A sightseeing tour operator was unlikely to succeed in showing that a likelihood of confusion existed between its BOSTON DUCK TOURS word and logo marks and a competitor's SUPER DUCK TOURS marks, the U.S. Court of Appeals in Boston has held. Although the parties were direct competitors with significantly overlapping services, potential customers, channels of trade, and advertising methods, other factors weighed against a likelihood of confusion finding. A district court decision granting preliminary injunctive relief to the complaining tour operator was, accordingly, reversed.

A federal district court committed clear error by finding the phrase "duck tours" nongeneric for the parties' sightseeing tours using amphibious vehicles based on World War Two-era vehicles called DUKWs. As a result, the district court gave the phrase too much weight in its likelihood of confusion analysis, the appellate court said.

The district court should have considered "duck tours" as a unified phrase, rather than focusing on the separate terms "duck" and "tours." Although dictionary definitions of "duck" relied upon by the district court did not refer to DUKWs, there was evidence of generic use of "duck tours" by (1) the media and other third parties, (2) the industry, and (3) the tour operator itself. This evidence --particularly the evidence of widespread use of "duck" and "duck tours" by companies in the sightseeing industry --indicated that no other commonly used and effective alternatives existed to denote the sightseeing services at issue.

Although the BOSTON DUCK TOURS mark was conceptually weak due to the generic nature of the phrase "duck tours" and the descriptive nature of the term "Boston," the mark was commercially strong, the court held, because of the secondary meaning it had acquired. The tour operator had received significant national and international press in connection with its services. Its business had grown substantially since it first used the BOSTON DUCK TOURS mark in 1994. Accordingly, the factor of "mark strength" weighed in favor of a likelihood of confusion finding.

This factor was overcome, however, by the dissimilarity between the BOSTON DUCK TOURS and SUPER DUCK TOURS marks. Because the phrase "duck tours" was generic, it was appropriate to focus on the words "Boston" and "Super," the nongeneric elements of each mark. Although "Boston" and "Super" were two-syllable words, and they were each followed by a two-word generic phrase, the words looked and sounded completely different. In addition, they had different meanings.

Evidence of actual confusion between the marks was largely irrelevant for the likelihood of confusion analysis, in the court's view. The confusion was largely, if not entirely, caused by BOSTON DUCK TOURS' lack of competition in the greater Boston area for several years, as well as its use of the generic phrase "duck tours" to describe its tours.

The BOSTON DUCK TOURS operator failed to establish that the rival acted in bad faith by adopting the trade name SUPER DUCK TOURS, which further weighed against a finding that confusion was likely. The competitor adopted a name that combined a generic phrase describing its services with a descriptive term that was significantly different from the descriptive term used by the complaining tour operator. Although there were similarities between the parties' marks, logos, and services --and although the rival benefited to some degree from the operator's introduction of the duck tour product to the Boston population --these effects were natural consequences of having competition in the marketplace. In addition, the rival created its SUPER DUCK TOURS mark and logo years before entering the Boston area, when it began its operations in Portland, Maine.

The parties' design marks --which both featured an image of a cartoon duck in water --were also too dissimilar for confusion to be likely, the court held. Although each contained a conceptually similar central image, the ducks were significantly different in overall appearance. Other design elements used in the marks were different. The differences between the marks indicated that the designs were associated with separate, unrelated sources, the court concluded.

Boston Duck Tours, LP, 1st Cir., ¶61,254