Kellogg Co. v. Toucan Golf, Inc.

• Citation: 337 F.3d 616
• Decision Date: 23 July 2003
• Docket Number: No. 01-2394.,01-2394.
• Parties: KELLOGG COMPANY, Plaintiff-Appellant, v. TOUCAN GOLF, INC., Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

337 F.3d 616

KELLOGG COMPANY, Plaintiff-Appellant, v. TOUCAN GOLF, INC., Defendant-Appellee.

No. 01-2394.

United States Court of Appeals, Sixth Circuit.

Argued May 6, 2003.

Decided and Filed July 23, 2003.

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Daniel S. Mason (argued and briefed), Christopher T. Micheletti, (briefed), Zelle, Hofmann, Voelbel, Mason & Gette, San Francisco, CA, for Plaintiff-Appellant.

Gerard Mantese, (argued and briefed), Mantese & Associates, Troy, MI, John J. Conway (briefed), Detroit, MI, for Defendant-Appellee.

Before SUHRHEINRICH and COLE, Circuit Judges; CARR, District Judge.^*

OPINION

SUHRHEINRICH, Circuit Judge.

Plaintiff Appellant Kellogg Company appeals from the district court's affirmation of the Trademark Trial and Appeal Board's (TTAB) decision to permit the registration of the word mark "Toucan Gold" by Defendant Appellee Toucan Golf, Inc. (TGI), a manufacturer of promotional golf equipment.

Kellogg claims that TGI's word mark and its corresponding toucan logo create a likelihood of confusion with, and dilute the distinctiveness of, Kellogg's five federally-registered and incontestable "Toucan Sam" logos and word mark under the Lanham Act as amended, 15 U.S.C. §§ 1051, et seq.

We affirm the decision of the district court and deny Kellogg's claims. TGI's use of the word mark "Toucan Gold" does not create a likelihood of confusion among consumers, principally because TGI's use of its mark is in an industry far removed from that of Kellogg. Also, TGI's toucan logo, as a realistic toucan design, does not create a likelihood of confusion with Kellogg's more cartoonish "Toucan Sam" designs. Furthermore, Kellogg has not presented any evidence that TGI's use of its marks actually dilutes the fame or distinctiveness of any of Kellogg's marks.

I. Facts

Kellogg, a Delaware corporation based in Battle Creek, Michigan, is the largest producer of breakfast cereal in the world. On July 24, 1963, Kellogg first introduced Toucan Sam on boxes of "Froot Loops" cereal. Kellogg has used Toucan Sam on Froot Loops boxes, and in every print and television advertisement for the cereal, since. Toucan Sam is an anthropomorphic cartoon toucan. He is short and stout and walks upright. He is nearly always smiling with a pleasant and cheery demeanor, but looking nothing similar to a real toucan. He has a royal and powder blue body and an elongated and oversized striped beak, colored shades of orange, red, pink, and black. He has human features, such as fingers and toes, and only exhibits his wings while flying. Moreover, in television advertisements over the past forty years, Toucan Sam has been given a voice. He speaks with a British accent, allowing him to fervently sing the praises of the cereal he represents, and to entice several generations of children to "follow his nose" because "it always knows" where to find the Froot Loops.

Kellogg is the holder of five federally-registered Toucan Sam marks at issue in this case. The first was registered on August 18, 1964, under United States Patent and Trademark Office¹ (USPTO) Reg. No. 775,496, and consists of a simplistic toucan design, drawn with an exaggerated, striped beak, standing in profile with hands on hips and smiling, as reproduced below:

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The second mark was registered March 20, 1984, under USPTO Reg. No. 1,270,940, and consists of an updated version of the same toucan, standing and smiling with his mouth open widely; and pointing his left index finger upward:

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The third mark is for the word mark, "Toucan Sam." This mark was registered on June 18, 1985, under USPTO Reg. No. 1,343,023. The fourth mark, registered on June 21, 1994, under USPTO Reg. No. 1,840,746, is a shaded drawing of Toucan Sam flying, with wings spread, and smiling.

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The fifth mark, registered January 31, 1995, under USPTO Reg. No. 1,876,803, is essentially the same drawing as in the fourth mark, except unshaded, as reproduced below:

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Together the five registrations indicate that Kellogg's marks are for use in the breakfast cereal industry, and on clothing.

In 1994, Peter Boyko created TGI, an Ohio corporation with its principal place of business in Mansfield, Ohio, with his wife, Janice Boyko, and daughter. TGI is a manufacturer of golf equipment, mainly putter heads. TGI creates putter heads from polycarbonate plastics, purchases shafts and grips from outside sources, and then assembles and sells the putters. Principally, TGI's clientele consists of companies who use TGI's goods as promotional gifts at charity events. For this purpose, TGI prints the name or logo of its client on the putter head or other piece of equipment being sold. TGI rarely, if ever, sells directly to retailers or the public.

TGI likewise uses a toucan drawing, known as "GolfBird" or "Lady GolfBird," to represent its products. TGI has placed this logo on letterhead, business cards, its web site, and even on the outside of its building in Mansfield. GolfBird has a multi-colored body, and TGI displays GolfBird in a myriad of color schemes for different purposes. Invariably, however, she has a long, narrow, yellow beak with a black tip, not disproportionate to or unlike that of a real toucan. GolfBird is always seen perched upon a golf iron as if it were a tree branch. She has no human features whatsoever, and resembles a real toucan in all aspects except, perhaps, her variable body coloring:

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TGI has not registered its GolfBird logo with the USPTO. On December 15, 1994, however, TGI did file an "intent to use" application with the USPTO for the word mark "Toucan Gold." The application, as later amended, sought to use the mark in relation to "golf clubs and golf putters." Specifically, TGI planned to use the mark for its newest line of putters which consist of a putter head on a Boron Graphite shaft. On August 29, 1995, the USPTO published TGI's application for opposition. Kellogg filed an opposition with the TTAB, asserting that TGI's proposed use of the mark "Toucan Gold" for golf-related merchandise infringed upon Kellogg's Toucan Sam marks under the Lanham Act by creating a likelihood of consumer confusion. On May 19, 1999, the TTAB dismissed the opposition without testimony.

On July 16, 1999, Kellogg appealed the TTAB decision to the district court below, and commenced a de novo review under 15 U.S.C. § 1071(b). In its complaint, Kellogg again claimed that TGI's use of the word mark "Toucan Gold" created a likelihood of confusion among consumers with respect to Kellogg's Toucan Sam word mark. Kellogg added a likelihood of confusion claim with respect to the GolfBird logo as well. Furthermore, Kellogg added a dilution claim under the Federal Trademark Dilution Act of 1995 (FTDA). See 15 U.S.C. §§ 1063 and 1125(c). On September 6, 2001, after a four day bench trial, the district court dismissed Kellogg's complaint. The judgment was then entered on September 10. The court found that confusion was highly unlikely, principally because Kellogg is in the business of selling cereal, whereas TGI is in the business of selling putters. Moreover, the court found no dilution because the parties' marks are "visually and verbally distinct." Kellogg filed a notice of appeal on October 4, 2001, and this matter is timely before this Court pursuant to Fed.R.App. P. 4(a)(1)(A).

II. Standard of Review and Jurisdiction

The TTAB "may refuse to register a trademark that so resembles a registered mark `as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.'" Recot, Inc. v. Becton, 214 F.3d 1322, 1326 (Fed.Cir.2000) (quoting 15 U.S.C. § 1052(d)).

The federal courts have jurisdiction over appeals from the TTAB. A party who lost before the TTAB may appeal the decision to the United States Court of Appeals for the Federal Circuit under a "substantial evidence" standard of review. See, e.g., In re Thrifty, Inc., 274 F.3d 1349 1350 (Fed.Cir.2001). Otherwise, a party may appeal the TTAB decision, to be reviewed de novo, to the United States District Court in any district where venue is proper. 15 U.S.C. § 1071(b)(1). A disappointed party may present new evidence before the district court that was not presented to the TTAB. Dickinson v. Zurko, 527 U.S. 150, 164, 119 S.Ct. 1816, 144 L.Ed.2d 143 (1999). Kellogg has chosen the latter route.

We review the district court's legal conclusions de novo; but review its factual conclusions for clear error. See McLaughlin v. Holt Pub. Schs. Bd. of Educ., 320 F.3d 663, 669 (6th Cir.2003).

III. Analysis

Essentially, Kellogg seeks to block the registration of the "Toucan Gold" word mark, and to prevent further commercial use of both the word mark and the Golf-Bird logo. To this end, Kellogg asserts that there is a Lanham Act violation because there exists a likelihood that consumers will be confused as to the source of TGI's products. Moreover, Kellogg asserts that, regardless of our confusion analysis, TGI's use of its marks dilutes the fame of Kellogg's marks, and therefore TGI is in violation of the FTDA.

A. Likelihood of Confusion

In order to show trademark infringement under the Lanham Act, and that TGI is not entitled to registration, Kellogg must show that TGI's use of its marks constitutes use "in commerce" of a "reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive...." 15 U.S.C. § 1114(1); see also Taubman Co. v. Webfeats, 319...