Opinion
Case No. 4:99-cv-91
September 6, 2001
JUDGMENT IN A CIVIL CASE
Jury Verdict. This action came before the Court for a trial by jury. The issues have been tried and the jury has rendered its verdict.
Decision by the Court. This action came to trial or hearing before the Court. The issues have been tried or heard and a decision has been rendered.
IT IS ORDERED AND ADJUDGED in accordance with the Findings of Fact and Conclusions of Law entered on September 6, 2001, that the plaintiff shall recover nothing, and that the defendant Toucan Golf, Inc., shall recover its costs of action from the plaintiff, as provided by law.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
This is a de novo appeal, filed by plaintiff Kellogg Company ("Kellogg"), from a decision of the Trademark Trial and Appeal Board ("TTAB") dismissing Kellogg's opposition to an application by defendant Toucan Golf, Inc. to register the mark "TOUCAN GOLD" for golf clubs and golf putters. Kellogg also seeks injunctive relief for trademark dilution.
The matter was tried before the court sitting without a jury on May 16, 17, 18, and 24, 2001. Consideration was deferred as both counsel sought transcripts. Post-trials brief were thereafter submitted by both parties. The case has since that time been ripe for decision.
The parties should draw no inference, based on the time which has passed since this matter became ripe for decision, that the court has struggled with either the facts or law in reaching its decision. The process of reaching a just result has not eluded the court; rather, the issuance of this written decision has been merely postponed by urgent jury trials and press of other business, neither more nor less important that this dispute. That having been said, the following should explain the court's reason for affirming the decision of the TTAB and entering a judgment of no cause of action on Kellogg's complaint.
FINDINGS OF FACT
1. Kellogg is a corporation organized under the law of Delaware, engaged in the business of the manufacture and sale of breakfast foods and other items. The company has its principal place of business in Battle Creek, Michigan.
2. Kellogg is the owner of the following federal trademark registrations:
MARK REGISTRATION NO. ISSUED Toucan (design only) 775,496 August 18, 1964 Toucan (design only) 1,270,940 March 20, 1984 "TOUCAN SAM" 1,343,023 June 18, 1985 Toucan (design only) 1,840,746 June 21, 1994 (lapsed) Toucan (design only) 1,876,803 January 31, 1995 Toucan (design only) 1,979,527 June 11, 1996 The goods covered by these registrations include cereal breakfast foods; cereal-derived food products to be used as a breakfast food, snack food, or ingredient in making food; processed cereal to be used as a breakfast cereal, snack food, or primary component in combination with other foods; processed cereal to be used as a breakfast food, snack food, or ingredient for making food; and clothing, namely t-shirts, sweatshirts, nightshirts, pajamas, and caps.3. Kellogg is also the owner of various other trademark equities, including but not limited to a red script "Kellogg" house mark, which refers to all of its products; various brand names, including the "Froot Loops" cereal brand name; various marks depicting characters who act as "spokescharacters" in the promotion of Kellogg products; and slogans used in the promotion of Kellogg products.
4. In 1964, Kellogg began using a spokescharacter, known as "Toucan Sam," in order to promote its new "Froot Loops" breakfast cereal. "Toucan Sam" is, in all of his various incarnations, is a non-realistic, cartoon-like depiction of a toucan bird, sporting a striped beak, with pleasant, happy demeanor.
5. Froot Loops, now a well-known brand, is currently one of the top 10 best-selling cereals in the United States. Though the trademark design of the character is featured by Kellogg on the face of its boxes of Froot Loops cereal, the actual printed name of the "Toucan Sam" character, which is also a registered trademark of Kellogg, is not depicted on every Froot Loops cereal box. The Kellogg name appears on every box of Froot Loops cereal sold by the company.
6. Kellogg has to date spent millions of dollars advertising Froot Loops. The primary method of advertisement used by Kellogg in promoting this cereal has been television advertising, much of which features the "Toucan Sam" spokescharacter. At various times throughout the life of "Toucan Sam," Kellogg's television advertising has included pictorial depictions as well as verbal references to the character not only by the "Toucan Sam" name but also as "Uncle Toucan," "Sammy Boy," "Sammy," or simply "Toucan." Kellogg has featured the Toucan Sam character in television commercials promoting the Froot Loops cereal over the past approximately 37 years. In some of these television advertisements, the character, who sports a rather prominent beak, is heard directing viewers to "Follow Your Nose," emphasizing the pleasant, fruity smell of the cereal. In every television commercial for Froot Loops, the Kellogg company name and company logo are used.
The cereal is composed of colorful "O"-shaped bits, containing flavors (over the years) such as orange, lemon, cherry, lime, "berry purple," "tropical berry blue," and "cherry berry swirl."
7. In recent years, Kellogg has either used or allowed the use of its "Toucan Sam" word and design marks in connection with other, non-breakfast cereal food products, such as fruit-flavored snacks.
8. In addition to using its trademarks in the promotion of its food products, which are its primary products, Kellogg has a licensing program. Kellogg began this licensing program in 1988. As part of the program, Kellogg licenses others to use its famous marks on non-food products. The primary purpose of this licensing program is to promote Kellogg's primary products, such as the "Froot Loops" cereal. Although Kellogg's licensing program generates royalties for the company, the income stream generated by licensing is merely a secondary purpose of the program.
9. As part of its licensing program, Kellogg has granted licenses for the use of its "Toucan Sam" character design.
10. In addition to its licensing program, Kellogg has, on occasion, itself directly marketed, through catalogues or other mass mailing, non-cereal products bearing its cereal trademarks, including the "Toucan Sam" design. These products are not manufactured by Kellogg.
11. The "Toucan Sam" design has been used on a wide-range of non-food items marketed by Kellogg and its licensees, including apparel and sports-related items, such as t-shirts, baseball caps, toy football and soccer balls, and "NASCAR" toy cars. The sports-related items on which "Toucan Sam" has been featured include golf shirts and golf balls. Some of these non-food items are sold to the general public. However, many are sold through "incentive" catalogs, used in the trade primarily by the sales force as a way of "incentivizing" customers to buy Kellogg's cereal products or other Kellogg food products. Kellogg-licensed merchandise, including merchandise displaying the Toucan Sam character, is also sold in Battle Creek, Michigan at a museum and souvenir shop known as Kellogg's Cereal City USA. Similar merchandise is also sold in Battle Creek at a store known as Classic Logos.
12. Periodically, Kellogg assesses the fame of its trademarks, including the Toucan Sam marks, through what is known as "character recognition studies." The purpose of a character recognition study is to determine the recognizability of a character, in particular in relation to other characters used in the same industry or in other industries. A 1991 study performed for Kellogg (by the Leo Burnett Company) compared the Toucan Sam character with 28 other characters. This particular study showed that Kellogg's "Toucan Sam" spokescharacter had a recognition rate of 94 percent. This represents a high recognition rate. Of those participants in the study who claimed to recognize the Toucan Sam character, 81 percent were then able to identify Froot Loops as the product represented by the spokescharacter. The participants in this study included only children (600 of them), ages six through 14; this is because Kellogg considers Froot Loops to be "kid-driven" cereal, aimed primarily at children as the consumers.
13. Another character recognition study performed in 1997, using all age groups but sampling in favor of children, also showed that the Toucan Sam character is well-recognized among adults as well as children.
14. The evidence shows that Kellogg's design marks depicting its "Toucan Sam" spokescharacter are famous marks. However, none of the evidence presented by Kellogg shows that its TOUCAN SAM word mark or toucan design marks are famous for products other than Froot Loops cereal.
15. In 1994, defendant Toucan Golf, Inc. ("Toucan Golf'), a company based in Mansfield, Ohio, filed an application in the United States Patent and Trademark Office ("PTO") to register the mark "TOUCAN GOLD" for golf clubs and golf putters.
16. Toucan Golf was started by Peter Boyko in 1994. Mr. Boyko's background includes working in the plastics industry, including consulting, designing and producing plastic products, and marketing of plastic products. Mr. Boyko has also been involved, during his career. in the imprinting of products for promotional purposes. In 1994, Mr. Boyko, who had already been involved in selling golf-related products, decided to focus his business on these types of products.
17. Among other things, Toucan Golf sells golf putters. The company itself manufactures the putter heads from polycarbonate plastic material, and assembles the putters using shafts and grips purchased elsewhere. Because the principal business of Toucan Golf is not the golf products themselves but rather the serving the promotional needs of its customers, Toucan Golf typically imprints and sells the putters with the logos of its customers, which have included Coca Cola, Pepperidge Farm, Honda, and Fruit of the Loom. Toucan Golf also sells only the heads themselves, for assembly into a completed product elsewhere.
18. On occasion, Toucan Golf will identify itself as the seller of a putter by imprinting its name on the shaft of the product. However, the company has never sold a putter bearing its own name or logo on the head of the putter.
19. In addition to golf clubs, Toucan Golfs products include golf bag tags, divot tools, ball markers, tees, and pins. However, it has not been shown that Toucan Golf has displayed the mark TOUCAN GOLD on any of these other products.
20. Kellogg opposed registration of the TOUCAN GOLD mark with the PTO, based on what Kellogg perceived to be similarity of the TOUCAN GOLD mark to Kellogg's registered marks for the design and name of TOUCAN SAM. However, finding that Kellogg had failed to prove that Toucan Golf s use of TOUCAN GOLD for golf clubs and golf putters is likely to cause confusion with Kellogg's TOUCAN SAM word mark or its various toucan design marks, the Trademark Trial and Appeal Board ("TTAB") dismissed Kellogg's opposition.
CONCLUSIONS OF LAW
The court recognizes that some of its conclusions of law may contain findings of fact. To that extent, this portion of the court's decision should be deemed to include both findings of fact and conclusions of law.
A. The court has jurisdiction over this matter pursuant to 15 U.S.C. § 1071(b)(1) as a de novo appeal of a decision of the TTAB. The court also has jurisdiction over Kellogg's request for injunctive relief to address alleged dilution pursuant to 15 U.S.C. § 1125(c).
B. Venue is proper in this district pursuant to 28 U.S.C. § 1391(b)(2), insofar as Kellogg has its principal place of business in Battle Creek, Michigan.
C. A § 1071(b) proceeding in district court is often called a de novo review because new evidence may be introduced. A more apt description, however, is found in Standard Pressed Steel Co. v. Midwest Chrome Process Co., 418 F. Supp. 485, 489 (N.D.Ill. 1976), in which the court described the standard of review as `unique.' See also Gillette Co. v. '42' Products, Ltd., 435 F.2d 1114, 1115 (9th Cir. 1970). The review is unique because the record below, as well as new matters, may be introduced as evidence. Unlike a de novo proceeding, findings of fact made by the Trademark Trial and Appeal Board are given great weight and are not upset unless new evidence is introduced `which in character and amount carries thorough conviction.' American Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 10 (5th Cir. 1974); see also Morgan v. Daniels, 153 U.S. 120, 125, 14 S.Ct. 772, 773, 38 L.Ed. 657 (1894). The District Court may also reverse the Trademark Trial and Appeal Board if its decision is not supported by sufficient evidence.
Schmidt v. Quigg, 609 F. Supp. 227, 228 (E.D.Mich. 1985). Recently, the Supreme Court that the standards governing judicial review of findings of fact made by federal administrative agencies applies when the Federal Circuit reviews findings of fact made by the PTO. Dickinson v. Zurko, 527 U.S. 150, 119 S.Ct. 1816, 1818 (1999). The TTAB's factual findings with respect to the relevant factors must be upheld unless they are unsupported by substantial evidence. Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1356 (Fed. Cir. 2000).
Regarding new evidence, such evidence must itself be considered de novo by the district court-in the sense of being fairly weighed without placing a thumb on the scales or dismissing it out of hand. But the evidence must then be weighed against the Board's findings[.] Spraying Systems Co. v. Delavan, Inc., 975 F.2d 387, 391 (7th Cir. 1992).
D. "The PTO may refuse to register a trademark if it so resembles a previously 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.'" On-Line Carline, Inc. v. American Online, Inc., 229 F.3d 1080, 1084 (Fed. Cir. 2000) (citing 15 U.S.C. § 1052(d)). "Whether a likelihood of confusion exists between two marks is determined on a case-by-case basis," id., aided by application of the factors set out in In re E.I. DuPont DeNemours Co., 476 F.2d 1357. 1361 (C.C.P.A. 1973). Under DuPont, the following, when of record. must be considered:
(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
(3) The similarity or dissimilarity of established, likely-to-continue trade channels.
(4) The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
(5) The fame of the prior mark (sales, advertising, length of use).
(6) The number and nature of similar marks in use on similar goods.
(7) The nature and extent of any actual confusion.
(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
(9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).
(10) The market interface between applicant and the owner of a prior mark:
(a) a mere "consent" to register or use.
(b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party.
(c) assignment of mark, application, registration and good will of the related business.
(d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.
(12) The extent of potential confusion, i.e., whether de minimis or substantial.
(13) Any other established fact probative of the effect of use.
In assessing whether a likelihood of confusion exists in the context of trademark infringement, the Sixth Circuit has stated that district courts must consider the following factors:
(1) the strength of the senior mark;
(2) the relatedness of the goods or services;
(3) the similarity of the marks;
(4) the evidence of actual confusion;
(5) the marketing channels used;
(6) the likely degree of purchaser care;
(7) the intent of the defendant in selecting the mark; and
(8) the likelihood of expansion of the product lines.Daddy's Junky Music Stores, Inc. v. Biddy's Family Music Center, 109 F.3d 275, 280 (6th Cir. 1997). These factors do not imply mathematical precision; rather, they are simply a guide to help determine whether confusion is likely. "The ultimate question remains whether relevant consumers are likely to believe that the products and services offered by the parties are affiliated in some way." Id. (quotingHomeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991)).
E. This is not a difficult case, for under virtually any standard the TTAB's decision dismissing Kellogg's opposition would be entitled to affirmance. After review of the entire record, the court is firmly convinced that confusion is highly unlikely to result from Toucan Golf's use of the TOUCAN GOLD mark for the identified goods, golf clubs and putters.
Kellogg argues that its customers, and the public in general, are likely to be confused, mistaken, or deceived as to the origin and sponsorship of Toucan Golf's golf clubs and putters, to be marketed under the TOUCAN GOLD mark. In particular, Kellogg contends, persons will be mislead into believing that TOUCAN GOLD golf clubs and putters are produced by or are in some way associated with Kellogg, which has used the word mark TOUCAN SAM and a toucan bird design in marketing and selling, among other things, golf-related merchandise since before 1994.
The first DuPont factor the court considers is the similarity or dissimilarity of the marks "in their entireties." 476 F.2d at 1361. "All relevant facts pertaining to appearance, sound, and connotation must be considered before similarity as to one or more of those factors may be sufficient to support a finding that the marks are similar or dissimilar." Packard Press, 227 F.3d at 1357. Although it is proper to give more weight to a particular component of the mark, "that does not excuse consideration of the other components of the mark as a whole."Id. Dissection is improper.
Kellogg's TOUCAN SAM word mark undoubtedly shares a common word with Toucan Golf's proposed mark: toucan. However, in its decision, the TTAB found that in Kellogg's mark TOUCAN SAM, each element of the mark has a trademark value; neither word creates a dominant impression. TTAB Slip op. at 17. Likewise, the TTAB found that because the word "gold" lacked suggestive significance as used with golf products. TOUCAN GOLD must be considered a unitary term, with both elements having an impact on consumers. Id. at 16-17. The TTAB further found that compared in their entireties, the TOUCAN SAM and TOUCAN GOLD marks convey different commercial impressions: one connotes the name of a bird, while in the other the word "toucan" appears in the manner of an adjective modifying "gold." Id. at 18. Finally, the TTAB also found that because TOUCAN GOLD creates a different impression than the mere word "toucan," the mark TOUCAN GOLD was not the equivalent to Kellogg's design marks depicting a cartoon-like toucan bird. Id.
The TTAB further observed that in none of Kellogg's design marks is its toucan shown in gold. The cereal boxes presented by Kellogg at trial do not depict a gold bird, but rather a blue bird with a striped, multi-color beak.
These findings are supported by substantial evidence. Use of the word "Sam" in connection with a bird who displays human characteristics-which is precisely how Kellogg uses its TOUCAN SAM mark — creates an impression quite different from TOUCAN GOLD. Therefore, while sharing a common word with Kellogg's TOUCAN SAM mark, TOUCAN
GOLD is not highly similar. Furthermore, when TOUCAN GOLD is compared with Kellogg's design mark, the similarity is even less striking.
The second DuPont factor which the court considers is the "similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use." 476 F.2d at 1361. As the TTAB correctly found, the only goods for which Toucan Golf has applied and intends to use the mark TOUCAN GOLD are golf clubs and putters. TTAB Slip op. at 18-19 n. 11. Kellogg's predominant use of its marks is in connection with its Froot Loops cereal, and while Kellogg has sought to generate royalties by licensing the use of its TOUCAN SAM design mark on golf-related merchandise-though not clubs and putters-these efforts appear to be no more than Kellogg's attempt to either promote its cereal product, or to exploit the affinity which its customers might have with the company's spokescharacter.
In its post-trial brief (docket no. 77), Kellogg argues that the company's golf-related products include putters. Post-Trial Brief of Kellogg Co., at 9. This is an interesting statement, for while Kellogg has presented evidence that its other trademarks have appeared on golf putters, see Plaintiff's Exhibit 8, at 10, it has presented no evidence that the marks at issue in this case have appeared on golf putters.
Kellogg is, of course, entitled to use a spokescharacter to which it owns the rights in such a manner. However, Kellogg's expanded usage of its toucan design and TOUCAN SAM mark in connection the marketing and sale of golf-related merchandise, which would give Kellogg common law rights in such a usage, does not cause the court to give less weight to evidence indicating that Kellogg principally uses its marks at issue in connection with its Froot Loops cereal, which the evidence shows is a top-selling product.
The third DuPont factor which the court considers is the similarity or dissimilarity of "established, likely-to-continue trade channels." The TTAB found that Kellogg had shown prior use of its design marks on golf balls sold through its own catalogue, "distributed only to those members of the general public who would directly telephone [Kellogg] seeking trademarked merchandise." TTAB Slip Op. at 19; see also id. at 9 ("The catalogs are available to the general public"). The TTAB further found that Kellogg-licensed items are also sold through Classic Logos in Battle Creek, Michigan, id. at 9. The record shows that Classic Logos has sold golf-related merchandise, although such merchandise typically represents less than one percent of the store's inventory.
At trial, David Church, the owner of Classic Logos, testified that although he had in the past sold golf balls bearing the toucan design, his current inventory of Kellogg-licensed golf balls included only balls bearing another Kellogg trademark design, that of the company's "Tony the Tiger" spokescharacter. Mr. Church further testified that as of the time of trial, his business was limited to the Battle Creek area, although he at some point intended to make on-line sales. Mr. Church does not consider himself a competitor of Toucan Golf.
Kellogg argues that it has presented evidence in this proceeding which it did not present to the TTAB, namely, evidence that catalogs offering for sale (among other merchandise) golfrelated items bearing the TOUCAN SAM word mark and design mark have been mass-mailed to the general public. Post-Trial Brief of Kellogg Co., at 5-6. Kellogg further argues that sales have been generated as a result of these mailings.
Plaintiffs Exhibit 7 indicates sales of 1,433 golf ball sets, which apparently each include one golf ball depicting the toucan design, and 274 sets of one dozen golf balls (totaling 3,288) depicting the toucan design.
However, to the extent that this may be considered "new" evidence, it is merely cumulative. The TTAB found that Kellogg's common law rights in its toucan design for golf balls were limited to a "very narrow and specialized channel of trade." TTAB Slip Op. at 19.
Substantial evidence supports this finding. For example, the "Kellogg's Catalog" presented as Plaintiffs Exhibit 3 contains an express statement indicating that its "purpose" is "to feature merchandise that is designed to aid the sales force in meeting the following objectives: Drive incremental sales; Leverage displays; Form strong relationships with the trade." This purpose is repeated in the Kellogg's "Gift Incentive Catalog" presented as Plaintiff s Exhibit 4 and in the Kellogg's catalog presented as Plaintiffs Exhibit 9 offering for sale "Licensed Merchandise for Promotions, Incentives and Gifts." Only one catalog, Plaintiffs Exhibit 8, has ever been distributed to the general public via the mass mailing method.
Plaintiff's Exhibit 9 contains the added purpose of that catalog to "reward top performers." In addition, the caption heading the pages on which sports-related items are featured indicates that the items are intended to "help leverage" the company's association with "healthy living," in order to "build customer relations, networking and visibility."
As the TTAB found, Toucan Golf s TOUCAN GOLD clubs are intended to be used as a promotional product, sold to a corporate account. TTAB Slip op. at 11. The clubs have been exhibited at trade shows, and the evidence also shows that promotional materials advertising its clubs have been printed and distributed by Toucan Golf-including advertising depicting a toucan bird design. Toucan Golf has also offered clubs for sale on an Internet site.
Defendant's Exhibit Q displays photos and descriptions of Toucan Golf's products, and includes illustrations, in varying colors, of a smug-looking toucan bird perched upon a golf club. However, as the TTAB correctly noted, slip op. at 26 n. 13, registration has not been sought by Toucan Golf for a mark which includes a toucan bird design.
Kellogg relies on the testimony of David Herdman, trademark attorney for the company, in arguing that because Toucan Golf's application to register TOUCAN GOLD did not contain a limitation on the channels of trade, it is presumed to cover all channels of trade. Post-Trial Brief of Kellogg Co., at 10. Whether this is a factual or legal finding which Kellogg expects the court to make is unclear. To the extent that it is factual, the court is unable to adopt a finding which would require the court to presume, for instance, that Toucan Golf plans to sell its clubs and putters in grocery stores or other retail stores selling food items, which is where the principal products bearing Kellogg's marks are sold to the public. To the extent that this represents a legal conclusion which Kellogg seeks to have the court reach, the court would find far more helpful citation to actual legal authority-not the citation to the testimony of an interested party. Lectures on the law by witnesses, no matter what their background, do not carry much weight with the court.
This leads the court to consideration of the fourth DuPont factor: conditions under which and buyers to whom sales are made, i.e., impulse versus careful, sophisticated purchasing. 476 F.2d at 1361. As the TTAB also observed, "with the very limited information about how promotional or incentive items are distributed, it appears that any golf clubs and putters emanating from [Toucan Golf] and bearing another company's logo would be distributed only to those who are sophisticated and knowledgeable about such promotions. Such persons would not only be very aware that primary marks are featured on a collateral product, but would realize that TOUCAN GOLD appears on [Toucan Golf s] clubs and putters as a manufacturer's mark, and that the manufacturer is not connected with the company using the club or putter as an incentive item." Id. at 25.
The fourth DuPont factor also requires consideration of the price at which sales are made, which bears upon whether sales are likely to be careful or impulse. See Cosmetic Dermatology Vein Centers of Downriver v. New Faces Skin Care Centers, 91 F. Supp.2d 1045, 1057 (E.D.Mich. 2000). Toucan Golfs clubs and putters are expensive items. For example, although the evidence showed that the company has made few sales of these items, one sale of a set of the clubs was made for between $400-$500. In contrast, the court is aware that boxes of breakfast cereal-on which Kellogg principally uses its design mark-are sold on grocery store shelves for far less. A golf ball gift set offered for sale by Kellogg in its mass-mailed
catalog (Plaintiff's Exhibit 8, at 10) was priced at $24.95-still far less than the price charged by Toucan Golf for a set of its clubs.
The fifth DuPont factor requires the court to consider the fame of the prior mark. The TTAB correctly found that Kellogg's toucan design marks are famous for cereal. Id. at 15. In contrast, the TTAB also found that the word mark TOUCAN SAM had not been shown to be famous for cereal, nor had either the design marks or word mark been shown to be famous for any item other than cereal, such as golf balls. Id. at 15-16. While the court disagrees that the evidence has failed to show that the word mark is famous for cereal, the court agrees that the evidence fails to show that Kellogg's marks are famous for golf-related products. The evidence also fails to show that the word TOUCAN alone is a famous Kellogg company mark.
No evidence of record requires consideration of the sixth and seventhDuPont factors, for no evidence shows the use of similar marks on golf-related goods or actual confusion between the parties' products. The eighth factor likewise bears little weight here, for although no evidence indicates actual confusion the evidence does reflect Mr. Boyko's reluctance to more heavily promote his company's product given the pendency of Kellogg's objections.
The court concludes that none of the remaining factors apply on this record. For example, although Kellogg argues that its marks are a TOUCAN "family" of marks, the evidence does not support this. Indeed, Kellogg's use of its house mark with both the Froot Loops brand and any reference to TOUCAN SAM or the toucan design is so consistent that any family of marks could only be said to derive from the use of all marks together. In addition, although Kellogg argues that the potential for confusion is "considerable," the court concludes that given the lack of similarity in the impressions created by the marks and the consistent use by Kellogg of its house mark and brand name with the marks at issue, the potential for confusion is nonexistent. However, one other factor does warrant consideration: the defendant's intent. The court has discerned no wrongful intent on the part of Mr. Boyko in using the TOUCAN GOLD mark. Although the odds are high that Mr. Boyko had at some point before 1994 seen a box of Froot Loops cereal, no evidence suggests that he was aware of the name of the "Toucan Sam" character or precisely what type of bird Kellogg's design of the character was intended to depict. Likewise, no evidence has been presented which suggests that Mr. Boyko was even remotely aware of Kellogg's use of TOUCAN SAM or the toucan design on golf-related merchandise. Under the circumstances, the court finds that no inference of bad faith on the part of Toucan Golf is warranted here.
At trial, Kellogg's trademark counsel, David Herdman, testified regarding what he believed to be advertising material depicting several golf clubs-which he believed to be products of Toucan Golf — displaying various corporate logos. One such club displayed the logo of the Quaker Oats company, a company which Mr. Herdman testified is a competitor of Kellogg. Mr. Herdman expressed some concern that perhaps the TOUCAN GOLD name — which he assumed was on the club — would be identified with Kellogg, and that Kellogg would somehow be harmed by being associated with its competitor Quaker Oats. However, as the TTAB found, this is a "speculative scenario." TTAB Slip op. at 25. No evidence suggests that the types of potential purchasers who would receive such advertising materials would be likely to be confused.
The parties' marks share a common verbal component, but in the critical respects they are not highly similar. In addition, the parties' marketing channels for golf-related products overlap, but the conditions under which and buyers to whom purchases are intended to be made indicate that confusion is unlikely. Considering these factors, and all of the other relevant DuPont factors, the court concludes, as did the TTAB, that the evidence fails to show that Toucan Golf s use of TOUCAN GOLD for golf clubs and putters creates a likelihood of confusion with Kellogg's TOUCAN SAM word mark or design marks.
F. Kellogg has argued that given the amendment of 15 U.S.C. § 1063, dilution is now also a ground for opposition in a TTAB proceeding. The TTAB did not consider the dilutive effect of the TOUCAN GOLD mark and registration on Kellogg's TOUCAN SAM word mark and toucan design marks. Kellogg argues that the consideration of dilution provides a basis for reversal of the TTAB decision. Although Kellogg has also pursued a separate and independent claim for dilution, the court applies the same analysis to both the opposition and Kellogg's independent claim.
G. The Lanham Act, as amended by the Federal Trademark Dilution Act, of 1995 states as follows:
The term `dilution' means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of
(1) competition between the owner of the famous mark and other parties, or
(2) likelihood of confusion, mistake, or deception.
15 U.S.C. § 1127. The federal cause of action for dilution is found in 15 U.S.C. § 1125(c)(1). For a plaintiff to succeed on a federal claim of dilution, (1) the senior mark must be famous; (2) the senior mark must be distinctive; (3) the junior use must be a commercial use in commerce; (4) the junior use must begin after the senior mark has become famous; and (5) the junior use must cause dilution of the distinctive quality of the senior mark. Kellogg Co. v. Exxon Corp., 209 F.3d 562, 577 (6th Cir.) (citations omitted), cert. denied, 531 U.S. 944 (2000).
"The purpose of anti-dilution laws is to provide a narrow remedy when the similarity between two marks is great enough that even a noncompeting, nonconfusing use is harmful to the senior user." Jet, Inc. v. Sewage Aeration Systems, 165 F.3d 419, 425 (6th Cir. 1999). The requirement is that the marks must be of sufficient similarity so that, in the mind of the consumer, the junior mark will conjure an association with the senior mark. V Secret Catal Inc. v. Moseley, 259 F.3d 464, 2001 WL 848586 n. 3 (6th Cir. July 30, 2001). But this association is not confusion. Addressing a case in which a claim was asserted that use of BLOCKBUSTER for fireworks would dilute BLOCKBUSTER as used by the owner of a chain of video and music stores,
To put the difference between infringement and dilution more concretely, if a parent says to the kids, `Let's go pick something out at Blockbuster tonight,' and the youngest child assumes they will be buying fireworks made by Viacom, that is evidence of confusion that is essential to a claim of trademark infringement. But if the oldest child answers, `Which Blockbuster,' that evidences dilution by blurring. Viacom Inc. v. Ingram Enterprises Inc., 141 F.3d 886, 891 n. 9 (8th Cir. 1998). "The degree of similarity required for a dilution claim must be greater than that which is required to show likelihood of confusion." Jet, 165 F.3d at 425. "Although examination of the components of each mark may be helpful, the determination of similarity is made on the basis of the marks in their entireties." Id. at 423. The Sixth Circuit has endorsed the "anti-dissection rule," "which serves to remind courts not to focus only on the prominent features of the mark, or only on those features that are prominent for purposes of the litigation, but on the mark in its totality." Id. Here, the second, third, and fourth elements of a claim for dilution-a distinctive senior mark, a junior use, and a junior use beginning after the senior mark has acquired fame — are satisfied. Regarding the first factor-fame-as already discussed above, Kellogg's senior mark is famous for cereal though not for golf-related products. Most important in this case, however, is
Kellogg's failure to satisfy the fourth factor: dilution of the distinctive quality of its senior mark. Examination of the marks at issue in their entireties shows them to be both visually and verbally distinct, conveying different commercial impressions. The requisite degree of similarity is simply absent. Under the circumstances, Kellogg's assertion of dilution as a basis for opposition to Toucan Golfs registration fails, and Kellogg's separate federal dilution claim also fails.
CONCLUSION
Based upon the foregoing, the decision of the TTAB is armed, and a judgment of no cause of action shall be entered on Kellogg's complaint. Costs shall be borne by Kellogg.