strength of Boston Duck's composite mark,
the district court limited its discussion exclusively to the phrase
"duck tours," assessing both the phrase's conceptual strength --
its inherent distinctiveness -- and its commercial strength.14 The
court found the phrase "duck tours" was nongeneric. In reaching
this conclusion, the court relied exclusively on a dictionary
14
The "conceptual strength" of a mark refers to the mark's
placement on the spectrum of distinctiveness. "Commercial
strength" denotes the mark's consumer recognition value in the
marketplace. 2 McCarthy, supra, § 11:83. As we explain in greater
detail below, we typically evaluate a mark's strength primarily on
the basis of its commercial strength, analyzing such factors as
"the length of time a mark has been used and the relative renown in
its field; the strength of the mark in plaintiff's field of
business; and the plaintiff's action in promoting the mark."
Equine Techs., 68 F.3d at 547 (internal quotation marks omitted).
-21-
definition of "duck," which did not include any reference to DUKWs
or amphibious vehicles. See 2 McCarthy, supra, § 12:13 (listing
"dictionary definitions" as one of several factors a court should
consider when determining whether a phrase is generic). The
court's analysis of the genericism issue consisted of the
following:
Unlike the examples of "wool felt" and "crab house"
identified by the defendant, "duck tours" does not
clearly refer to a broad, general category of services.
Rather, the word "duck" is a play on the World WAR II
amphibious vehicles, DUKWs, which were the distinctive
predecessors of the vehicles used by Plaintiff, Boston
Duck Tours. The tour itself does not involve ducks, as
creatures, in any way. Contrary to what the name "duck
tours" may imply, the tour does not involve either duck
watching or duck hunting. Thus, unlike "wool felt" or
"crab house" in which the generic terms referred exactly
to what the public would assume the words to mean, the
link here is more attenuated.
Although it did not classify "duck tours" as descriptive,
suggestive, or fanciful, it concluded that the phrase was capable
of receiving trademark protection.15
15
We agree with the concurrence that the district court erred
by assessing whether the phrase "duck tours" was a trademark owned
by Boston Duck in light of Boston Duck's assertion that it only
sought to establish a likelihood of confusion between SUPER DUCK
TOURS and its composite mark BOSTON DUCK TOURS. However, the
district court's underlying conclusion that the phrase "duck tours"
was not generic and therefore capable of protection as a trademark
remains relevant for determining the scope of protection to which
Boston Duck's composite mark was entitled and therefore whether
Super Duck's use of its own mark SUPER DUCK TOURS was likely to
cause confusion with Boston Duck's mark. Thus, contrary to the
concurrence's suggestion, we are not conflating the likelihood of
confusion analysis with the first element of the infringement
analysis -- whether a mark is entitled to protection. We are
undertaking the genericism analysis only to determine the scope of
-22-
The district court was correct in analyzing both the
conceptual and commercial strength of plaintiff's mark in this
case.16 Although we have tended to focus our strength analysis on
"practical matters [related to a mark's perception in the
marketplace] and not the legal classification of the mark,"
Attrezzi, LLC v. Maytag Corp. 436 F.3d 32, 40 (1st Cir. 2006); see
Beacon Mut. Ins. Co. v. OneBeacon Ins. Group, 376 F.3d 8, 19 (1st
Cir. 2004), even going so far as to say that consideration of the
inherent distinctiveness of a mark was "a proposition [not]
supported by any First Circuit case law and its logic is not
apparent to us," Attrezzi, 436 F.3d at 40, the conceptual strength
of the overall mark, and its components, is indeed relevant where
a composite mark contains an arguably generic phrase.17 If we were
protection afforded to Boston Duck's composite mark.
16
Without examining the specific commercial factors we
typically rely upon, the district court indirectly considered the
commercial strength of plaintiff's mark by assessing whether the
mark had acquired secondary meaning in connection with Boston
Duck's services. See 2 McCarthy, supra, § 11:82 ("When determining
the commercial or marketplace strength of a mark, the courts look
to the same kind of evidence of real world recognition of the mark
as is used to decide the presence or absence of secondary meaning
to determine whether a noninherently distinctive designation is or
is not a valid mark."). Although the district court cited evidence
of secondary meaning in connection with its analysis of the phrase
"duck tours" alone, the evidence applies equally to Boston Duck's
composite mark BOSTON DUCK TOURS.
17
We disagree with the concurring opinion when it states that
"where a mark is classified on the spectrum of distinctiveness is
not evidence of the choices and decision-making that a consumer
faces in the marketplace." In fact, where a mark lies on the
spectrum of distinctiveness is in part dependent on market and
-23-
to measure BOSTON DUCK TOURS' strength only on the basis of
practical, commercial factors, we would risk affording greater
protection to the mark than is warranted. Specifically, we would
risk recognizing commercial strength that is the result of the
descriptive force of the unprotectable generic element "duck
tours."18 See Colt Def., 486 F.3d at 705 ("Generic terms, being the
least distinctive, receive no trademark protection."). For this
reason, our statement in Attrezzi, where we determined the strength
of a protectable, unitary mark, does not apply to this case.19
societal conditions. Words do not exist in a vacuum. They have
definitions, associations, and connotations, all of which
contribute to the conceptual strength analysis because they reflect
how consumers view the words in the marketplace. For example, "ice
cream" and "pizza" are generic terms because consumers perceive
them as specific goods and do not associate them with a particular
brand. This reality is reflected by the factors we use to evaluate
genericism, including the use of the term in the industry and by
the media, consumer surveys, and dictionary definitions, which are
themselves a product of market and societal forces.
18
In Attrezzi we were faced with evaluating the strength of
a protectable mark consisting of a single element -- ATTREZZI -- in
the face of a claim that the mark was inherently weak only because
it was suggestive of the relevant goods rather than arbitrary. See
Attrezzi, 436 F.3d at 40. In rejecting the defendant Maytag's
argument that the court rely exclusively on the mark's conceptual
strength in that case, we stated that a mark's conceptual strength,
or inherent distinctiveness, is irrelevant when making such
strength determinations. Id.19
Genericism was the focus of the parties' arguments below and
on appeal. We think that focus was appropriate. We respectfully
disagree with the concurrence's reading of Attrezzi that would
foreclose in all cases any consideration of genericism when
evaluating the strength of a mark, composite or otherwise, as part
of the likelihood of confusion analysis.
-24-
b. Is the phrase "duck tours" generic?
To assess the district court's conclusion on the strength
of plaintiff's mark BOSTON DUCK TOURS, we must begin our analysis
with a discussion of whether the phrase "duck tours" is generic in
connection with the services offered by the parties.20 See Am.
Cyanamid Corp. v. Connaught Labs., Inc., 800 F.2d 306, 308 (2d Cir.
1986) (noting that for the same reasons that trademark law does not
grant protection to generic words or phrases, it also does not
extend protection to a generic component of a trademark). Although
the presence of a generic term or phrase in a full mark, such as
"pizza" in DOMINO'S PIZZA, will not "render the entire mark
invalid, its presence does affect the analysis of whether a
competitor's mark containing the same component is likely to create
confusion." Id. As noted above, a generic term is one whose
"primary significance . . . to the relevant public" is as an
identifier of the nature of a good, rather than its source. Colt
Def., 486 F.3d at 705; see also 15 U.S.C. § 1064(3). A question of
fact, 2 McCarthy, supra, § 12:12, "the district court's finding
20
Although the concurrence suggests otherwise, our evaluation
of whether the phrase "duck tours" is generic in the course of
evaluating the strength of Boston Duck's composite mark does not
contravene the well-established "anti-dissection rule." As
McCarthy notes in the same section that the concurring opinion
cites, "[I]t is not a violation of the anti-dissection rule to view
the component parts of conflicting composite marks as a preliminary
step on the way to an ultimate determination of probable customer
reaction to the conflicting composites as a whole." 3 McCarthy,
supra, § 23:41. Our ultimate comparison is between the parties'
composite marks.
-25-
[that the phrase is nongeneric] . . . [is] subject to review only
for clear error," Boston Beer Co. v. Slesar Bros. Brewing Co., 9
F.3d 175, 180 (1st Cir. 1993).
Recognizing the deference owed to the district court and
the inherent time pressures a court faces when deciding complex
matters at the preliminary injunction phase, we nevertheless
conclude that the court committed clear error by finding that the
phrase "duck tours" is nongeneric. In undertaking its analysis,
the district court did not identify and apply the appropriate legal
standard in this case. As a result, its factual conclusion on the
genericism question was erroneous.
i. The Legal Standard
In undertaking the genericism analysis, the court
overlooked relevant evidence in the record on the genericism
question. Tasked with determining the "primary significance" of
the phrase at issue "to the relevant public," the law instructs
courts to consider several factors when undertaking this analysis:
(1) consumer surveys; (2) the use of the term in media
publications, (3) use of the term by competitors in the industry,
(4) purchaser testimony concerning the term; and (5) the
plaintiff's use of the term. Colt Def., 486 F.3d at 705.
Nevertheless, as noted above, the court relied exclusively on one
dictionary definition of "duck" to reach the conclusion that "duck
tours" is nongeneric. Although the presence or absence of a word
-26-
in the dictionary, and its corresponding meaning(s), is evidence of
how the public perceives a term, Surgicenters of Am., Inc. v. Med.
Dental Surgeries, Co., 601 F.2d 1011, 1015 n.11 (9th Cir. 1979)
("While not determinative, dictionary definitions are relevant and
often persuasive in determining how a term is understood by the
consuming public, the ultimate test of whether a trademark is
generic . . . ."), it is only one of many factors to consider. The
touchstone of the analysis remains the phrase's primary
significance to the relevant public.
In addition, the district court focused on the separate
terms "duck" and "tours," not the entire phrase. See Filipino
Yellow Pages, Inc. v. Asian Journal Publ'ns., Inc., 198 F.3d 1143,
1150 (9th Cir. 1999) (finding that the genericism analysis should
be conducted by looking at an entire mark rather than dissecting it
into its smaller parts). Rather than analyzing each word
separately, thereby altering the context of the inquiry, the court
should have considered "duck tours" as a unified phrase. As courts
have found in related contexts, a complete phrase may signify
something different than the sum of its parts. See AmCan Enters.,
Inc. v. Renzi, 32 F.3d 233, 234 (7th Cir. 1994) ("yellow pages"
generic for a business telephone directory); American Express Co.
v. Mastercard Int'l. Inc., 685 F. Supp. 76, 78 (S.D.N.Y. 1988)
("gold card" generic for credit card services). The district
court's decision to focus exclusively on the individual elements of
-27-
the phrase, and each word's respective dictionary definition,21
removed the inquiry from its proper context and tainted the overall
analysis.
ii. Application
Because the district court misapprehended the legal
framework governing the genericism inquiry, its ultimate factual
conclusion that "duck tours" is nongeneric was necessarily
erroneous as well. In reaching its conclusion, the district court
did not consider evidence in the record suggesting that the phrase
"duck tour" is generic for the amphibious, sightseeing tours
offered by both parties. Specifically, the court did not consider
three types of evidence typically considered integral to the
genericism determination: uses (1) by the media and other third
parties, (2) within the industry generally, and (3) by Boston Duck
itself.
With respect to the first type of relevant evidence, the
district court overlooked articles in the media and other third-
party sources that use the phrase "duck tours" generically to refer
to amphibious, sightseeing tours. For example, a Boston Globe
article from 2002 notes that rather than walking around Portland,
21
We acknowledge that when assessing the dictionary definition
of a phrase, it may be necessary to define the individual elements
of the phrase and then combine those definitions to ascertain the
meaning of the phrase as a whole. In these circumstances, however,
the dictionary definition becomes less helpful for determining the
public significance of the entire phrase.
-28-
Maine on foot, a visitor may use "town trolleys, duck tours, and
harbor cruises." Beth Greenberg, Tattoos and Views The Best-Known
Artists Craft Their Designs in Some of the Region's Most
Interesting Cities, Boston Globe, Oct. 13, 2002, at M13. Another
Boston Globe article published in 1997 used the phrase generically,
but in a different context. In asserting that the Boston mayor
needed to manage traffic issues better in the city, the author
wrote: "It is important that city government remembers that it owns
the streets. Tour buses, ersatz trolleys, and amphibious duck
tours need to have their routes and parking carefully examined."
Lawrence S. DiCara, Running Against Himself; Mayor Menino's Real
Race will be to Forge a Legacy after Reelection Tuesday, Boston
Globe, Nov. 2, 1997, at C1. These articles from Boston join many
others from around the country which use "duck tours" in a generic
manner. See, e.g., Schwan's IP, LLC v. Kraft Pizza Co., 460 F.3d
971, 975 (8th Cir. 2006) (discussing the relevance of newspaper
articles using the phrase "brick oven" to name a type of pizza
rather than a specific brand).
Second, the court overlooked the widespread generic use
of "duck" and "duck tours" by other companies around the country
that provide the same amphibious sight-seeing services. According
to the record, there are at least 36 companies in operation today
that provide tour services in cities around the United States and
the world. Of these 36 tours described in the record, 32 include
-29-
the term "duck" in their company or trade name, and more than 10
use both the terms "duck" and "tour(s)" in their trade name. Many
of these companies characterize their own services generically as
"duck tours." Taken together, this evidence indicates that when
consumers hear the term "duck tours," they associate it primarily
with a product rather than a source. See Colt Def., 486 F.3d at
706 ("This evidence is probative of generic use because '[t]he more
members of the public see a term used by competitors in the field,
the less likely they will be to identify the term with one
particular producer.'" (quoting Classic Foods Int'l Corp. v. Kettle
Foods, Inc., 468 F. Supp. 2d 1181, 1190 (C.D. Cal. 2007))
(alteration in original)); Schwan's IP, 460 F.3d at 975 (finding
generic use of a term by a company's competitors is indicative of
public perception).
Finally, the district court did not consider Boston
Duck's own generic use of the phrase "duck tour," which provides
strong evidence against its claim that the term is primarily
associated with its company rather than the services it provides.
See Retail Servs., Inc. v. Freebies Publ'g, 364 F.3d 535, 545 (4th
Cir. 2004) ("[E]vidence of the owner's generic use, in particular,
'is strong evidence of genericness.'" (quoting 2 McCarthy, supra,
§ 12:13)). On its website, the company notes that "[c]ontrary to
local belief, the unique idea of a [d]uck [t]our did not originate
in Boston. Duck operations have been in existence in the Midwest
-30-
for decades, and in fact, continue to thrive. What we did,
however, is take a unique product and improve and enhance it, while
at the same time bringing it to a major metropolitan city." See
Boston Duck Tours, http://www.bostonducktours.com/
company_history_main.html (last visited March 31, 2008). Although
Boston Duck is quick to point out the introductory clause to its
website statement, which asserts that the local population believes
Boston Duck is the only provider of "duck tours," this speculative
statement about what the Boston population believes is largely
irrelevant for purposes of our analysis. The two sentences, and
the website more generally, are published by Boston Duck to inform
consumers in the Boston area and around the world about the
company's history and services. Accordingly, the site instructs
these customers that the phrase "duck tours" is the common phrase
used to describe amphibious sightseeing tours rather than Boston
Duck's product alone.
In addition, several articles submitted by Boston Duck to
the district court to establish the company's fame and recognition
provide evidence of the company's generic use of the phrase "duck
tours" and an unwitting acknowledgment of the generic nature of the
phrase. In a Business Week article from 1998, the author states
that "[a]t the time [when the founder of Boston Duck came up with
the idea], there were only two other Duck tours in the country."
Edith Hill Updike, A Nice Business Built on Being Nice, Business
-31-
Week, Sept. 14, 1998, at 10. In a similar article describing the
history of Boston Duck in Boston Business Journal, the writer
states that "[d]uck tours have been popular for decades in the Lake
Country of Wisconsin and in southern resort towns." Lauren John,
Rough Road to Amphibious Landing on the Charles, Boston Business
Journal, June 30, 1995.
Indeed, all of this evidence, especially the widespread
use of "duck" and "duck tours" by companies in the industry,
indicates that no other "commonly used" and effective
"alternative[s]" denote the sightseeing services both parties
offer. See A.J. Canfield Co. v. Honickman, 808 F.2d 291, 305-06
(3d Cir. 1986). Although alternatives do exist, such as
"amphibious tours," none have been widely adopted in the industry.
Unlike "duck tours," they fail to describe the services accurately
and concisely. See Bayer Co. v. United Drug Co., 272 F. 505, 511
(S.D.N.Y. 1921) (finding "Aspirin" generic in part because the
public did not accept the alternative names to describe the
product); Ty Inc. v. Softbelly's, Inc., 353 F.3d 528, 532 (7th Cir.
2003) ("[B]ecause 'beanies' is so much shorter and punchier than
the alternatives that have emerged so far for designating the
product, such as 'plush beanbag animals,' Ty may be fighting a
losing war to keep its 'Beanies' trademark from becoming 'beanies'
a generic term."). Because of the lack of adequate alternatives,
"duck tours" -- the most common and accepted term to describe the
-32-
services at issue -- may not be appropriated for one party's
exclusive use. To grant Boston Duck exclusive rights to use the
phrase in the Boston area would be to erect a barrier of entry into
the marketplace, thereby preventing other entities, such as Super
Duck, from calling their product by its name. Super Duck, as well
as other potential competitors, would be placed at a significant
market disadvantage. See Devan R. Desai & Sandra L. Rierson,
Confronting the Genericism Conundrum, 28 Cardozo L. Rev. 1789, 1851
(2007).
iii. Boston Duck's Counter-Arguments
Seeking to convince us that the district court's
nongenericism determination was not clearly erroneous, Boston Duck
raises a raft of arguments in support of its position that "duck
tours" is nongeneric. Boston Duck asserts that the significant
evidence of actual confusion by consumers in the marketplace
between the marks BOSTON DUCK TOURS and SUPER DUCK TOURS indicates
that the phrase "duck tour" possesses source-identifying
attributes. Confusion could not arise, Boston Duck argues, unless
consumers associate "duck tours" with Boston Duck's services
specifically. Second, Boston Duck argues that the numerous records
showing that the PTO has processed trademark applications for
services similar to those provided by both parties without
requiring a disclaimer of the term "duck" or the phrase "duck tour"
suggest that the terms are neither generic nor descriptive. Third,
-33-
Boston Duck claims that Super Duck should not be permitted to claim
that "duck tours" is generic now given its previous stance before
the PTO that neither the term "duck" nor the phrase "super duck
tours" was generic or descriptive. Finally, Boston Duck argues
that the dictionary definitions indicate that "duck" is nongeneric.
We address each argument in turn.
(a) Consumer Confusion
Although the documentation provided by Boston Duck
establishes numerous instances of consumer confusion between the
services provided by the parties, the confusion alone suggests
little about whether the term "duck tours" is generic. The
confusion that Boston Duck cites can easily be attributed to Boston
Duck's status as the exclusive purveyor of amphibious tours in the
Boston area for over a decade rather than the source-identifying
attributes of the phrase "duck tours." Although trademark law is
designed to prevent consumer confusion between inherently
distinctive marks or descriptive marks that have acquired secondary
meaning, it is not intended to prevent confusion between two
similar, generic marks, see Blinded Veterans Ass'n v. Blinded Am.
Veterans Found., 872 F.2d 1035, 1043-45 (D.C. Cir. 1989), or,
relatedly, between marks when one mark has acquired a "de facto
secondary meaning" through its exclusive use of a generic term that
causes customers to associate the term with that specific source,
see Am. Online, Inc. v. AT & T Corp., 243 F.3d 812, 822 (4th Cir.
-34-
2001) ("[T]he repeated use of ordinary words functioning within the
heartland of their ordinary meaning, and not distinctively, cannot
give AOL a proprietary right over those words, even if an
association develops between the words and AOL."); 1 McCarthy,
supra, § 7:66. Boston Duck's evidence of actual confusion,
therefore, has little probative value on the question of whether the
phrase "duck tours" is generic.
(b) PTO Treatment
Boston Duck overstates the weight a court must give to the
decisions of the PTO regarding disclaimers. Although the PTO
Examining Attorney is obligated to consider whether a disclaimer is
appropriate for each application reviewed, the decision remains a
discretionary choice rather than a conclusive legal determination.
See In re Creative Goldsmiths of Wash., Inc., 229 U.S.P.Q. 766, 768
(T.T.A.B. 1986) ("[W]e conclude that it is within the discretion of
an Examining Attorney to require the disclaimer of an unregistrable
component (such as a common descriptive, or generic, name) of a
composite mark sought to be registered on the Principal Register
under the provisions of Section 2(f)."); see also Trademark Manual
of Examining Procedure, § 1213(a)-(c) (5th ed. 2007). Therefore,
a decision by the PTO to either require a disclaimer or not is
merely a single piece of evidence in the court's overall genericism
analysis. See In re Nat'l Data Corp., 753 F.2d 1056, 1059 (Fed.
Cir. 1985) ("The power of the PTO to accept or require disclaimers
-35-
is discretionary under the statute, and its practice over the years
has been far from consistent. Thus, it is inappropriate to give the
presence or absence of a disclaimer any legal significance."
(internal citation omitted)).
Moreover, although Boston Duck invokes several relevant
trademark applications where no disclaimer of "duck" or "duck tours"
was required, other applications include such disclaimers. For
example, an entity named Liberty Duck Tours, LLC22 maintains several
pending applications for the phrase LIBERTY DUCK TOURS that disclaim
exclusive use of the phrase "duck tours."23 Further, because "[t]he
crucial date for the determination of genericness is the date on
which the alleged infringer entered the market with the disputed
mark or term," Yellow Cab Co. of Sacramento v. Yellow Cab of Elk
Grove, Inc., 419 F.3d 925, 928 (9th Cir. 2005) -- here, late 2006
and early 2007 -- the evidence put forward by Boston Duck of the
PTO's past treatment of applications has only limited relevance to
the district court's inquiry. The PTO's most recent decision on
this issue is its treatment of the applications for LIBERTY DUCK
22
Liberty Duck Tours, LLC has not yet commenced use of its
mark in connection with duck tours or other products. The
applications were filed on an intent-to-use basis without any
first-use date provided. See 15 U.S.C. § 1051(b).
23
Although Liberty Duck Tours decided to disclaim the phrase
"duck tour" in each of its trademark applications for LIBERTY DUCK
TOUR, the PTO informed the company that it need not maintain the
disclaimer for its application in connection with clothing items.
Nevertheless, the PTO did not give Liberty Duck Tour the same
option to remove the disclaimer from its application for LIBERTY
DUCK TOURS in connection with sightseeing tour services.
-36-
TOURS, which were considered by the PTO only last year, and which,
at least in connection with the sightseeing services at issue in
this case, contain a disclaimer for the phrase "duck tours."
(c) Estoppel
Super Duck is not foreclosed from arguing now that the
term "duck" or the phrase "duck tours" is generic because it argued
to the contrary several years ago in front of the PTO. That
contrary argument is simply another factor in the evidentiary mix.
See Keebler, 624 F.2d at 375 n.7 (allowing the defendant to argue
in an infringement action that plaintiff's mark was generic despite
a previous attempt to register the mark under the Puerto Rico
trademark statute); Am. Rice, Inc. v. H.I.T. Corp., 231 U.S.P.Q.
793, 798 (T.T.A.B. 1986) ("It is clear that while these earlier
positions [of the party] may be considered as evidence, no equitable
estoppel may be derived from earlier inconsistent positions."
(internal citations omitted)).
(d) Dictionary Definitions
As already noted, the dictionary definitions in the record
are not conclusive on the question of public perception. Boston
Duck offered the definitions of "duck" from several common
dictionaries, none of which includes a reference to amphibious World
War II vehicles. Conversely, Super Duck offered a single definition
of "duck" from the Oxford English Reference Dictionary, which states
that a duck is an "amphibious landing-craft." Because dictionary
-37-
definitions are not conclusive indicators of overall public
perception, and the specific dictionary definitions offered by the
parties in this case do not significantly favor one party over the
other, this factor does not materially help Boston Duck to convince
us that the district court did not commit clear error in its
genericism determination.
c. Strength of the Composite Mark
Having concluded that the phrase "duck tours" is generic
for the parties' services, we remain obligated to assess the
strength of plaintiff's composite mark BOSTON DUCK TOURS.
Evaluating the conceptual strength first, we conclude that the mark
BOSTON DUCK TOURS is highly descriptive of the services Boston Duck
offers. The mark combines "duck tours," a generic phrase entitled
to no trademark protection at all, with "Boston," a weak,
descriptive term that deserves minimal protection. Thus,
conceptually, BOSTON DUCK TOURS as a composite mark is weak.
However, BOSTON DUCK TOURS has obtained significant secondary
meaning as a result of its continuous use in the Boston area for the
past 13 years. This secondary meaning overcomes the mark's initial
weakness. 2 McCarthy, supra, § 11:80 ("[A] descriptive mark, upon
attaining secondary meaning may be protected just as if it had been
'strong' and arbitrary or fanciful at its inception.").
The evidence of secondary meaning also supports the
commercial strength of Boston Duck's mark, which is assessed by
-38-
examining "the length of time the mark has been used, the trademark
holder's renown in the industry, the potency of the mark in the
product field (as measured by the number of similar registered
marks), and the trademark holder's efforts to promote and protect
the mark," Borinquen Biscuit, 443 F.3d at 121; see 2 McCarthy,
supra, § 11:82 ("When determining the commercial or marketplace
strength of a mark, the courts look to the same kind of evidence of
real world recognition of the mark as is used to decide the presence
or absence of secondary meaning to determine whether a noninherently
distinctive designation is or is not a valid mark.").
Boston Duck has received significant national and
international press in connection with its services, including
coverage in U.S. Airways Attaché, W Magazine, Cosmopolitan UK, and
the Christian Science Monitor, as well as numerous awards since the
mark was first used in 1994. For example, in 1996 Boston Duck won
the Boston Magazine award for Best Tour in Boston. As the exclusive
purveyor of duck tour services in the Boston area for over a decade,
the company has become well known, and its revenue and number of
customers have grown substantially. The number of ducks used by the
company has grown from four in 1994 to twenty-four in 2006.
Moreover, 585,000 customers enjoyed a duck tour operated by Boston
Duck in 2006. Further, although a number of other entities around
the country use the phrase "duck tours" in their trade names to
describe similar services, none operate within the greater Boston
-39-
area. Together, these facts indicate that the composite mark BOSTON
DUCK TOURS is reasonably strong overall as an identifier of Boston
Duck's tour services in the Boston area, although part of the mark
-- "duck tours" -- is entitled to no trademark protection at all.
2. Similarity of the Marks
The degree of similarity between two marks -- here, BOSTON
DUCK TOURS and SUPER DUCK TOURS -- is determined by analyzing their
sight, sound, and meaning. Volkswagenwerk Aktiengesellschaft v.
Wheeler, 814 F.2d 814, 817 (1st Cir. 1987). Although "similarity
is determined on the basis of the total effect of the designation,
rather than a comparison of individual features," Pignons, 657 F.2d
at 487; see I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 43
(1st Cir. 1998), we give less weight to the generic portions of the
parties' respective, composite marks. 4 McCarthy, supra, § 23:49
("If a common portion of the two conflicting marks is a public
domain generic name, the emphasis of enquiry should be upon the
confusing similarity of the nongeneric portion, with the ultimate
issue determined by the confusing similarity of the total impression
of both marks."); see Banff, Ltd. v. Federated Dep't Stores, Inc.,
841 F.2d 486, 491 (2d Cir. 1988) (finding a likelihood of confusion
between B WEAR and BEE WEAR for womens' clothing); Am. Cyanamid, 800
F.2d at 309 (HibVAX does not infringe HIB-IMUNE because the
nongeneric portions of each mark are sufficiently dissimilar); cf.
Beacon Mut., 376 F.3d at 19 (finding similarity between two
-40-
composite marks where the dominant elements of each mark were very
similar). Accordingly, we compare "the nongeneric components of a
mark . . . in the context of the overall composite mark." Banff,
841 F.2d at 491.24
Having mistakenly concluded that the phrase "duck tours"
was nongeneric, the district court placed undue emphasis on the
similarity of that phrase in the parties' marks and concluded that
the differences between the composite marks was "slight." Analyzing
24
Although the concurrence explicitly disavows using an
analytical approach that considers the inherent distinctiveness of
a composite mark's individual elements, the concurrence makes an
implicit genericism determination when comparing the similarity of
the parties' composite marks. The concurrence states: "[T]he term
'duck tours' is commonly understood to mean an amphibious sighting
excursion. . . . The overall impression, therefore, suggests a
similar tour offered by different enterprises." Rather than
relying on a genericism determination to de-emphasize the phrase
"duck tours" when comparing the parties' composite marks, the
concurrence instead relies on the fact that the terms "duck" and
"tours" are disclaimed in Boston Duck's trademark registration and
that "duck tours" is disclaimed in Super Duck's registration. The
concurrence states that "[w]ords that were disclaimed in the course
of trademark registration ordinarily are not the dominant part of
a composite word mark." We agree with the concurrence that
disclaimed terms must be de-emphasized when comparing the marks at
issue. We note, however, that the PTO requires disclaimers only
for generic and other unregistrable elements in a composite mark.
See 15 U.S.C. § 1056(a) ("The Director [of the PTO] may require the
applicant to disclaim an unregistrable component of a mark
otherwise registrable.") (emphasis added); Trademark Manual of
Examining Procedure § 1213.03(b) ("If a mark is comprised in part
of matter that, as applied to the goods/services, is generic or
does not function as a mark, the matter must be disclaimed to
permit registration . . . ."). Moreover, the decision as to what
elements must be disclaimed is made when a trademark registration
application is being processed, which often occurs prior to or
immediately after the mark is introduced into the marketplace.
Thus, the concurrence's insistence that its analysis relies
exclusively on marketplace factors to evaluate likelihood of
confusion is overstated.
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the similarities ourselves with the correct genericism conclusion
in mind, we focus our inquiry, albeit not exclusively, on the
similarities and differences between the words "Boston" and "Super,"
the non-generic elements of each mark. Allowing "duck tours" to
largely drop out of the analysis, we conclude that the parties'
marks are reasonably, although not completely, dissimilar. Although
both "Boston" and "Super" are two-syllable words, and they are each
followed by a two-word generic phrase, the words look and sound
completely different. In addition, they have different meanings,
describing a different feature of their products.
3. Similarity of the Goods
The district court concluded that the parties "offer
virtually identical services: amphibious sightseeing tours of the
greater Boston area." It found that although slight differences
exist between the products, including their routes, the differences
are negligible as compared to the overall similarities. Super Duck
does not challenge this conclusion, which is amply supported by the
record.
4. Relationship Between the Parties' Channels of Trade,
5. Relationship Between the Parties' Advertising, and 6. The
Classes of Prospective Purchasers
After considering these three interrelated factors
together, see Beacon Mut., 376 F.3d at 19, the district court found
significant overlap between the companies' channels of trade,
advertising, and prospective consumers. Super Duck does not dispute
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that the companies are close competitors, and the court's findings
are supported by the record.
7. Evidence of Actual Confusion
"While evidence of actual confusion is 'often deemed the
best evidence of possible future confusion,' proof of actual
confusion is not essential to finding likelihood of confusion."
Borinquen Biscuit, 443 F.3d at 120 (quoting Attrezzi, 436 F.3d at
40); see Volkswagenwerk, 814 F.2d at 818. Nevertheless, as already
noted, Boston Duck has documented in the record several dozen
instances of actual confusion involving customers who were confused
by the parties or believed that they were affiliated. Having found
the phrase "duck tours" nongeneric, the district court gave
considerable weight to this evidence of actual confusion as
supporting Boston Duck's claim of infringement.
Given our conclusion that "duck tours" is generic, the
value of the evidence of actual confusion documented by Boston Duck
is diminished substantially for the likelihood of confusion
analysis. As a matter of law, the confusion was largely, if not
exclusively, the product of Boston Duck's lack of competition in its
early years and the use of a generic phrase to describe its product.
As such, it is not the type of confusion that warrants trademark
protection. We therefore treat that evidence as largely irrelevant
in reaching our overall determination.
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8. Defendant's Intent in Adopting its Mark
Whether the defendant acted in bad faith in adopting its
mark is another factor to be considered in determining the
likelihood of consumer confusion. Attrezzi, 436 F.3d at 40. The
district court concluded that Super Duck's intent in selecting the
mark SUPER DUCK TOURS was "at least, suspect." It explained this
conclusion by stating that "[Super Duck] knowingly and intentionally
entered the Boston market offering a service, mark and logo nearly
identical to that of Boston Duck Tours, an established and
successful enterprise."
The court's conclusion regarding Super Duck's intent was
clear error because it was based on the erroneous premise that the
marks SUPER DUCK TOURS and BOSTON DUCK TOURS are highly similar.
As already noted in our discussion of the similarity of the marks
factor, the marks are reasonably dissimilar because the shared
element in each party's mark is the generic phrase "duck tours."
Because this foundational element of the court's analysis was
incorrect, its conclusion that Super Duck's intent was "at least,
suspect" was necessarily mistaken as well.
Super Duck adopted a name that combined a generic phrase
describing its product with a significantly different descriptive
term. Although there are similarities between the marks, logos, and
services, and Super Duck benefitted to some degree from Boston Duck
introducing the Boston population to the duck tour product, these
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effects are natural consequences of having competition in the
marketplace. See Nora Beverages, Inc. v. Perrier Group of Am.,
Inc., 269 F.3d 114, 124 (2nd Cir. 2001) ("While intentional copying
can raise a presumption of consumer confusion, '[t]he intent to
compete by imitating the successful features of another's product
is vastly different from the intent to deceive purchasers as to the
source of the product.'" (quoting Streetwise Maps, Inc. v. Vandam,
Inc., 159 F.3d 739, 745 (2d Cir. 1998) (internal citation omitted)).
Moreover, Super Duck created its mark and logo years before it
entered the Boston market, when it began its operations in Portland,
Maine.
B. Conclusion on the Likelihood of Confusion Analysis
Considering all of the factors in the Pignons analysis,
we conclude that the district court's finding that Boston Duck was
likely to succeed on the merits of its trademark infringement claim
is clearly erroneous. Although the companies are direct competitors
because their products, potential customers, channels of trade, and
advertising all significantly overlap, these factors alone are
insufficient to establish a successful claim of infringement. See,
e.g., Prof'l Golfers Ass'n of Am. v. Bankers Life & Cas. Co., 514
F.2d 665, 669 (5th Cir. 1975) ("[D]irect competition is not the sine
qua non of trademark infringement; rather the gist of the
[trademark] action lies in the likelihood of confusion to the
public."). Boston Duck has failed to demonstrate bad faith on the
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part of Super Duck in adopting the mark SUPER DUCK TOURS. Its
evidence of actual trademark confusion between the parties' marks
has little probative value because the confusion shown is largely
based on Boston Duck's lack of competition in its early years and
each party's use of the generic phrase "duck tours" in its mark.25
Where the parties are direct competitors, the most important factor
in the Pignons analysis is the similarity-of-marks inquiry. See
McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350,
367 (3d Cir. 2007) ("'[W]hen goods are directly competing [as is
undisputed in the instant case], both precedent and common sense
counsel that the similarity of the marks takes on great
prominence.'") (quoting A & H Sportswear, Inc. v. Victoria's Secret
Stores, Inc., 237 F.3d 198, 214 (3rd Cir. 2000))). Here, the
parties' marks -- with greater emphasis placed on the words "Boston"
and "Super" -- are substantially dissimilar, based on sight, sound,
and meaning. To the extent any similarity exists between the
composite marks, that similarity is a result of each party's
decision to use a generic phrase to describe its product.
Accordingly, we conclude that the Pignons factors do not establish
a likelihood of confusion between the parties' composite word marks.
That conclusion means that Boston Duck has failed to establish a
25
We acknowledge that evidence of actual confusion is not
required to succeed on an infringement action. See Borinquen
Biscuit, 443 F.3d at 120-21.
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likelihood of success on the merits of its trademark infringement
claim.
V.
We turn now to the infringement analysis of the parties'
composite design marks.26 In reviewing Boston Duck's petition for
a preliminary injunction, the district court also found that Boston
Duck was likely to succeed on its trademark infringement claim
relating to the parties' design marks.27 Accordingly, the court
enjoined Super Duck from using, in connection with its services, any
design that contained a cartoon duck in water.
A. The Eight-Factor Pignons Test
Without evaluating each Pignons factor separately, the
court found that the parties' design marks were "striking[ly]
similar[]" and, consequently, that Super Duck's decision to choose
a logo "nearly identical" to that of Boston Duck's called into
question its intent in choosing its mark. Relying on these
findings, the court found a likelihood of confusion between the
parties' design marks. We disagree with the court's analysis and
conclusions.
26
See Appendix for images of the parties' respective composite
design marks.
27
Super Duck did not contest that Boston Duck's composite
design mark is inherently distinctive or, alternatively, that it
has obtained secondary meaning based on its long and continued use
in connection with Boston Duck's services.
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Although several of the eight factors warranted
independent analysis directed specifically at the parties' design
marks -- including the similarity of the marks, the evidence of
actual confusion, and the strength of Boston Duck's mark -- the only
factor the court considered separately was the similarity of the
designs. On this factor, the court limited its focus to a single
element within each mark -- the central image of a cartoon duck
splashing in water -- to the exclusion of other elements, including
the colors present in each image, the background images, the content
and design of the textual elements in each mark, and their overall
appearance. In the absence of a discussion of the strength of
Boston Duck's mark, the similarities between the parties' composite
design marks, and evidence of actual confusion by the district
court, we address these factors de novo, and then evaluate our
conclusions in conjunction with the district court's findings and
our own earlier discussion of the remaining Pignons factors.
1. Strength of Plaintiff's Mark
Again, we begin our analysis with the strength of
plaintiff's composite design mark, including an inquiry into whether
the central element of that mark -- the image of a duck splashing
in water -- is generic in connection with plaintiff's duck tour
services. As noted above, the strength determination, including the
important genericism component, weigh heavily in our consideration
of the other Pignons factors.
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a. Genericism
The district court did not subject Boston Duck's design
to a genericism analysis in the context of assessing the strength
of plaintiff's mark. Just as a word or phrase may be classified as
generic, so too can an image or logo that describes a category of
goods or services rather than a specific source. See 2 McCarthy,
supra, § 12:34 ("A mark that consists of an illustration of the
goods themselves may be 'generic,' and hence incapable of serving
a trademark function at all."); Kendall-Jackson Winery, Ltd. v. E.
& J. Gallo Winery, 150 F.3d 1042, 1049 (9th Cir. 1998) (finding that
an image of a grape leaf on a wine bottle was not itself a
protectable mark because it cannot serve to distinguish between
brands). Accordingly, Super Duck argued that the image of a cartoon
duck in water is generic for duck tour services and therefore these
images should play a minimal role in the Pignons analysis of the
design marks. The district court, however, did not address this
issue directly; instead, it compared the marks with the underlying
assumption that all of the elements of Boston Duck's logo were
nongeneric.
On appeal, Super Duck contests the district court's
implicit conclusion, arguing that the court ignored evidence
establishing that virtually every duck tour company in the country
uses a cartoon duck in its logo, and many of those use a cartoon
duck in conjunction with an image of water. From this evidence,
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Super Duck argues that the image of a cartoon duck in water merely
describes duck tour services rather than a specific provider
thereof, and the image, therefore, is generic.
Although many duck tour providers use the image of a duck
in water in connection with their products, many others do not.28
Other than industry use, there is no evidence in the record
establishing how the consumer population perceives the image in
question. Therefore, we have little basis upon which to conclude
that the image of a duck in water is viewed by the public as merely
synonymous with the phrase "duck tour," such that it has no source-
identifying capacity at all. Moreover, the evidence in the record
suggests that there are effective alternatives to the image of a
duck in water to identify a source of duck tour services.
Accordingly, to grant an entity the exclusive use of such a design,
thereby preventing other entities from using a design confusingly
similar to it, would not give the first user a significant
competitive advantage. Based on these factors, we cannot conclude
that the district court clearly erred in its implicit finding that
the design is nongeneric.29 See 2 McCarthy, supra, § 12:20
28
Although the record does not include the design marks for
every duck tour provider in the nation, it does present the design
marks for sixteen such providers, excluding both Boston Duck and
Super Duck. Of the sixteen providers, seven use the image of a
duck in water as part of their design marks.
29
Our conclusion is limited to analyzing the district court's
conclusion based on the evidence in the record. We need not decide
here whether the image of a duck in water could ever be deemed
generic for duck tour services.
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("[T]here is only a fine line between describing [a product] and
naming [it].").
However, although we have insufficient evidence to
conclude that the image of a duck splashing in water is generic for
duck tour services, we do conclude that the image is highly
descriptive for the parties' services, and hence the image has weak
source-identifying attributes. See Lawrence v. P.E. Sharpless Co.,
203 F. 762 (E.D. Pa. 1913) (finding the image of a cow descriptive
for dairy products); In re Eight Ball, Inc., 217 U.S.P.Q. 1183(T.T.A.B. 1983) (finding the picture of an eight ball and a pool cue
merely descriptive of billiard parlor services); see also 1
McCarthy, supra, § 7:36 (listing relevant cases). Accordingly, less
weight should be given to this specific similarity in the
similarity-of-the-marks analysis.
b. Strength of the Composite Mark
Examining the overall strength of plaintiff's composite
design mark, which consists of the duck image in conjunction with
other design elements and Boston Duck's trade name, we conclude that
the conceptual and commercial strength of this design mark are
similar to that of Boston Duck's word mark BOSTON DUCK TOURS. Given
its widespread recognition and continued use in the Boston area for
over a decade, the composite design mark is reasonably strong,
despite the fact that it contains elements that have an inherently
weak capacity as source-identifiers.
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2. Similarity of the Marks
As with word marks, when comparing design marks
"similarity is determined on the basis of the total effect of the
designation, rather than a comparison of individual features."
Pignons, 657 F.2d at 487 (quoting Alpha Indus., Inc. v. Alpha Steel
Tube & Shapes, Inc., 616 F.2d 440, 444 (9th Cir. 1980)); see 4
McCarthy, supra, § 23:25 ("Obviously, for picture and design marks
(as opposed to word marks), similarity of appearance is
controlling."). Even if elements of each party's mark overlap, or
are visually similar, the marks as a whole may still create a
distinct commercial impression, especially if the similarities are
limited to generic or descriptive elements. See McNeil
Nutritionals, 511 F.3d at 359 ("[F]orceful and distinctive design
features should be weighed more heavily because they are more likely
to impact the overall impression."); see also First Sav. Bank,
F.S.B. v. First Bank Sys., Inc., 101 F.3d 645, 655 (10th Cir. 1996)
("When the primary term is weakly protected to begin with, minor
alterations may effectively negate any confusing similarity between
the two marks."). Further, the marks should be viewed "sequentially
[as if one were] in the context of the marketplace" rather than "in
a side-by-side comparison." Louis Vuitton Malletier v. Dooney &
Bourke, Inc., 454 F.3d 108, 117 (2d Cir. 2006).
Considering the parties' respective designs as a whole,
as they have been depicted in the record, including the colors used,
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the text, and the various design elements contained therein, we
conclude that the parties' design marks are substantially
dissimilar. Although each contains the central image of a cartoon
duck in water, the ducks are significantly different in overall
appearance. Further, the other elements depicted in conjunction
with the duck are substantially dissimilar. Together, these
differences indicate that the designs are associated with separate,
unrelated sources rather than the same one.
To highlight the differences between the marks, we briefly
describe the features of each. Boston Duck's logo consists of a
purple background enclosed within a black-bordered circle.
Encircling the top of the background is the name BOSTON DUCK TOURS
in black, in a sans-serif font.30 Finally, a yellow cartoon duck
with a camouflage hat sits in the center of the circle, flapping its
wings into some water and causing the blue-and-white-tipped water
to splash outside of the contained circle.
By contrast, Super Duck's logo has a blue background,
denoting water, and contains several orange elements as an accent.
At the top portion of the logo, and getting smaller across the logo
to suggest motion from the left portion of the logo to the right
portion, the trade name Super Duck Tours is printed in orange, in
30
A serif is an "accretion at the end of the stems of roman
letters." A serif font -- such as Times New Roman -- contains
"serifs" whereas a sans-serif font does not. Futura is a common
sans-serif font. Phil Baines & Andrew Hastam, Type & Typography
207 (2005).
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a serif font. At the center of the logo is a white cartoon duck,
shaped to depict an actual duck tour vehicle, and simulating the
move from land to water that a tour vehicle makes. The duck is
wearing an orange cape and holding up an orange flag with one of its
two muscular arms. Passengers crowd together on the deck of the
duck, which has "Super Duck Tours" emblazoned on its side. As the
duck enters the water, white pockets of water splash into the air.
The many specific differences between the two marks
reaffirm our conclusion about the central enquiry: if consumers
viewed these two marks sequentially in the marketplace, they would
not consider them substantially similar.
3. Evidence of Actual Confusion
Although the record contains evidence that customers
confused the parties' services, and perhaps their trade names, we
are unable to discern any evidence of actual confusion traceable
specifically to the parties' logos. In any event, as we noted
above, evidence of actual confusion is not necessary to succeed on
a trademark infringement action. See Volkswagenwerk, 814 F.2d at
818.
B. Conclusion on the Likelihood of Confusion Analysis
We consider the above three factors in conjunction with
our analysis of the other five Pignons factors undertaken in our
discussion of the parties' word marks. Because those five factors
focus on the parties themselves, or the goods and services at issue,
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rather than the marks, the analysis is identical. See supra Part
IV.A. Four of those factors -- the similarity of the goods; the
relationship between the parties' channels of trade; the
relationship between the parties' advertising; and the classes of
prospective purchasers -- weigh in favor of Boston Duck. As noted
above, so too does the strength of the mark. However, the absence
of bad faith by Super Duck weighs against a finding of infringement.
And, most importantly, the designs' overall dissimilarity weighs
strongly against a finding of likely confusion. See McNeil
Nutritionals, 511 F.3d at 367 (noting that the similarity-of-the-
marks factor becomes more important where the products at issue
directly compete with one another). Visually, the marks are
substantially different. The greatest similarity between them --
the image of a cartoon duck in water -- is of minimal significance
because of its highly descriptive nature. Thus, we conclude that
the district court's determination that there is a likelihood of
confusion between Boston Duck's design mark and Super Duck's design
mark is clearly erroneous. Again, that conclusion means that Boston
Duck has failed to establish a likelihood of success on the merits
of its infringement claim.
VI.
Although we have concluded that we must reverse the
decision of the district court, we have had the luxury of time in
reaching our decision in this difficult case -- a luxury that the
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district court did not have. Despite those constraints, the
district court issued a thoughtful opinion which allowed the parties
to focus their arguments in a manner that has been helpful to us.
For the reasons stated herein, Boston Duck failed to
establish a likelihood of success on its claims of trademark
infringement. Accordingly, the district court should not have
issued a preliminary injunction against Super Duck precluding the
use of its word and design marks.31 We reverse the district court's
order and remand the matter to the district court for further
proceedings consistent with this opinion. Costs are awarded in
favor of Appellant Super Duck Tours.
So ordered.
- Concurring Opinion Follows -
31
Our conclusion that the district court's grant of an
injunction against Super Duck was an abuse of its discretion
renders moot Boston Duck's cross-appeal with respect to the
injunction's scope.
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DICLERICO, District Judge, concurring in the judgment.
Although I agree that the preliminary injunction was erroneously
issued and must be vacated, I respectfully disagree with the
majority’s reasoning in reaching that conclusion. We agree on the
basic standard for determining infringement, which requires proof
that: (1) the asserted trademark is entitled to Lanham Act
protection, and (2) “the allegedly infringing use is likely to
result in consumer confusion.” Borinquen Biscuit, 443 F.3d at 116.
We agree that “duck tours” is a commonly used phrase that means
amphibious sightseeing excursions. We also agree that because “duck
tours” is a commonly used phrase and is shared by both of the
trademarks at issue in this case, that phrase is insignificant in
determining whether the marks are likely to cause consumer
confusion.
I part company with the majority, however, because the
majority separately classifies the phrase “duck tours” as a generic
phrase and uses that analysis to conclude that the asserted mark,
BOSTON DUCK TOURS, lacks strength, making consumer confusion
unlikely. In so doing, the majority has conflated the first and
second elements of the trademark infringement standard, which in my
opinion should be treated separately. I write separately to explain
my conclusion that the preliminary injunction must be vacated.
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I.
It is important to begin with a brief review of the
procedural history of this case and the posture in which it reached
this court. In the district court, the parties agreed that BOSTON
DUCK TOURS is a protected mark. The district court recognized this
agreement and held, in its order granting the motion for a
preliminary injunction, that “there is no challenge to the
plaintiff’s ownership of a protected mark,” Boston Duck Tours, LP
v. Super Duck Tours, LLC, 514 F. Supp. 2d 119, 124 (D. Mass. 2007).
Because the first element of the infringement claim was established,
the court was not required to consider whether BOSTON DUCK TOURS is
a protected mark. Therefore, the court properly turned to a
consideration of the second infringement element, the likelihood of
consumer confusion, and reviewed the evidence under the eight
Pignons factors.
In support of its motion for a preliminary injunction,
Boston Duck focused on the similarity of Super Duck’s mark and logo
to its own, along with evidence of actual consumer confusion, to
show a likelihood of success on its infringement claim. Super Duck
responded that Boston Duck was not likely to prove infringement,
primarily due to the weakness of its mark. Super Duck argued that
part of Boston Duck’s mark, the phrase “duck tours,” is generic and
not entitled to Lanham Act protection. In response, Boston Duck
argued that its mark, BOSTON DUCK TOURS, was protected and not
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generic.32 Therefore, the parties in the first instance introduced
the term “generic” into the analysis of the second element of
infringement.
“Generic” is a term of art used as part of the
classification analysis to determine whether a trademark is entitled
to Lanham Act protection under the first element of trademark
infringement.33 If the asserted mark is entitled to protection, the
second element of the infringement analysis focuses on whether the
use of the allegedly infringing mark is likely to cause confusion
with the protected mark. Borinquen Biscuit, 443 F.3d at 116.
Following the lead of the parties, the district court conflated the
two elements of an infringement analysis. After having stated that
Boston Duck’s ownership of a protected mark, BOSTON DUCK TOURS, was
not disputed, the district court nevertheless analyzed the phrase
“duck tours” to determine whether it was a “generic mark,” when it
considered the eighth Pignons factor, the strength of the mark.
In considering the eighth factor, the court noted that it
was the cornerstone of Super Duck’s case and that Super Duck’s
32
When the party claiming infringement has registered its
trademark on the Principal Register, a presumption arises that the
mark is entitled to Lanham Act protection. Colt, 486 F.3d at 705.
Further, when a mark has become incontestable, pursuant to 15
U.S.C. § 1065, as is the case here, registration is conclusive
evidence that the mark merits protection. Park ‘N Fly, 469 U.S.
189, 191-192.
33
The classifications used to determine whether a mark is
protected range along a spectrum of distinctiveness as follows:
“(1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or
(5) fanciful.” Colt, 486 F.3d at 705.
-59-
“argument hinges on the theory that the phrase ‘duck tours’ is a
generic term and thus, not protectable regardless of any actual
confusion or similarity of trademarks. As expected, the plaintiff
vigorously disagrees.” Id. at 126. The court then considered
whether the phrase “duck tours” was generic or whether it was
protectable under the Lanham Act and concluded: “Although the Court
is not convinced that ‘duck tours’ is a very strong mark it is, at
least, not a generic mark. The Court declines to decide at this
time whether it is descriptive, suggestive or arbitrary but even if
it is a weak descriptive mark, there is persuasive evidence that it
has acquired a secondary meaning in the Boston area during the past
13 years.” Id. at 127. The court concluded its analysis by finding
that “duck tours” was not generic.
II.
In this case, however, “duck tours” is not claimed as a
trademark at all. Boston Duck does not allege that Super Duck is
infringing its right to the mark “duck tours.” Cf. Ty, Inc. v.
Jones Group Inc., 237 F.3d 891, 897 (7th Cir. 2001); Ale House
Mgmt., Inc. v. Raleigh Ale House, Inc., 205 F.3d 137, 140 (4th Cir.
2000); Boston Beer Co. Ltd. v. Slesar Bros. Brewing Co., Inc., 9
F.3d 175, 179-83 (1st Cir. 1993). Instead, Boston Duck asserts that
Super Duck is infringing its registered mark, BOSTON DUCK TOURS, and
its cartoon duck logo, by using a confusingly similar mark and logo.
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The majority opinion analyzes the separate phrase “duck
tours,” apart from the asserted mark “BOSTON DUCK TOURS,” and
determines that the phrase “duck tours” is generic. The question
of whether a mark is generic or protected is one that is addressed
in the first part of an infringement analysis. See Borinquen
Biscuit, 443 F.3d at 116. Because the parties agreed that Boston
Duck’s mark was protected, the first part of the infringement
analysis has no place in this case. See id. Instead, the case
turns on the second element, whether there is a likelihood of
consumer confusion between Boston Duck’s mark and logo and Super
Duck’s mark and logo, which is determined by applying the Pignons
factors, not by considering whether part of a mark is entitled to
trademark protection.
Furthermore, the “anti-dissection rule” instructs that
composite trademarks, those with more than one word, are considered
as a whole for purposes of determining a likelihood of consumer
confusion. 3 McCarthy § 23:41. Therefore, when we apply the
Pignons factors, “we look at ‘the total effect of the designation,
rather than a comparison of the individual features.’” Aktiebolaget
Electrolux v. Armatron Int’l, Inc., 999 F.2d 1, 4 (1st Cir. 1993)
(quoting Pignons, 657 F.2d at 487). Despite that rule, the district
court and the majority opinion analyze the phrase “duck tours” as
if it were a separately claimed mark apart from the mark as a whole.
I disagree with that approach, which I believe is contrary to Boston
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Duck’s claim and to an infringement analysis that is supported by
this circuit’s precedent.
In addition, Super Duck raised the question of whether
“duck tours” is generic in the context of the eighth Pignons factor,
the strength of the trademark. The parties and the district court
then treated that issue as the “cornerstone” of the preliminary
injunction analysis. The majority follows that path and analyzes
the strength of “duck tours” in the context of the eighth Pignons
factor.
In this circuit, however, the strength of a trademark is
assessed based on “practical matters and not the legal
classification of the mark.”34 Attrezzi, 436 F.3d at 40. An
argument that a mark is weak based on its legal classification
between generic and arbitrary or fanciful “is not a proposition
supported by any First Circuit case law and its logic is not
apparent to us.”35 Id. Although the majority attempts to
34
The practical matters pertinent to the strength of the mark
include “the length of time a mark has been used and the relative
renown in its field; the strength of the mark in plaintiff’s field
of business; and the plaintiff’s action in promoting the mark.”
Equine Techs., Inc. v. Equitechnology, Inc., 68 F.3d 542, 547 (1st
Cir. 1995) (internal quotation marks omitted). The legal
classification of trademarks, from generic to fanciful, is used in
the first step of an infringement analysis, for determining whether
a mark is protected under Lanham Act. Borinquen, 443 F.3d at 116-
17.
35
In contrast, other circuits do consider where a mark falls
on the classification spectrum for purposes of determining the
mark’s strength. See, e.g., Am. Rice, Inc. v. Producers Rice Mill,
Inc., 518 F.3d 321, 330 (5th Cir. 2008); Aronowitz v. Health-Chem
Corp., 513 F.3d 1229, 1239-40 (11th Cir. 2008); Banff, Ltd. v.
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distinguish the holding in Attrezzi from the circumstances in this
case, I am not persuaded.
Other circuits determine the strength of a mark by
considering both its “conceptual strength,” meaning where it falls
along the legal classifications of distinctiveness from generic to
fanciful, and its commercial strength. See, e.g., Ut. Lighthouse
Ministry v. Found. for Apologetic Info. & Research, ___ F.3d ___,
2008 WL 2204387, at *7 (10th Cir. May 29, 2008); Synergistic Int’l,
LLC, v. Korman, 470 F.3d 162, 173-74 (4th Cir. 2006). As Attrezzi
explains, the second element of the infringement analysis, whether
using the accused mark is likely to cause consumer confusion,
requires consideration of real life, practical, marketplace evidence
of the likelihood of confusion. 436 F.3d at 40. Where a mark is
classified on the spectrum of distinctiveness is not evidence of the
choices and decision-making that a consumer faces in the
marketplace. Instead, the second element considers the actual use
of the allegedly infringing mark and its likely effect on commerce.
Therefore, I read Attrezzi as establishing an analytical framework
that is different from that followed in other circuits and that
distinguishes between the legal issue of a mark’s conceptual
strength and the practical issue of its commercial strength.
Federated Dep’t Stores, Inc., 841 F.2d 486, 491 (2d Cir. 1988).
Because this circuit has rejected that analysis, we are bound by
that precedent in the absence of intervening circumstances that
would warrant a change. See, e.g., Amato v. United States, 450 F.3d
46, 53 (1st Cir. 2006).
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III.
Despite the cited differences of opinion, I reach the same
result under the following analysis.
A. Likelihood of Consumer Confusion - Pignons Factors
Trademark infringement requires proof that consumers are
likely to be confused as to the source of the product they are
buying. I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 43 (1st
Cir. 1998). The potential for confusion is measured by considering
the Pignons factors:
(1) the similarity of the marks; (2) the
similarity of the goods; (3) the relationship
between the parties’ channels of trade; (4) the
relationship between the parties’ advertising;
(5) the classes of prospective purchasers; (6)
evidence of actual confusion; (7) the
defendant’s intent in adopting its mark; and
(8) the strength of the plaintiff’s mark.
Borinquen, 443 F.3d at 120 (citing Pignons S.A. de Mecanique de
Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981)).
The eight factors provide guidance and may be given more or less
weight depending on the particular circumstances of the case.
Beacon Mut. Ins. Co. v. OneBeacon Ins. Group, 376 F.3d 8, 15 (1st
Cir. 2004).
1. Similarity of the Marks
The similarity of marks must be determined by comparing
the total effect of each mark, not their separate parts. Astra
Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201,
1205 (1st Cir. 1983). Nevertheless, if the most dominant feature
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of both marks is the same or similar, then that similarity may cause
confusion. Beacon Mut., 376 F.3d at 18. Words that were disclaimed
in the course of trademark registration ordinarily are not the
dominant part of a composite word mark. See 4 McCarthy § 23:42; see
also Country Floors, Inc. v. P’ship Composed of Gepner & Ford, 930
F.2d 1056, 1065 (3d Cir. 1991); Pizzeria Uno Corp. v. Temple, 747
F.2d 1522, 1530 (4th Cir. 1984); Giant Brands, Inc. v. Giant Eagle,
Inc., 228 F. Supp. 2d 646, 653 (D. Md. 2002). In addition, a logo
or additional distinguishing features used with a mark may reduce
the likelihood of confusion. Int’l Ass’n of Machinists & Aerospace
Workers v. Winship Green Nursing Ctr., 103 F.3d 196, 203 (1st Cir.
1996).
SUPER DUCK TOURS and BOSTON DUCK TOURS both include the
phrase “duck tours” which makes that part of the marks identical.
Boston Duck disclaimed both “duck” and “tours” during the
registration process and Super Duck disclaimed “duck tours.” In
addition, the term “duck tours” is commonly understood to mean an
amphibious sightseeing excursion. Therefore, “duck tours” should
not be considered the dominant part of their marks.
Instead, the marks’ first words are their most salient
features. “Super” refers to the characteristics of the tour, while
“Boston” suggests its geography. The overall impression, therefore,
suggests a similar tour offered by different enterprises.
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The logos reinforce the differences. Boston Duck's logo
consists of a white oval within which is a circle with a black
border framing a yellow cartoon duck. The duck sits on blue water
facing out directly from the center of the circle with a purple
backdrop. Written around the top of the circle is the name BOSTON
DUCK TOURS in uniform black lettering. The yellow cartoon duck
wears a camouflage hat and is flapping its wings into water, causing
the blue-and-white-tipped water to splash outside of the circle.
Super Duck's logo is a blue oval with darker blue accents,
denoting water. Toward the top of the logo, and getting smaller
across the logo to suggest motion from left to right, the trade name
SUPER DUCK TOURS is printed in orange. “SUPER” is the largest and
most prominent feature of the mark as used in the logo. At the
center of the logo is a duck tour vehicle with a cartoon duck head
and wings on the front and a duck tail on the rear of the vehicle.
The duck vehicle with its wheels depicted is moving from a black
road into the water. On the front of the vehicle are the head and
shoulders of a cartoon duck with an orange cape flowing behind and
over the vehicle. With one of its two muscular wings, the duck is
holding up an orange flag with the words “Charlestown, MA” on it.
Passengers crowd together along the side of the duck vehicle, which
has "Super Duck Tours" written on its side. As the duck vehicle
enters the water, white water splashes into the air.
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Although both logos show cartoon ducks, the ducks are used
differently. Super Duck’s logo emphasizes its super hero theme and
its new vehicle, while Boston Duck’s logo focuses on the duck’s head
with a camouflage hat, a reference to the World War II vehicles used
by Boston Duck. The obvious differences between the marks and logos
strengthen the conclusion that they are not confusingly similar.
If consumers viewed the marks and logos in the marketplace, without
prior exposure to only Boston Duck’s mark and logo, they would not
be confused.
2. Similarity of Services
The tour services offered by Boston Duck and Super Duck
are similar, and the district court found them to be virtually
identical. Super Duck does not challenge that part of the district
court’s order.
3. Channels of Trade, Advertising, and Customers
The third, fourth, and fifth Pignons factors are often
considered together. Attrezzi, 436 F.3d at 39. The parties do not
dispute that they share channels of trade, customers, and
advertising.
4. Actual Confusion
Evidence that consumers are actually confused by similar
marks provides the best proof of the likelihood of future confusion.
Id. at 40. Evidence of actual confusion, however, may be the result
of external factors unrelated to the similarity of the marks.
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Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 320 (4th
Cir. 1992). While trademarks are intended to protect against unfair
competition, they are not intended to perpetuate product monopolies.
Id.Boston Duck provided evidence that some consumers were
confused when Super Duck began operations in Boston in the summer
of 2007. Some consumers would buy tickets for Super Duck tours and
then arrive at Boston Duck’s departure sites for tours. Taken in
the proper context, however, the confusion that has occurred between
Super Duck and Boston Duck during the first few weeks of Super
Duck’s operations in the Boston area was more likely caused by
Boston’s Duck unique position during the thirteen years that it
operated the only amphibious tour service in the Boston area.36 As
a result, Boston Duck has enjoyed a monopoly in that segment of the
tour service industry in the Boston area. In contrast, if several
amphibious tour services had been operating in the Boston area when
Super Duck began operations, a duck tour would be less likely to be
associated with a single company.37
Trademark laws, however, cannot be used to perpetuate a
product monopoly if the competing trademarks are not otherwise
confusingly similar. Because I conclude that Boston Duck’s and
36
The record also suggests that confusion may have been
exacerbated by the company Super Duck hired to sell its tickets.
37
For example, consumers would not confuse “Boston Pizza” with
“Super Pizza” because they expect a variety of pizza businesses to
co-exist.
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Super Duck’s marks and logos are not confusingly similar, I am
unpersuaded by the evidence of actual confusion.
5. Intent
Whether the defendant acted in bad faith in adopting its
mark is another factor to be considered in determining the
likelihood of consumer confusion. Attrezzi, 436 F.3d at 40.
Evidence that the defendant intended to take advantage of the
plaintiff’s reputation, goodwill, and promotion of its product by
adopting a similar mark is probative of the likelihood of consumer
confusion. Star Fin. Servs., Inc. v. AASTAR Mortgage Corp., 89 F.3d
5, 11 (1st Cir. 1996). Evidence of the defendant’s good faith in
adopting its mark, however, does not show that consumer confusion
is unlikely. Id.Boston Duck argues that Super Duck intended to trade off
of Boston Duck’s goodwill by using SUPER DUCK TOURS as its mark.
In support of that theory, Boston Duck contends that Super Duck was
aware of Boston Duck’s trademark, its logo, and its associated
reputation when it moved its operations from Portland, Maine to
Boston. Those circumstances, Boston Duck asserts, support an
inference of Super Duck’s bad faith.
The evidence shows, however, that Super Duck adopted its
mark when it began operating in Portland six years before it moved
to Boston. Boston Duck does not contend that use of the mark in
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Portland infringed its trademark. The circumstances here do not
support an inference of bad faith.
6. Strength of the Mark
The last Pignons factor evaluates the relative strength
of the marks based on practical considerations. Attrezzi, 436 F.3d
at 40. Strength is measured by considering “the length of time the
mark has been used, the trademark holder’s renown in the industry,
the potency of the mark in the product field (as measured by the
number of similar registered marks), and the trademark holder’s
efforts to promote and protect the mark.” Borinquen, 443 F.3d at
121.
The evidence shows that Boston Duck Tours has used its
trademark and logo since 1994. Super Duck began to use its mark
seven years later, in 2001, in Portland, Maine. The first duck tour
apparently began in Wisconsin just after World War II. Indeed,
Boston Duck acknowledges on its website that it is not the first or
the only duck tour. Therefore, although Boston Duck has more
longevity than Super Duck, Boston Duck was not the first duck tour
nor is it apparently the longest running duck tour in the industry.
Boston Duck demonstrates that it is renowned in the Boston
area for its sightseeing tours. Its fame is due at least in part,
however, to the position it has enjoyed as the only duck tour
service in the Boston area. Boston Duck’s recognition in tour
magazines and the awards it cites are focused on its unique Boston
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service. As such, the evidence does not show that Boston Duck has
unusual renown in the industry as a whole, when compared to
amphibious tours offered elsewhere.
The record evidence shows that many other amphibious
vehicle sightseeing companies, outside of Boston, provide the same
service, use the term “duck” or “duck tour” in their names or in
describing their services, and show a cartoon duck in their logos.38
Even Boston Duck’s means of conveyance, the World War II DUKWs, is
not unique. The record also shows that other duck tour companies
have applied to register names with the term “duck tours,” including
Super Duck, and that other trademarks which include the term “duck
tours” have been registered with the PTO.
Boston Duck protected its mark by registering its word
mark and its logo with the PTO in 2002. Boston Duck represents that
its declarations for use and incontestibility of the mark were
accepted by the PTO in July of 2007. In its registration, however,
Boston Duck disclaimed the right to use the word “duck” and the word
“tours” apart from its mark, BOSTON DUCK TOURS. Boston Duck states
38
In fact, this is not the first dispute about similar services
that has landed a duck tour company in court. See, e.g., Ride the
Ducks of Phil. LLC v. Duck Boat Tours, Inc., 2005 WL 1583514 (3d
Cir. July 6, 2005); City of Key West v. Duck Tours Seafari, Inc.,
972 So. 2d 901 (Fla. Dist. Ct. App. 2007); Dells Boat Co., Inc. v.
Village of Lake Delton, 2001 WL 1512763 (Wis. Ct. App. Nov. 29,
2001); Old South Duck Tours, Inc. v. Mayor & Aldermen of Savannah,
535 S.E.2d 751 (S.C. 2000).
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that it promotes its mark and logo by using them on its website, on
its ticket sales booths, and on the tour vehicles.
Despite Boston Duck’s recognition in the Boston tour
industry and its registration and promotion of its mark and logo,
given the common use of the term “duck tours” to describe the
service Boston Duck provides, BOSTON DUCK TOURS is not a strong
mark.
7. Weighing the Pignons Factors
Although several of the pertinent factors for determining
whether Boston Duck has shown a likelihood of consumer confusion
between its mark and logo and Super Duck’s mark and logo are
conceded, those that are contested, when viewed under the
appropriate standard, weigh strongly against finding a likelihood
of consumer confusion. Boston Duck Tours is not a strong mark,
particularly because its reputation is built at least in part on
having introduced the amphibious tour service to Boston and having
been the only such tour in Boston for thirteen years. Duck tours,
however, have been and continue to be available in other cities in
this country and internationally.
Despite their shared use of the phrase “duck tours,” the
overall impression of the Boston Duck and Super Duck marks and logos
is that they are not similar. Although Boston Duck provided
evidence of actual consumer confusion, such confusion is likely more
the result of Boston Duck’s unique position in Boston rather than
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any similarity in the marks and logos. Finally, the record does not
support an inference that Super Duck adopted its name in bad faith
to trade off of Boston Duck’s reputation. In sum, Boston Duck has
not shown that it is likely to succeed on its infringement claim by
showing a likelihood of consumer confusion between the marks and
logos.
B. Injunction
Therefore, Boston Duck was not entitled to the injunction
that was issued. New Comm Wireless Servs., 159 F.3d at 674.
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Appendix
Super Duck's design mark Boston Duck's design mark
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