Kellogg fails to kill TOUCAN GOLD with two opposition claims

In Kellogg Company v Toucan Golf Inc, the US Court of Appeals for the Sixth Circuit has affirmed a district court decision that Toucan Golf's word mark TOUCAN GOLD and its life-like toucan logo used in relation to golf clubs neither created any likelihood of confusion nor diluted Kellogg's TOUCAN SAM trademark.

Kellogg owns trademark registrations for the words 'toucan sam' and a cartoon-like character used on its FROOT LOOPS-marked breakfast cereal and clothing. When Toucan Golf applied to register the mark TOUCAN GOLD and a life-like image of a toucan as a trademark for golf clubs, Kellogg initiated an opposition action on the basis of likelihood of confusion and dilution.

The Trademark Trial and Appeal Board rejected Kellogg's opposition, as did the US District Court for the Western District of Michigan in a de novo review.

On appeal, the Sixth Circuit upheld the district court decision. With regards to the likelihood of confusion claim, it found that although Kellogg's TOUCAN SAM word and character mark are fanciful and very strong in the cereal industry, the word 'toucan' applied to cereals is "an arbitrary mark that is distinctive only within its product market and entitled to little or no protection outside of that area". The court found that Kellogg had not "cornered the market on all potential use of the common word 'toucan', only on uses of TOUCAN SAM", and thus the two word marks created different commercial impressions.

Turning to the logos, the court found the TOUCAN SAM character and the Toucan Golf design dissimilar in that the former is "anthropomorphic with a discoloured misshaped beak" and the latter resembles a real toucan.

Also, the court held that Kellogg's presence in the golf industry was "insignificant", regardless of evidence of use of the marks (i) for golf balls and golf shirts, and (ii) in cereal advertisements featuring the TOUCAN SAM character on a golf course. The court reasoned that "no consumer would associate Kellogg with top-line golf equipment". Thus, the relations between the products on which the marks are used did not support any finding of likelihood of confusion.

As to the dilution claim, the Sixth Circuit applied the standard that the US Supreme Court established in Moseley v V Secret Catalogue Inc (see Federal Trademark Dilution Act requires proof of actual harm). Relying solely on Kellogg's failure to present empirical evidence that any population segment had a diminished recognition of the TOUCAN SAM mark as "the spokesbird" for FROOT LOOPS cereal as a result of the existence of the TOUCAN GOLD mark, the court held that Kellogg had not presented the required evidence of actual dilution of its marks.

This decision underscores the difficulty and importance of marshalling support for likelihood of confusion and dilution claims in an opposition proceeding, particularly when the marks at issue are not identical and the goods for which the marks are used are generally found in distinct marketplaces. In these circumstances, evidence of licensing of the registered marks for promotional merchandise that could be viewed as related to the goods covered by the trademark application simply does not provide a sufficient basis for a finding of likelihood of confusion or actual dilution.

Rochelle D Alpert, Morgan Lewis & Bockius LLP, San Francisco

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