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In the ongoing court battles between two competing Philadelphia tourist companies that provide duck noise-makers during their amphibious rides in the city’s historic section and on the Delaware River, a federal judge has ruled that the quacking sound made by the riders is not entitled to trademark protection. In his 27-page opinion in Ride the Ducks v. Duck Boat Tours Inc., U.S. District Judge Legrome D. Davis found that although the trademarking of a noise or sound “is a relatively rare phenomenon, a sound is indeed capable of acquiring trademark protection.” But Davis found that quacking is a “familiar noise” and “not inherently distinctive.” As a result, he said, the plaintiff needed proof that its use of the sound on Philadelphia streets has acquired “secondary meaning.” On that point, Davis found that the plaintiff’s evidence fell short. “Ride the Ducks has not shown that it has used the quackers in the Philadelphia market long enough for the sound to acquire a secondary meaning in the minds of the universe of potential amphibious tour customers,” Davis wrote. The ruling means that the competing tours, known as Super Ducks, will be free to continue distributing duck-call noisemakers to its riders. The trademark battle marks the second time that the two companies have come to federal court to resolve a dispute. In the first suit, Ride the Ducks (RTD) emerged victorious when Davis issued an injunction that barred Duck Boat Tours from using the same ramp at the end of Race Street to enter the river. Davis found that the ramp was designed and constructed specifically for RTD’s use, and was tested for an amphibious vehicle with the precise specifications of the RTD vehicle. RTD’s lawyer, Michael H. Gaier, argued that Super Ducks’ use of the ramp would result in interruption and interference with RTD’s business, potential damage to the ramp and harm to patrons while on property controlled by RTD. Davis issued the injunction, saying “should Super Ducks use the ramp and share the waterways with RTD without adequate safety measures in place, the potential for delay, inconvenience, and harm or injury to the public multiply. These concerns of public and passenger safety far outweigh the temporary hindrance of market competition.” In the second suit, RTD set out to block Super Ducks from operating a nearly identical business, arguing that its use of the quacking sound during its tours was entitled to trademark protection. It also alleged that one of its former employees, Joseph Saeger, was violating a restrictive covenant by working for Super Ducks, and asked for a court order requiring Super Ducks to terminate Saeger and barring it from hiring any other RTD employee similarly bound by a non-compete agreement. Davis found that RTD, a subsidiary of Ozark Scenic Tours in Missouri, began offering tours in Philadelphia in May 2003, while Super Ducks began operations roughly one year later in July 2004. The two companies “have engaged in intense competition for the tourist dollar since Super Ducks began operations,” Davis found. Davis found that the companies have operations that mirror each other in many ways. Both begin and end their tours from adjacent locations on the west side of South Sixth Street, and offer a tour of various historical sites in the Old City section of Philadelphia, such as the Liberty Bell and the United States Mint. Tour operators for both play music, offer witty and informative commentary on points of historical interest and encourage customers to participate in the tour experience, Davis found. To encourage participation, both distribute a duck call device to riders. RTD’s devices are known as “Wacky Quackers” while the Super Ducks devices were at one time known as “Kwacky Kwackers.” But while RTD’s vehicles enter the river in Old City, the Super Ducks boats enter and exit the Delaware farther north, necessitating a trip down Interstate 95 to return to the tour’s starting point. Davis found that Ozark Scenic Tours has registered trademarks for both the Wacky Quackers and for the sound they make. The sound trademark is for the use “of a quacking noise made by tour guides and tour participants by the use of duck-call devices throughout various portions of the tour.” In its injunction request, RTD asked that Davis prohibit Super Ducks from the use or sale of Kwacky Kwackers and/or use of duck-call noises during their amphibious tour rides. But the battle over the names of the devices became moot when Super Ducks’ lawyer, Morris P. Hershman, said the company had already ceased using the name Kwacky Kwackers. As a result, Davis’ only task on the trademark claims was to determine whether the quacking sound — and its use in amphibious tours of Philadelphia — is entitled to protection. Davis found that a sound trademark’s level of protection depends on “whether it is inherently distinctive or more commonplace and non-distinctive.” After concluding that a quacking noise is a familiar, non-distinct sound, Davis found that RTD could prevail only if it could show that its use of the sound has acquired secondary meaning. RTD failed, Davis found, because “the only evidence offered by plaintiffs on this point was … circumstantial, the quantity and quality of which the court finds insufficient to carry plaintiff’s burden at the preliminary injunction stage.” The evidence, Davis said, showed that RTD was the sole user and distributor of quackers in the Philadelphia market only for about six months. “The court does not find this to be a sufficient amount of time to establish secondary meaning,” Davis wrote. Davis said RTD also presented “no evidence that a person apprehending a quacking noise on the streets of Philadelphia would reflexively think of the services provided by Ride the Ducks.” NO NON-COMPETE INJUNCTION Davis also found that RTD failed to show that it was entitled to an injunction to enforce its non-compete agreement with Saeger. RTD argued that it had a legitimate interest in protecting the secrecy of the extensive training and confidential information provided to Saeger. But Davis found that the evidence fell short. “There was no testimony or evidence presented that the training undergone by Mr. Saeger was specialized, nor that any proprietary knowledge or skills were imparted to Mr. Saeger during what constituted his training period,” Davis wrote. Davis found that the information related to the historical sites and the way that information is disseminated cannot possibly be described as confidential or protectable. “Pennsylvania courts have held that where a competitor can obtain the allegedly confidential information by legitimate means, it will not be given injunctive protection as a trade secret,” Davis wrote. “The court remains unconvinced that any of the information allegedly given to Mr. Saeger during his training warrants using a restrictive covenant to insure protection.”

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