In a dispute between the operators of rival “amphibious sightseeing tours,” a panel of the First Circuit disagreed with the trial court’s conclusion that the phrase “duck tours” was non-generic, and vacated the entry of a preliminary injunction against the defendant’s use of the term. Boston Duck Tours, LP v. Super Duck Tours, LLC, 2008 U.S. App. LEXIS 12771 (1st Cir. June 18, 2008).

What’s a “duck tour,” you ask?

Unfortunately for the plaintiff tour operator that prevailed on the issue in the trial court, for the answer to that question the appellate court looked to the tour operator’s Web site, which contained a discussion of the derivation of the term. The appellate court found that the plaintiff tour operator’s own generic use of the term on its Web site was “strong evidence against its claim that the term is primarily associated with its company rather than the services it provides.”

The court went on to comment:

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 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.

The appellate court also pointed to articles proffered by the plaintiff tour operator to establish its fame and recognition, which used the term generically. The court also concluded that the trial court erred in focusing on the separate terms “duck” and “tour,” rather than the entire phrase, in assessing genericism.

Although the appellate court agreed with the district court’s analysis on numerous other points, the panel agreed with the defendant tour operator that the erroneous finding with respect to genericism was fatal to the result in the case, thus the preliminary injunction should not have issued. The court remanded for further proceedings.