April 26 2005 - USA

Knobbe Martens Olson & Bear LLP

Duck quacking sound mark shot down by district court

In Ride The Ducks LLC v Duck Boat Tours Inc, the US District Court for the Eastern District of Pennsylvania has refused the plaintiff's motion for a preliminary injunction based on, among other things, infringement of a service mark for a quacking noise emitted from duck call devices. The court ruled that the noise was neither inherently distinctive, nor had it acquired secondary meaning.

Since May 2003 Ride The Ducks LLC has operated sightseeing tours in Philadelphia, Pennsylvania in amphibious vehicles equipped to navigate both land and sea. During the tours, Ride The Ducks distributes duck call devices to customers to enhance the tour experience, and to allow them to "quack" at each other and other people along the way. In July 2004, defendant, Duck Boat Tours Inc, began operating similar tours, in which it also provided duck quacking devices to its customers. In an attempt to stop Duck Boat Tours from using duck call noises during its tour, Ride The Ducks brought an action before the district court for, among other things, trademark infringement. It moved for injunctive relief.

To support its claim for trademark infringement, Ride The Ducks relied on its US service mark registration for a "quacking noise made by tour guides and tour participants by the use of duck call devices through various portions of the tour". The services covered under the registration are "tour guide services over land and water by amphibious vehicles". In reviewing the protectability of sound marks, the court noted that "as with a more visually perceptible kind of mark, a sound mark's level of protection will depend on whether it is inherently distinctive, or more common-place and non-distinctive". If the latter, the court noted that Ride The Ducks would need to show secondary meaning. That is, it would need to show that purchasers, prospective purchasers and listeners recognize and exclusively associate the quacking sound with Ride the Ducks' services.

First, the court found that Ride The Ducks' sound mark would not qualify as so inherently distinctive that proof of secondary meaning was not required to link the quacking noise to Ride The Ducks' services. Next, it held that Ride the Ducks did not produce enough evidence to support a finding that its quacking noise mark enjoyed secondary meaning in the Philadelphia market at the time that Duck Boat Tours started incorporating a similar noise in its tours. The court stated that the (at most) 10 months of prior use of the quacking sound by Ride The Ducks was an insufficient amount of time to establish secondary meaning. In addition, it concluded that while Ride The Ducks presented circumstantial evidence that consumers may associate the physical quacking device with Ride the Ducks, it had not presented any evidence showing that the quacking noise was associated with Ride The Ducks' operation.

Accordingly, the court denied Ride The Ducks' motion for a preliminary injunction.

Danielle Klausner and Susan Natland, Knobbe Martens Olson & Bear LLP, Newport Beach

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*This article first appeared in World Trademark Law Report