Kellogg Co. v. Exxon Mobil Corp.

• Citation: 192 F.Supp.2d 790
• Decision Date: 07 June 2001
• Docket Number: No. 96-3070 G/A.,96-3070 G/A.
• Parties: KELLOGG COMPANY, Plaintiff/Counter Defendant, v. EXXON MOBIL CORPORATION, Defendant.
• Court: U.S. District Court — Western District of Tennessee

192 F.Supp.2d 790

KELLOGG COMPANY, Plaintiff/Counter Defendant, v. EXXON MOBIL CORPORATION, Defendant.

No. 96-3070 G/A.

United States District Court, W.D. Tennessee, Western Division.

June 7, 2001.

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William M. O'Callaghan, Furth Fahrner & Mason, San Francisco, CA, Charles F. Morrow, Butler Snow O'Mara Stevens & Cannada, PLLC, Germantown, TN, Grady M. Garrison, Bulter Snow O'Mara Stevens & Cannada, PLLC, Memphis, TN, Bruce J. Wecker, San Francisco, CA, Daniel S. Mason, Christopher T. Micheletti, Zelle Hofmann Voelbel & Gette, San Francisco, CA, for Kellogg Co.

Buckner Wellford, John J. Thomason, Thomason Hendrix Harvey Johnson & Mitchell, Memphis, TN, Robert D. Rippe, Jr., William R. Cohrs, Charles A. Beach, Exxon Corp., Irving, TX, Louis T. Pirkey, William G. Barber, Stephen P. Meleen, Fulbright & Jaworski, Austin, TX, for Exxon Mobil Corp.

ORDER PARTIALLY GRANTING AND PARTIALLY DENYING EXXON MOBIL'S MOTIONS FOR SUMMARY JUDGMENT WITH RESPECT TO TRADEMARK DILUTION

GIBBONS, District Judge.

On October 6, 1996, plaintiff Kellogg Company ("Kellogg") brought this action for trademark infringement, trademark dilution and unfair competition against defendant Exxon Mobil Corporation ("ExxonMobil" or "Exxon"),¹ seeking to protect the name and image of its spokesman "Tony the Tiger" from injury due to Exxon's use of its own cartoon tiger icon ("Cartoon Tiger").² Exxon responded and filed a counterclaim on November 15, 1996, seeking a declaration of its trademark rights pursuant to 15 U.S.C. § 1119 for use of the "Hungry Tiger" and "Tiger Express" marks for the promotion of the retail convenience stores that Exxon operates at its gasoline stations. Now, after a long procedural history,³ the court considers Exxon's motions for summary judgment on Kellogg's dilution claims.

The record reveals the following undisputed facts. In 1952, Kellogg introduced the presweetened corn flake product now called "Kellogg's Frosted Flakes." (Compl.¶ 7.) In order to market its new cereal, Kellogg created a fictitious cartoon character called "Tony the Tiger," whose name and likeness it registered with the United States Patent and Trademark Office ("USPTO"). (Compl.Ex.B.) In 1964, Exxon began using its own Cartoon Tiger as part of its national "Put a Tiger in Your Tank" advertisement campaign. (Bennett Decl. at 1-2 & Ex. F.) Exxon subsequently registered this tiger mark with the USPTO in 1965. (Answer Ex. A.) Kellogg was aware of Exxon's use of the Cartoon Tiger in connection with the "Put a Tiger in Your Tank" media campaign (Kellogg's Resp. to First Req. for Admis. No. 38) and did not oppose Exxon's federal registration of the mark (Kellogg's Resp. to First Req. for Admis. No. 61).

In the early 1980's, McCann-Erickson, Exxon's advertising agency, recommended that Exxon phase out the use of its Cartoon Tiger in marketing and instead use a live tiger that it felt was more befitting the time period:

The animated, happy-go-lucky tiger ... used in the (seemingly) carefree 1950's is not conducive to the serious topic of energy in the 1980's. The live tiger with all of its raw natural power and grace, however, is appropriate.

(Collins Dep.Ex. 255.) Therefore, because of "the somber nature of the times in terms of the need to conserve gasoline," (Atkins Dep. at 70), Exxon instructed its regional managers in an August 12, 1982 letter that "the use of the `cartoon tiger' is to be discontinued." (Mantell Dep.Ex. 36, at EMK0028027-28.) In November 1985, Exxon nevertheless renewed its federal trademark registration of the Cartoon Tiger image for marketing motor fuels for an additional twenty years. (Rippe Decl.Ex. D.)

In March 1989, the Exxon Valdez, an oil tanker owned by an Exxon subsidiary, ran aground in Prince William Sound, Alaska, and spilled more than 11 million gallons of oil, causing massive destruction to the flora and fauna in the area. In response to negative public reaction to the Exxon Valdez spill, Exxon decided to pursue a "softer," "warmer", and "friendlier" advertising campaign. (Stanislaus Dep. at 165; Hale Dep. at 32.) Exxon reintroduced widespread use of the Cartoon Tiger, (Carter Dep.Exs. 41, 42; Take Pride in CORS! Pride (Exxon Co., U.S.A.), at 1), but portrayed the Cartoon Tiger differently than it had been before. As its artist elaborated, "Today's Tiger is now cast in a more humanitarian role. He is polite to the elderly, plants trees for ecology and has an overall concern for the environment." (Jones Dep.Ex. 348.)

Exxon also incorporated the Cartoon Tiger into different settings. Exxon had opened its first company-operated gasoline station convenience store in April 1984 (Bulls Dep.Ex. 72) and expanded to approximately 740 stores by 1992 (Herdman Dep.Ex. 31). In 1991, Exxon decided to test the name "Tiger Mart" for its convenience stores and to feature the Cartoon Tiger on the permanent exterior signage at such stores. (Carter Dep. at 46-49.) It therefore changed six of its stores, formerly named "Exxon Shops," to Tiger Marts in 1991 and 1992. (Hudson Decl. ¶ 3.) The number of Tiger Marts increased rapidly; by October 1993, there were about 68 Tiger Marts, and by October 1996, there were over 265 Tiger Marts. (Radous Decl. ¶ 5.) Exxon also opened two larger "Tiger Express" stores by April 1996. Id. ¶ 6. The Tiger Express stores and most Tiger Marts depict the Cartoon Tiger on their permanent signage (Hudson Decl. at 81-82; Bruse Dep. at 63), as well as on point-of-sale materials, like displays, fountain beverage cups, insulated mugs, and billboards. (Kellogg's Second Supp.Mem. Opp.Summ.J.Mot. Dismissing Dilution Claims Ex. 4.)

On October 7, 1996, Kellogg filed this action against Exxon for its use of the Cartoon Tiger, categorizing its claims in eight counts: three counts under federal trademark law, i.e., the Lanham Act, 15 U.S.C. § 1051 et seq. (trademark infringement, false designation of origin, and trademark dilution); two counts under Tennessee common law (common law trademark infringement and palming off); two counts under Tennessee statutory law (unfair competition under the Tennessee Consumer Protection Act, TennCode Ann. § 47-18-101 et seq., and trademark infringement and dilution under Tenn.Code Ann. § 47-25-501 et seq.); and one claim of declaratory relief for trademark abandonment under 28 U.S.C. §§ 2201, 2202. Kellogg seeks preliminary and permanent injunctive relief to prohibit Exxon from continued use of the Cartoon Tiger to market and promote convenience food products, requests that the court order the delivery and destruction of all Exxon items bearing the Cartoon Tiger image in such use, and asks that Exxon be required to abandon with prejudice its application for federal trademark registration of "Hungry Tiger & Design." Kellogg also seeks an equitable accounting of Exxon's profits from using the Cartoon Tiger to advertise food and beverage products, attorneys' fees, and costs.⁴ (Am.Compl. at 14-15.)

The instant overlapping motions both deal with Kellogg's claims of trademark dilution: one is a motion for partial summary judgment with regard to Kellogg's federal dilution claim under the Federal Trademark Dilution Act ("FTDA"), and the other is a motion for summary judgment regarding Kellogg's dilution by tarnishment claims under both federal and state law. While the Court previously found these motions to be moot, the Sixth Circuit's remand to this court renders them ripe for adjudication.

Summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). The party moving for summary judgment "bears the burden of clearly and convincingly establishing the nonexistence of any genuine issue of material fact, and the evidence as well as all inferences drawn therefrom must be read in a light most favorable to the party opposing the motion." Kochins v. Linden-Alimak, Inc., 799 F.2d 1128, 1133 (6th Cir.1986). The moving party can meet this burden, however, by pointing out to the court that the respondents, having had sufficient opportunity for discovery, have no evidence to support an essential element of their case. Street v. J.C. Bradford & Co., 886 F.2d 1472, 1479 (6th Cir.1989).

When confronted with a properly supported motion for summary judgment, the nonmoving party must set forth specific facts showing that there is a genuine issue for trial. A genuine issue for trial exists if the evidence is such that a reasonable trier of fact could return a verdict for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The party opposing the motion must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The nonmoving party may not oppose a properly supported summary judgment motion by mere reliance on the pleadings. Celotex Corp. v. Catrett, 477 U.S. 317, 324, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Instead, the nonmoving party must present "concrete evidence supporting its claims." Cloverdale Equip. Co. v. Simon Aerials, Inc., 869 F.2d 934, 937 (6th Cir.1989). The district court does not have the duty to search the record for such evidence. InterRoyal Corp. v. Sponseller, 889 F.2d 108, 110-11 (6th Cir.1989); Street, 886 F.2d at 1479-80. Respondents have the duty to point out specific evidence in the record that would be sufficient to justify a decision in their favor by the trier of fact. InterRoyal Corp., 889 F.2d at 111.

The concept of trademark dilution derives from the landmark law review article, "The Rational Basis of Trademark...