August 2003
(Issue No. 1: Decisions published July 16–31)

TOUCAN GOLD For Golf Equipment Not Likely To Cause Confusion With, And Does Not Dilute, Kellog's TOUCAN SAM Word Mark And Logo For Cereal

Kellogg Company v. Toucan Golf, Inc. (6th Cir. July 23, 2003), 2003 U.S. App. LEXIS 14660; 2003 FED App. 0241P

Court Opinion

Case Snapshot:

Trademark Issues:	Likelihood of Confusion Dilution
Case Overview:	Kellogg Company appeals the district court's affirmance of the TTAB's decision to permit registration of the word mark TOUCAN GOLD by Defendant Toucan Golf, Inc., a manufacturer of promotional golf equipment.
Holdings:	No likelihood of confusion: because Plaintiffs failed to satisfy the "actual case or controversy" requirement. No dilution:
The Dispute:	Birds of a feather? TOUCAN SAM for cereal TOUCAN GOLD for golf clubs The parties' word marks and associated logos Kellog's TOUCAN SAM marks: Introduced in 1963. Kellog owns five TOUCAN SAM federal trademark registrations. Froot Loops is one of its best selling cereals. TOUCAN SAM is a heavily advertised and very strong mark. Defendant and its TOUCAN GOLD mark: Makes promotional golf clubs and equipment, and prints the name or logo of its client on the putter head or other piece of equipment being sold. Rarely, if ever, sells directly to retailers or the public. TOUCAN GOLD is a word mark that is the subject of Defendan'ts intent-to-use application being opposed by Kellogs. Although not part of this word mark, Defendant also uses a toucan drawing, known as "GolfBird" or "Lady GolfBird," in connection with its products. TTAB dismisses Kellog's opposition alleging likelihood of confusion. Kellog appeals TTAB's decision to U.S. District Court for the Western District of Michigan. Its case is dismissed after a four day bench trial. The court found that confusion was highly unlikely, mainly due to the differences in the parties' goods.
Procedural Posture:	Appeal by opposer of district court's affirmance of the TTAB's dismissal of opposition to registration.
Ruling:	Affirmed

Key Points:

Likelihood of Confusion

Bottom line: No likelihood of confusion because the parties' goods are so different.

 [T]he only of the eight factors we find in favor of Kellogg is the strength of its marks. The products sold by each party are wholly unrelated; the similarity between the word marks or the bird designs is not enough to overcome this unrelatedness; and TGI's clientele is not the sort to believe that Kellogg now manufactures golf clubs. We affirm the decision of the district court and find no likelihood of confusion.   [p. 23]

Application of likelihood of confusion factors:

• TOUCAN SAM word mark and logo are "very strong" marks –
  • Spectrum of distinctiveness: TOUCAN SAM word mark and logo are fanciful.
  • Commercial strength: TOUCAN SAM is visually recognizable by an overwhelming cross-section of American consumers. It has been used since 1963 in every print and television advertisement for FROOT LOOPS cereal.
• Parties' products are "completely unrelated."
  • Token use for golf-related goods insufficient: Kellog's very limited, mainly promotional use of TOUCAN SAM on golf balls and golf shirts was insufficient to find that Kellog's uses TOUCAN SAM for golf equipment. It is a mark for Kellog's breakfast cereal, not golf equipment.

 The district court found that Kellogg's presence in the golf industry was insignificant, and nothing more than a marketing tool to further boost sales of its cereal. We agree.   [p. 11]

• Single 20-year old television commercial insufficient: A 1982 animated television advertisement in which TOUCAN SAM is on a golf course interacting with a golf-playing bear is insufficient to show that TOUCAN SAM is associated with golf by the public.

 We find the parties' products completely unrelated. And under the benchmarks established in this Circuit, the second factor therefore supports a conclusion that confusion is not likely to occur.   [p. 15]

• The marks are not confusingly similar.
  • Kellogs is claiming likelihood of confusion not with the name of its product (FROOT LOOPS), but only with the name of a character used in connection with the product. Therefore, the cases it cites where similarity of the marks overcame product unrelatedness are distinguishable.
  • TOUCAN is the only similarity between the word marks TOUCAN SAM and TOUCAN GOLD.
  • The composite word mark TOUCAN SAM is fanciful, but TOUCAN alone is not – "toucan" for cereal is merely arbitrary.
    • "As opposed to a fanciful mark, an arbitrary mark is distinctive only within its product market and entitled to little or no protection outside of that area." [p. 19]

 Admittedly, we would have a far different case had TGI attempted to use a mark such as 'Toucan Sam Gold' ... because the 'Toucan Sam' word mark, in its entirety, is fanciful and likely transcends its market in the same way 'Frito Lay' and the 'Mc' prefix do.... Kellogg has not cornered the market on all potential uses of the common bird name 'toucan' in commerce, only on uses of 'Toucan Sam.' In regard to the word marks, TGI's apparently similar use is therefore not enough to overcome the unrelatedness of the goods.   [p. 19-20, citation omitted]

• The toucan logos are dissimilar:

 [Defendant's] GolfBird resembles a real toucan. She has the look and proportions of a toucan that one would encounter in the wild. Toucan Sam is anthropomorphic, with a discolored, misshaped beak. His body type is not the same as that of a real toucan; and he smiles and has several other human features. We therefore find no similarity between Toucan Sam and GolfBird.   [p. 20]

Kellog's TOUCAN SAM logo	A real toucan...	Defendant's GolfBird logo
	"Can't we all get along?"

• Other likelihood of confusion factors:
  • Channels of trade are different.
  • Defendant's customers are primarily, and almost exclusively, corporations and wealthy golfers that are sufficiently sophisticated so as to not be confused.
  • Defendant's intent was innocent. It chose the bird name "toucan" because of the use of bird-related terms in golf, such as "eagle" and "birdie."
  • No future expansion by either party into each other's product areas.

Dilution

No dilution because Kellogg presented no evidence that Defendant's use of its toucan marks has caused consumers to no longer recognize that TOUCAN SAM represents only Froot Loops.

• Kellog's studies show the same level of recognition of TOUCAN SAM after Defendant commenced using its toucan marks.

 Kellogg has failed to present evidence that any segment of the population recognizes Toucan Sam as the spokesbird only for Froot Loops in lesser numbers than it did before TGI started using its toucan marks. Accordingly, we affirm the decision of the district court and deny Kellogg's FTDA claims.   [p. 26]

Analysis

Add this to your collection of cases where there was no likelihood of confusion between arbitrary marks used on unrelated goods.

• Arbitrary marks + unrelated goods = no likelihood of confusion.
  • Although the composite TOUCAN SAM was fanciful, "toucan" for cereal is only arbitrary and this was the portion of the mark that was used by Defendant.
• Arbitrary marks are generally protected only within their product category.
• This is why APPLE for computers can coexist with other APPLE marks for unrelated goods or services.

Victory over Goliath bird.

• This was a David vs. Goliath dispute, as reported in this news article.
• According to the article:
  • "'They said 'If you don't give up now, we will put you out of business. Kellogg's has deep pockets,'" [Defendant's owner ] Boyko said. 'They came in here and took pictures of my employees, asked for my income tax returns ... they intimidated you. They went through every drawer.'
    
    He said lawyers representing Kellogg told him they had 'friends' and connections in federal trademark offices and that Boyko never would win the case. Boyko said he informed Kellogg about how its lawyers were operating but was ignored."