Genericide is one of the most interesting doctrines in trademark law, and the First Circuit’s recent opinion on Duck Tours should prove interesting to scholars working in the area. Judge Howard of New Hampshire was on the panel, joining an opinion written by Judge Lipez. Lipez could have cited any of a number of pieces on TM law to explain the concept of genericness, but wisely opted for a preternaturally aptly titled piece:
Because they serve primarily to describe products rather than identify their sources, generic terms are incapable of becoming trademarks, at least in connection with the products that they designate. . . . Awarding trademark rights to any user of the term, especially the first user, would harm competitors and consumers alike. Competitors unable to use a common term that describes or designates their product are at a significant disadvantage communicating to potential customers the nature and characteristics of the product. See Vanessa Bowman Pierce, If it Walks like a Duck and Quacks like a Duck, Shouldn’t it be a Duck?: How a “Functional” Approach Ameliorates the Discontinuity Between the “Primary Significance” Tests for Genericness and Secondary Meaning, 37 N.M. L. Rev. 147, 154 (2007).
Fortunately, AFLAC can rest assured that its own mascot is sufficiently fanciful to resist such a judgment.