Another Quacky Lawsuit Involving Duck Tours

I previously wrote here about the ongoing dispute between two amphibious tour operators battling over use of the term “duck tour” in connection with amphibious tours. Now comes news of another amphibious tour company’s lawsuit against a competing amphibious sightseeing tour company – only this one involves the “quack” sound of a duck.

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.]

The complaint accuses 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 sent cease and desist letters to Bay Quackers on at least three occasions throughout 2008 and one time as recently as April 20, 2009 (the letters are included as an exhibit to the complaint), but apparently Bay Quackers has continued to hand out duck call devices as part of its tours.

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.

Vegas™Esq. Comments:
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.]

Yoko Ono speaks out about about LENNON service mark cancellation proceeding

I wrote on Wednesday (blog post here) about the cancellation proceeding initiated by Yoko Ono against Lennon Murphy, a heavy-metal musician who performs under the name LENNON and even registered the mark with the U.S. Patent and Trademark Office ("PTO").

Today several news outlets and blogs were reporting on the press statement (link here) put out by Ono late Thursday responding to the stories about her cancellation filing:

Dear Friends

A musician named Lennon Murphy is claiming that Yoko Ono has sued her and that Yoko is seeking to stop Lennon Murphy from performing under her name, Lennon Murphy. Both of these claims are untrue.

Several years ago, Lennon Murphy sought Yoko's permission to do her performances under her name, Lennon Murphy. Yoko, of course, did not object to her request. Subsequently, without Yoko's knowledge, Lennon Murphy filed an application in the United States trademark Office requesting the exclusive right to utilize the name “Lennon” for musical performances. Yoko's attorneys asked Lennon Murphy's attorneys and manager to withdraw her registration of exclusivity to the name LENNON for the trademark. Yoko also offered to cover all costs Lennon Murphy had incurred in filing for the trademark. But Lennon Murphy went ahead to register.

Yoko did not sue Lennon Murphy, but sought to stop her from getting the exclusive right to the name Lennon for performance purposes. For that, Yoko's attorneys, simply notified the Trademark office that Yoko did not believe it was fair that Ms. Murphy be granted the exclusive right to the “Lennon” trademark in relation to musical and entertainment services. As you can see, his is a very important issue for Yoko and the Lennon family.

Yoko says: “I am really hurt if people thought that I told a young artist to not use her own name in her performances and had sought to sue her. I did no such thing. I hope this allegation will be cleared.”

Thank you for your kind attention,

Yoko

I’m not sure if the wording of this press release demonstrates a lack of familiarity with trademark matters or represents the efforts of a clever wordsmith (a lawyer, perhaps) to make Ono’s cancellation proceeding seem innocuous (while making Murphy look like she had it coming).

First, Ono is correct that Murphy and the media have wrongly characterized her action as a lawsuit, when it is actually a “cancellation proceeding.” However, only a lawyer could go on to characterize a “cancellation” as “simply notif[ying] the Trademark office that Yoko did not believe it was fair that Ms. Murphy be granted the exclusive right to the 'Lennon' trademark in relation to musical and entertainment services.” Or stated more accurately, Ono’s attorneys were simply notifying the PTO that Murphy’s registered mark should be cancelled because Ono believes its continued registration dilutes the fame of John Lennon’s name and because Murphy committed fraud on the PTO in obtaining the registration.

Second, when the press statement states that the complaint is trying to stop Murphy from being granted the exclusive right to the “Lennon” trademark in relation to musical and entertainment services, perhaps what Ono meant is that she is trying to stop Murphy from having “conclusive evidence” that she has the exclusive right to use the mark LENNON for musical performances. The very fact that Murphy obtained the registration for the LENNON mark in the first place already provided her prima facie evidence of her exclusive right to use the mark in commerce on or in connection with the services specified in the registration. See §7 of the Lanham Act (15 U.S.C. §1057(b)). However, after five years of continuous use from the date of registration, Murphy could have filed a §15 Declaration of Incontestability (15 U.S.C. §1065), after which the law states that her registration shall be conclusive evidence of the validity of her registered mark and of her registration of the mark, of her ownership of the mark, and of the her exclusive right to use the registered mark in commerce. See §33(b) of the Lanham Act (15 U.S.C. §1115(b)).

As noted in my prior post, if Murphy’s registration had become incontestable, then Ono could not have brought a cancellation based on dilution (although fraud is always grounds for cancellation; see 15 U.S.C. §1064(3) and 15 U.S.C. §1115(b)(1)). As it stands, however, Ono filed the cancellation just under the wire, which allows Ono to assert trademark dilution as a grounds for cancellation.

Third, while Ono is correct that technically the cancellation complaint is not trying to stop her from using her full name, Lennon Murphy, Ono is clearly trying to set a precedent to stop Murphy from continuing to perform under her first name only. Of course, Ono is also asserting that she only gave Murphy permission to use her entire name – not the name Lennon by itself (a claim that Murphy is likely to deny – although Murphy may need some evidence to back up that claim should she hope to prove acquiescence).

Fourth, can Yoko really claim that she had “no knowledge” that Murphy filed an application in the United States trademark Office requesting the exclusive right to utilize the name “Lennon” for musical performances? After all, this is why marks are published for opposition – to put the public on notice of an applicant’s claim to a trademark. The LENNON mark was filed April 11, 2001, and was pending in the PTO for 18 months before it was published for opposition on October 29, 2002 – Ono was free to oppose registration at that time. In her statement, Ono admits that she knew about the mark – her attorney apparently asked Murphy to withdraw the application (or maybe to withdraw the registration – Ono’s statement is not entirely clear whether the request was made before or after registration). Regardless, when Murphy refused, Ono was free to pursue an opposition or cancellation at that time.

And if Ono maintains that she only discovered the registration recently, this may actually hurt her argument that the registered mark is having any kind of dilutive effect on the John Lennon name – after all, if the great protector of John Lennon’s name, likeness, and memory did not notice this registered mark until recently, then could it really be causing any harm? Furthermore, if John Lennon’s name is truly that valuable, then it is difficult to believe that this registration could have gone unnoticed by Ono for so long.

Instead, it appears that Ono decided not to do anything in response to Murphy’s registration– until just five days shy of the deadline after which it would have been more difficult for Ono to pursue her cancellation action against Murphy’s registered mark. Meanwhile, during the last five years, Murphy has been using her registered mark in commerce and has spent a great deal of time and resources building recognition and goodwill around her name. Under the circumstances, Ono’s delay in bringing this cancellation does not seem reasonable – and that kind of unreasonable delay is what can amount to laches.

Finally, does anybody else find it strange that the press statement is apparently signed by Yoko personally, but includes several references to Yoko in the third person ("Yoko also offered" "Yoko states" etc.)?