Kellogg Company v. Toucan Golf, Inc.

United States Court of Appeals, Sixth Circuit
337 F.3d 616 (2003)

ELI5:

Rule of Law:

When goods are completely unrelated, there is no likelihood of confusion under the Lanham Act even if the marks share a common, non-fanciful word. To establish a trademark dilution claim, the plaintiff must present evidence of actual dilution, not merely a likelihood of dilution.

Facts:

Since 1963, Kellogg Company has used Toucan Sam, an anthropomorphic cartoon toucan with a large, multi-colored striped beak, to advertise its Froot Loops cereal.
Kellogg holds five federally-registered trademarks for the Toucan Sam character design and the word mark 'Toucan Sam' for use in the breakfast cereal and clothing industries.
In 1994, Peter Boyko founded Toucan Golf, Inc. (TGI), a company that manufactures golf equipment, primarily putter heads.
TGI's primary clients are companies who use TGI's goods as promotional gifts, and it rarely sells directly to retailers or the public.
TGI uses a logo featuring a realistic toucan, known as 'GolfBird,' which is always perched on a golf iron and has no human-like features.
On December 15, 1994, TGI filed an application with the USPTO to register the word mark 'Toucan Gold' for use on 'golf clubs and golf putters'.

Procedural Posture:

Toucan Golf, Inc. (TGI) filed an 'intent to use' application with the U.S. Patent and Trademark Office (USPTO) for the word mark 'Toucan Gold.'
Kellogg Company filed an opposition with the Trademark Trial and Appeal Board (TTAB).
The TTAB dismissed Kellogg's opposition, permitting the registration to proceed.
Kellogg (Plaintiff) appealed the TTAB's decision by commencing a de novo review against TGI (Defendant) in U.S. District Court, adding claims for likelihood of confusion and trademark dilution.
Following a four-day bench trial, the district court dismissed Kellogg's complaint in its entirety.
Kellogg (Plaintiff-Appellant) appealed the district court's judgment to the U.S. Court of Appeals for the Sixth Circuit.

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Issue:

Does a golf equipment manufacturer's use of the word mark 'Toucan Gold' and a realistic toucan logo create a likelihood of confusion with, or cause dilution of, a cereal company's famous 'Toucan Sam' marks under the Lanham Act?

Opinions:

Majority - Suhrheinrich

No, the use of 'Toucan Gold' and the realistic toucan logo for golf equipment does not create a likelihood of confusion with, or dilute, the 'Toucan Sam' marks. The court found no likelihood of confusion because the products are completely unrelated and the marks are not sufficiently similar. It also found no dilution because Kellogg's failed to provide evidence of actual dilution. The court applied its eight-factor test for likelihood of confusion. While acknowledging the strength and fanciful nature of the 'Toucan Sam' marks (Factor 1), the court found the unrelatedness of the goods—cereal versus golf equipment—to be dispositive (Factor 2). It reasoned that no consumer would associate Kellogg with high-end golf equipment based on its limited promotional items. Regarding the similarity of marks (Factor 3), the court found TGI's realistic 'GolfBird' logo dissimilar to the cartoonish 'Toucan Sam.' It also held that while 'Toucan Sam' as a whole is a fanciful mark, the word 'toucan' by itself is an arbitrary mark when applied to cereal and is not entitled to broad protection outside that market. The court found the remaining factors—evidence of actual confusion, marketing channels, purchaser sophistication, defendant's intent, and likelihood of expansion—also weighed against a finding of confusion. Regarding the dilution claim, the court applied the Supreme Court's holding in Moseley v. V Secret Catalogue, Inc., which requires proof of 'actual dilution' rather than a 'likelihood of dilution.' Kellogg's provided no evidence that TGI's marks had caused any 'lessening of the capacity' of the Toucan Sam mark to identify and distinguish Kellogg's products. Therefore, the dilution claim failed.

Analysis:

This case illustrates the limits of trademark protection, even for a very famous and distinctive mark. It reinforces the principle that the 'relatedness of the goods' is a critical, and often dispositive, factor in the likelihood of confusion analysis; when goods are in completely different markets, it is very difficult to prove infringement. The decision also highlights the high evidentiary burden placed on plaintiffs in dilution cases after the Supreme Court's ruling in Moseley. A plaintiff cannot simply argue that another's use of a similar mark might weaken their brand; they must present concrete evidence that the brand's distinctiveness has actually been diminished.

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