By Scott Hervey
The First Circuit recently decided a case that exemplifies the downfall of building a brand around merely generic terms. No matter how long the mark owner may use a mark in commerce, it is going to be next to impossible to prevent competitors from using those generic components, even where the use is part of the competitor’s trademark.
Boston Duck Tours operated a sightseeing tour operation of the Boston area since 1994 and used renovated WWII amphibious vehicles commonly referred to as “ducks.” In 2001, Super Duck Tours began operation of a sightseeing land and water tour. Super Duck Tours originally operated its business solely in Portland, Maine. In 2007, Super Duck Tours expanded its operation and began to offer tours in certain parts of Boston not serviced by Boston Duck Tours.
In July 2008, Boston Duck Tours sued Super Duck Tours for trademark infringement. The district court granted Boston Duck’s motion for a preliminary injunction, finding that the term “duck tours” was non-generic for amphibious sightseeing tours in the Boston area and capable of protection. Super Duck Tours promptly appealed the district court’s decision, arguing that the phrase “duck tours” is generic for amphibious sightseeing tour services. The First Circuit Court of Appeals agreed with Super Duck Tours that the district court places a great an emphasis on the generic “Duck Tours” language.
In reviewing basic trademark principles, the Court of Appeals noted that a mark is entitled to trademark protection if it is capable of functioning as a source identifier of goods or services. Trademark law categorizes proposed marks along a spectrum of distinctiveness, with the most distinctive marks being those that are arbitrary or fanciful and the least being those that are generic or merely descriptive. The court noted that if a brand fails to achieve distinctiveness, either inherently or through the acquisition of secondary meaning, it does not have the legal status of a trademark or service mark.
Descriptive marks are those that convey an immediate idea of the ingredients, qualities or characteristics of the goods to which they are attached. 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 mark not only with a specific feature or quality, but also with a single commercial source.
A generic term is one that does not have capacity as a source-identifier because it does not distinguish the goods of one from those of another. Instead, it is a term that, either by definition or through common use, has come to be understood as designating a particular class of goods. 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.
The lower court found that the term “duck tours” was not generic in connection with the services being offered. In reaching this decision, the lower court relied exclusively on a dictionary definition of “duck,” and did not take into account other references. The Court of Appeals noted that a dictionary definition is only one of several factors that should be taken into account when determining whether a brand is generic. Two other types of evidence generally considered in determining whether a designation is generic are uses by the media and other third parties, and uses within the industry generally.
The Court of Appeals considered the above type of evidence submitted by Super Duck Tours in coming to its conclusion that the term “duck tours” is generic for amphibious sightseeing tours. The Court noted the media and third parties in general refer to amphibious sightseeing tours as “duck tours.” The Court also noted the widespread uses of “duck” and “duck tours” by other companies around the country that provide the same amphibious sight-seeing services. The Court found that this evidence indicates that when consumers hear the term “duck tours” they associate it primarily with a product – amphibious sightseeing tours – rather than a source.
What’s the effect of having a generic designation incorporated into a mark? While the presence of a generic term or phrase in a full mark 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. Here, the Court of Appeals noted that Boston Duck Tours was a mark comprised of the generic “duck tours” phrase entitled to no trademark protection at all, coupled with “Boston,” a term that is generally entitled to little protection because it is geographically descriptive. (Because of the long running use of the Boston Duck Tours mark, the court noted that the mark as a whole acquired secondary meaning and is reasonably strong overall as an identifier of its services. Nonetheless, the Court made it clear that the generic part of the mark – the phrase “duck tour” – is entitled to no trademark protection at all.)
The Court of Appeals found that in granting the injunction, the lower court placed undue emphasis on the shared use of “duck tours” in the two marks. In determining whether the marks conflict, the lower court should have focused its inquiry on the non-generic words which comprise the remainder of the marks, which in this case are “Boston” and “Super.”
The lesson in this case for mark owners is, if you want a strong brand, resist incorporating terms that are generic into a brand. (I would even caution against incorporating terms that are extremely descriptive as the line between being extremely descriptive and generic can be a very thin one.) No mater how long you use it and no matter how much advertising money you put behind it, you will never be able to prevent a competitor from using it.