January 15, 2015

Ducking it out in Philadelphia

by Stites & Harbison, PLLC

I'm sure you've all been on the edge of your seats since last week waiting to hear what happened in the case between tour companies involving duck sounds. In case you need a refresher, the case I mentioned was Ride the Ducks, LLC v. Duck Boat Tours Inc., 75 U.S.P.Q 2d (E.D. Pa. 2005), which involved two tour companies were using DUKW amphibious vehicles for tours of Philadelphia.

"DUKW" is an acronym for the military designation for six wheel drive amphibious trucks developed during World War II, and, of course, it would be pronounced the same way as the word "DUCK".

A WWII "DUKW" looked like this:


The parent company of Ride the Ducks, LLC owned the following registration (Reg. No. 2,484,276) of a "sensory" mark consisting "of a quacking noise made by tour guides and tour participants by the use of duck call devices through various portions of the tour" for "tour guide services over land and water by amphibious vehicles": 75686528 (<-- click here). That kazoo-like quacking sound is the sound that Ride the Ducks was trying to protect.

Ride the Ducks called its duck call devices "Wacky Quackers", and its parent also had a registration of "Wacky Quackers" as a trademark for "duck calls and toy noisemakers" (Reg. No. 2,167,682). Duck Boat Tours began offering its tours in Philadelphia about a year after Ride the Ducks. It called its duck call devices by the very similar name "Kwacky Kwackers". Tour customers of both companies could use the duck calls freely during the tours to quack at each other, the tour personnel, and the citizens of Philadelphia.

Ride the Ducks' feathers were so ruffled over this infringement by Duck Boat Tours that it tried to get a Federal court in Pennsylvania to issue an order preliminarily prohibiting Duck Boat Tours from the use of "Kwacky Kwackers" and the use of duck call noises even before going through discovery and trial.

To show trademark infringement, you must show that you have earlier trademark rights and that customers or potential customers are likely to be confused by the newcomer's mark as to whether the product or service came from the same source as your product or service. In this case, there was no question of earlier rights in "Wacky Quackers", and it would seem that customers somewhat familiar with "Wacky Quackers" duck calls could be confused as to whether "Kwacky Kwackers" duck calls came from the same source as "Wacky Quackers" duck calls, possibly not even having a clear enough recollection even to be aware that there was any difference between the marks.

Duck Boat Tours agreed with Ride the Ducks that it would permanently cease using "Kwacky Kwackers" before the court rendered its opinion. The court was left with the question as to whether the Ride the Ducks quacking noise was infringed by the Duck Boat Tours quacking noise. The court recognized that there is a difference between inherently distinctive sounds (like the duck quacking "AFLAC") and more commonplace sounds (like a simple quacking sound).

As I mentioned last week, to show that a more commonplace sound has become a trademark, it has to be shown that when the sound is used with products or services purchasers or prospective purchasers have come to associate the sound exclusively with a single source. For example, we would probably agree that the laugh of the Jolly Green Giant and the sound of lion roaring are trademarks now, but do you think that when these sounds were first heard they would have been immediately distinctive or were they more commonplace sounds that would require time and promotion to become distinctive? Should the Trademark Office have required the Applicants to show that these sounds had become exclusively associated with them for their products and services? It didn't, and I leave it to you to think about whether it should have.

Nor did the Trademark Office require proof that the quacking sound used by Ride the Ducks had become distinctive. Why not?

You might not be surprised to learn that the court thought that the quacking sound of the duck calls was not distinctive. Nor did the court believe that the evidence showed that Ride the Ducks had used the quackers exclusively for long enough or promoted it enough that "a person apprehending a quacking noise on the streets of Philadelphia would reflexively think of the services provided by 'Ride the Ducks'". Even though Ride the Ducks had a registered trademark, the court did not think that the evidence that had been submitted showed that the quacking noise had actually become a trademark for Ride the Ducks and therefore did not even reach the issue of whether there was likelihood of confusion.

Ride the Ducks also argued that its quacking noise was "famous" in Philadelphia and that its famous mark was "diluted" by the quacking noise used by Duck Boat Tours. To prove "dilution" it is necessary to show that your mark is "famous" and that the newcomer's use causes your mark to come to mind among customers or possible customers even if there is no confusion, resulting in a "dilution" of the distinctiveness of your mark.

For example, very few would be confused into thinking that the Coca-Cola company would produce the following poster:

Enjoy Cocaine

Still the famous Coca-Cola mark certainly comes to mind. By contrast, since the court did not believe that Ride the Ducks quacking noise had even become distinctive as a mark, there was no way that it was going to find that the duck sound was a "famous" mark that had been "diluted." Check in next "Taylor Thurday" to find out how dilution can be effectively used by companies, such as McDonald's, which own famous marks.

If you're unfamiliar with Ride the Ducks tours, check them out here:

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