## Facts

- Kellogg used and federally registered “Tony the Tiger” and related designs beginning in 1952 for breakfast cereal and related food products.
- Exxon began using a “whimsical” cartoon tiger for gasoline promotion in 1959 and federally registered its tiger mark in 1965 for petroleum products; the registration became incontestable in 1970.
- In 1968, Kellogg communicated with Exxon in a manner acknowledging Exxon’s tiger use while seeking to avoid opposition to Kellogg’s foreign filing.
- Exxon later emphasized its “Exxon” corporate name in advertising and, for a period, substantially reduced use of the cartoon tiger, at times favoring a live tiger image.
- In the early 1990s, Exxon reintroduced the cartoon tiger and extended its use beyond fuel to food and beverage items sold through Exxon convenience stores.
- In 1996, Kellogg sued alleging that Exxon’s renewed and expanded tiger use in connection with food and beverages infringed and diluted Kellogg’s marks and constituted unfair competition.
- The district court granted Exxon summary judgment, ruling (among other things) that Kellogg had acquiesced, that dilution failed, and that abandonment presented no triable issue.

## Issues

1. Whether Kellogg’s claims were barred as a matter of law by acquiescence and related delay defenses, given Exxon’s historical tiger use for gasoline and its later use for convenience-store food and beverages.
2. Whether genuine disputes of material fact existed on Exxon’s alleged abandonment of rights in the cartoon tiger mark (nonuse plus intent not to resume).
3. Whether Kellogg’s dilution claim was improperly dismissed at summary judgment.
4. Whether the record required a factfinder to assess likelihood of confusion, including in light of progressive encroachment into food-related goods and marketing channels.

## Decision

- The Sixth Circuit reversed the grant of summary judgment for Exxon and remanded for further proceedings.
- The court held summary judgment was improper on acquiescence because Exxon’s later use on food and beverage items raised fact questions under progressive encroachment and market-specific analysis.
- The court held the abandonment theory could not be resolved on summary judgment because intent to resume use, especially amid changed advertising practices and later revival, presented factual disputes.
- The court reinstated the dilution claim, concluding that fame and dilution effects from Exxon’s later, closer-market use were fact-dependent.
- The court indicated that likelihood of confusion required a fuller analysis tied to Exxon’s challenged uses and the parties’ proximity in goods and trade channels.

## Legal Principles

- Acquiescence and laches in trademark cases are assessed in context; tolerance of use in a noncompeting field may not bar suit when the defendant later moves into closer competition.
- Progressive encroachment may delay accrual of delay-based defenses; the actionable threat can arise when the defendant’s use expands into the plaintiff’s market or materially increases competitive harm.
- Lanham Act abandonment requires nonuse plus intent not to resume; intent commonly turns on fact disputes not suited to summary judgment where evidence conflicts.
- Dilution claims by a famous mark owner may proceed when a defendant’s later use in related consumer contexts could lessen distinctiveness even without proof of confusion.
- Likelihood of confusion ordinarily requires a multi-factor, record-specific inquiry; similarity of character marks and convergence of goods and marketing channels can create triable issues.

## Conclusion

The Sixth Circuit set aside summary judgment because the record permitted competing findings on whether Kellogg’s delay defenses applied after Exxon expanded its tiger into food-related uses, whether Exxon abandoned the cartoon tiger, and whether Exxon’s later uses could dilute or confuse in markets closer to Kellogg’s.


Kellogg Co. v. Exxon Corp., 209 F.3d 562 (6th Cir. 2000)