“Duck Tours” Is Generic–Boston Duck Tours v. Super Duck Tours

By Eric Goldman

Boston Duck Tours LP v. Super Duck Tours LLC, 2008 WL 2444480 (1st Cir. June 18, 2008)

I previously blogged on this dispute in December. The case involved the defendant’s purchase of keyword advertising triggered by the plaintiff’s trademark. The district court held that the ad purchases qualified as a trademark use in commerce, but the purchases nevertheless didn’t violate the prevailing injunction between the parties restricting the defendant’s use of the terms. (To be clear, there are other aspects in dispute between the parties beyond keyword advertising).

In my previous post, I wrote “I wonder if the term “Duck Tours” has become a generic description of tours in an unattractive amphibious vehicle.” Apparently my speculation wasn’t merely idle, because the First Circuit has now concluded that “duck tours” in this context is, in fact, generic. Accordingly, the plaintiff can only protect the geographic appellation “Boston” as a modifier of the generic phrase “duck tours.” “Super Duck Tours” doesn’t infringe because “Boston” and “Super” are sufficiently distinguishable, and the injunction against the defendant is dissolved.

The First Circuit opinion doesn’t mention keyword advertising, but I thought this ruling was blog-worthy nonetheless because it reinforces one of my oft-stated points that plaintiffs in keyword advertising lawsuits can end up worse off than they started. Like American Blinds in its case against Google, both plaintiffs went into their lawsuits thinking they had protectable trademarks only to have a court–in this case, the First Circuit–conclude that their trademarks aren’t protectable at all. This is a good reminder to plaintiffs to do a careful cost-benefit analysis when bringing keyword advertising lawsuits and to include the risk of asset loss in the calculations.

HT: Evan Brown.

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