If it looks like a duck and swims like a duck, it probably is one. And if it carries tourists on land and sea, it can be called a duck tour.
A federal Appellate Court judge yesterday overturned a year-old trademark infringement ruling that barred Super Duck Tours LLC from using the words "duck tours" in its name and a logo of a cartoon duck splashing in water in Greater Boston, where the longer-established Boston Duck Tours LP argued the similarities confused customers.
US Court of Appeals for the First Circuit Judge Kermit Lipez wrote in the ruling that the district court "committed clear error" by finding the phrase "duck tours" is not generic and overlooking the widespread use of "duck" and "duck tours" by at least 36 companies world wide that conduct sightseeing trips in vehicles that traverse both land and water.
"Although alternatives do exist, such as 'amphibious tours,' none have been widely adopted in the industry," Lipez wrote. "To grant Boston Duck exclusive rights to use the phrase in the Boston area would be to erect a barrier of entry into the marketplace. . . . Super Duck, as well as other potential competitors, would be placed at a significant market disadvantage."
Super Duck Tours - which as a result of the injunction changed its name to Super Duck Excursions - will reclaim its original name, said manager Dennis Kraez. The court has ordered Boston Duck Tours to reimburse its rival for changing its name and logo on brochures, uniforms, vehicles, signs, and elsewhere. The total amount has yet to be determined.
Cindy Brown, general manager and part owner of Boston Duck Tours, said she was disappointed with the latest ruling. "A very well-respected federal judge ruled in our favor last July, and another federal judge saw it a different way," Brown said.
Still, Boston Duck Tours has remained a Hub icon, carrying a record number of customers in April, May, and June. Boston Duck will also carry the Boston Celtics in today's victory parade.
Both firms are looking forward to moving on. "We're very anxious to work with them and peacefully coexist in Boston and work together," Brown said. "We just got off the phone about half an hour ago about how to go forward."
It's too early to say how the rivals will peacefully roost in the same city. But Kraez said reclaiming his firm's name is a good start.
"Anybody coming to town who's looking for a duck tour looks it up as a duck tour. They don't look it up as an amphibious tour," he said.
Nicole C. Wong can be reached at firstname.lastname@example.org.