On May 19, 2009, Ride the Ducks International, LLC (“Ride The Ducks”) filed a trademark infringement lawsuit against Bay Quackers, LLC (“Bay Quackers”) in the U.S. District Court for the Central District of California. See Ride the Ducks International, LLC v. Bay Quackers, LLC, Case No. 09-cv-2195 (C.D. Cal.). A copy of the complaint can be downloaded here.
Ride The Ducks, based in Georgia, describes itself as the nation's largest amphibious tour operator and amphibious vehicle manufacturer. It operates a fleet of over 75 amphibious tour vehicles offering amphibious sightseeing tours in numerous cities including Baltimore, Branson, Philadelphia, Seattle, and San Francisco to over 1,000,000 guest each year.
As described in the complaint,
To foster participation by its customers, Ride The Ducks distributes a duck call device, known as a “Wacky Quacker,” to its patrons for use while aboard the amphibious vehicle. The customers use the Wacky Quacker devices during the course of the tour to quack at one another, the tour personnel and random passers-by. Ride the Ducks tour guides, likewise, use the “Wacky Quacker” duck calls to encourage participation of the tour patrons.In addition to having a registered trademark for WACKY QUACKERS (for duck calls and toy noise makers), Ride The Ducks is the owner of a registered sound mark for “a quacking noise made by tour guides and tour participants by use of duck call devices throughout various portions of the tours” in connection with “tour guide services over land and water by amphibious vehicles” (the “Ride The Ducks Sound Mark”). The mark was registered in September 2001, and in August 2007, Ride The Ducks filed a Section 15 Declaration of Incontestability making its registration “incontestable.” Subject to certain limitations (see 15 U.S.C. §§1065 and 1115(b)), an "incontestable" registration is conclusive evidence of: (1) validity of the registered mark; (2) the registration of the mark; (3) the owner's ownership of the mark; and (4) the owner's exclusive right to use the mark with the goods/services. See 15 U.S.C. §1065. Most importantly, an “incontestable” registration cannot be cancelled on the basis that it is merely descriptive.
Ride The Ducks maintains that consumers recognize the Ride The Ducks Sound Mark as representing Ride The Ducks’ “high-quality tour guide services.” [really?-ed.]
Bay Quackers, a San Francisco-based amphibious tour company, of handing out similar duck call devices to its tour patrons for use while aboard the amphibious vehicle during the tour which makes a sound “similar to, if not identical to” the Ride The Ducks Sound Mark.
Ride The Ducks causes of action are for registered trademark infringement under 15 U.S.C. §1114, federal unfair competition under 15 U.S.C. §1125(a), and unfair competition under California law (Cal. Bus. & Prof. Code §17200). Ride The Ducks seeks injunctive relief, destruction of all of Bay Quackers’ duck sound noise makers, Bay Quackers’ profits, treble damages, costs and attorneys fees.
This is one of those cases where your initial reaction might be one of disbelief. How can a company claim exclusive rights to a duck sound in connection with “duck tours”? Moreover, how could the PTO have granted a trademark registration for this type of sound mark?
But when you take a step back, you can begin to appreciate how this type of “duck call” device, when used in connection with this tour operation, is somewhat distinctive. After all, such “duck calls” are not a necessary type of mark that all amphibious tour operators would need to use in order to effectively compete in the amphibious tour marketplace. Just because it seems obvious to hand out “duck call” devices for patrons on a “duck tour” does not mean that it cannot serve as a unique source identifier – especially if there were no other “duck tour” companies out there doing it.
Of course, claims to a sound trademark normally are accompanied by challenges that the sound mark fails to function as a mark (i.e., is the “quacking noise made by tour guides and tour participants” marketed in such a way that customers would really identify it as identifying a single source when used in connection with an amphibious tour or would customers just recognize that patrons are making the sound of a duck while on a generic “duck tour”?). It’s a valid question and one that Bay Quackers will certainly raise should it decide to challenge Ride The Ducks. However, with its incontestable trademark registration, Ride The Ducks certainly has the upper hand in this quacky dispute.
If you care to see the Ride The Duck Sound Mark in action, check out this YouTube video.
[May 21, 2009 Update: John Welch pointed out that Boston Duck Tours does have its own registered sound mark for "the sound of a human voice making quacking noises like a duck" in connection with "conducting sightseeing tours." Interestingly, when Ride The Duck's application was originally published for opposition, Boston Duck Tours filed extensions of time to oppose registration. The threatened opposition resulted in the filing of a post-publication amendment that apparently resolved Boston Duck Tours' issue -- and what change was made? Ride The Ducks' original description was "a quacking noise made by tour guides and tour participants by use of duck calls throughout various portions of the tours." The amended description, and ultimately registered mark, was directed to "duck call devices." So it appears that the Ride The Ducks' focus on the "device" made all the difference . . . and reflects an important limitation on the scope of Ride The Ducks trademark rights.]