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.]

Motorola loses bid to federally register 911 Hz “chirp” sound as a trademark

John Welch’s The TTABlog today wrote about one of my favorite subjects – sound trademarks (see my prior post here regarding a sound trademark registration by Nokia).

The Trademark Trial and Appeals Board upheld an opposition filed by Nextel Communications of an application by Motorola to register “an electronic chirp consisting of a tone at 911 Hz played at a cadence of 25 ms ON, 25 ms OFF, 25 ms ON, 25 ms OFF, 50 ms ON” as a trademark for two-way radios. See Nextel Communications, Inc. v. Motorola, Inc., Opposition No. 91161817 (T.T.A.B. February 27, 2008).

The dispute is actually one of two sound trademark oppositions between the two companies. Nextel also filed an opposition against Motorola’s sound trademark application for an “electronic chirp consisting of a tone at 1800 Hz played at a cadence of 24 milliseconds ON, 24 ms OFF, 24 ms ON, 24 ms OFF, 48 ms ON” for cellular telephones and two-way radios (filed April 8, 2003, but claiming first use on April 30, 1996). See Nextel Communications, Inc. v. Motorola, Inc., Opposition No. 91164353 (T.T.A.B.). Nextel also filed its own sound service mark application for “a tone at 1800 Hz played at a cadence of 24 milliseconds (ms) ON, 24 ms OFF, 24 ms ON, 24 ms OFF, 48 ms ON” for various telecommunications related services (filed on February 25, 2005, but claiming first use on May 16, 1997); however, the application is currently suspended pending the outcome of Motorola’s application.

The TTAB’s decision found that Motorola’s “chirp” failed to function as a trademark under Section 45 of the Trademark Act (15 U.S.C. §1127), namely a mark that is used in such a manner that it would readily be perceived as identifying the specified goods and distinguishing a single source or origin for the goods (i.e., whether the mark which would be perceived as a source identifier).

Instead, Motorola’s “chirp” was found to function merely as an alert tone notifying users of Motorola’s two-way radios when the two-way radio has found an available channel on which to communicate. In addition, the TTAB found that Motorola’s promotional efforts only reinforced that Motorola did not use the “chirp” as a trademark, but rather as a way for users of Motorola’s two-way radios to “aurally recognize an operational feature of the goods,” namely to signal the availability of a feature of its goods rather than the source of the goods.

It is interesting to note that the question of the mark being “functional” (and thus refused registration on the Principal Register under Section 2(e)(5) of the Trademark Act (15 U.S.C. §1052(e)(5) on the grounds that the sound is matter that, as a whole, is function) was not raised by the parties. The concurring opinion refers to this as the “chirping elephant in the room” – basically, Nextel did not bring it the issue of functionality because it has its own sound trademark application pending.

The concurring judge suggests that it is more important for an issue such as functionality to first be litigated in order to determine whether a mark holder’s exclusive use of a sound is “consistent with the preservation of effective competition among manufacturers and merchants of a defined set of these hand held wireless devices.” Only after this issue is thoroughly litigated should the focus then turn to whether or not the sound actually functions as a mark.

For a good article on “non-traditional” trademarks, check out the article by Jerome Gilson and Anne Gilson LaLonde titled “Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks” 95 TMR 773, The Trademark Reporter (2005).

Trivia question of the day: What is the only “scent” trademark currently registered on the Principal Register, for what scent, and for what goods? The answer can be found here and here. And while this mark is registered on the Principal Register under Section 2(f), what is the only “scent” trademark (now canceled) to ever be determined to be inherently distinctive such that it was registered it on the Principal Register (not based on acquired distinctiveness). The answer can be found here.

[Update: I saw a Nextel commercial this evening advertising Nextel's Direct Connect Service. A "chirp" sound was played repeatedly throughout the commercial. Did Nextel perhaps learn a lesson from this decision and is making sure its sound trademark does not suffer the same fate?]

Sound Trademarks – Nokia Gets a Registered Trademark for its Default Ring Tone

One of my favorite trademark issues is registering a trademark for a sound. Some people are surprised that a company could get a trademark for a sound. But just think about the 3 note “NBC” jingle or the MGM’s lion roar or Intel’s 5 note ding that accompanies the Pentium processor logo – and one can see how a sound can be used as a source identifier. Harley Davidson tried to register the annoying “put-put” sound made only by Harley Davidson motorcycles, but abandoned the application after years of fighting several companies that were opposing Harley’s application before the TTAB.

Nokia now joins these famous trademark sounds. On September 4, 2007, Nokia received a registration for the default ring tone on all Nokia phones. See Reg. 3288274 . Wikipedia has a page describing Nokia’s tune (including a sound link for those who don’t have the tune emblazoned in their head), which is an excerpt from Francisco Tárrega's Gran Vals.

In order for an applicant to obtain registration of a sound mark, the applicant must provide the following types of information and documentation:

• an explanation as to whether the identified sound serves any purpose as used on the goods and/or services;
• an explanation as to whether the identified sound is a natural by-product of the manufacturing process for the goods and/or services;
• any available advertising, promotional or explanatory literature concerning the goods and/or services, particularly any material that relates specifically to the proposed mark;
• an explanation as to the use of sound in applicant’s industry;
• a statement clarifying any other use of sound by applicant; and
• an explanation as to whether competitors produce the goods and/or services with the identified sound.

See In re General Electric Broadcasting Co., Inc., 199 USPQ 560 (TTAB 1978); see also id. at 563 (emphasis added):

[I]t is believed that the criteria for the registration of sound marks must be somewhat different from those applied to the average trademark notwithstanding that more often than not, they do not fall within any of the proscriptions set forth in Section 2(a) through (e). That is, unlike the case of a trademark which is applied to the goods in such a manner as to create a visual and lasting impression upon a purchaser or prospective purchaser encountering the mark in the marketplace, a sound mark depends upon aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it is struck.

For a complete list of sound marks, just do an Advanced Search on PTO’s TARR database and type “(6)[MD]” (excluding quotes). The PTO also has a special page for sound marks with accompanying MP3 files.