## Facts

- Kellogg Co. owned registered trademarks associated with “Toucan Sam,” a long-used cartoon toucan character identifying Froot Loops cereal and related promotions.
- Toucan Sam was depicted as an anthropomorphic, cartoonish bird with a blue body, an oversized multicolored striped beak, and human-like features; Kellogg also used the character in extensive advertising.
- Toucan Golf, Inc. (TGI) manufactured and sold golf putters and related golf equipment and used the word mark “Toucan Gold” and a toucan logo (“GolfBird/Lady GolfBird”).
- TGI’s logo depicted a more realistic toucan, typically with a long yellow beak and black tip, and appeared on TGI’s business materials, website, and building.
- In 1994, TGI filed an intent-to-use application to register “Toucan Gold” for golf clubs and putters.
- Kellogg opposed registration before the TTAB, alleging likelihood of confusion and dilution under the Lanham Act and the FTDA; the TTAB dismissed the opposition.
- Kellogg sought de novo review in federal district court under 15 U.S.C. § 1071(b) and pursued infringement/confusion and dilution claims to bar TGI’s use; after a bench trial, the district court ruled for TGI.
- Kellogg appealed; TGI sought attorneys’ fees and damages for an allegedly frivolous appeal.

## Issues

1. Whether TGI’s “Toucan Gold” word mark and toucan logo were likely to cause confusion with Kellogg’s “Toucan Sam” word and design marks under the Lanham Act.
2. Whether TGI’s use diluted the fame or distinctiveness of Kellogg’s marks under the FTDA.
3. Whether TGI was entitled to attorneys’ fees or damages based on Kellogg’s appeal.

## Decision

- The Sixth Circuit affirmed the district court’s judgment dismissing Kellogg’s claims.
- The court held there was no likelihood of confusion because the goods and markets were far apart, the marks were verbally and visually distinct, there was no persuasive evidence of actual confusion, and purchasers exercise greater care for golf equipment than for cereal.
- The court held Kellogg failed to prove dilution under the FTDA because it produced no evidence that TGI’s marks actually diluted the fame or distinctiveness of Kellogg’s marks.
- The court denied TGI’s requests for attorneys’ fees and damages; TGI waived its fee claim and the appeal was not deemed frivolous.

## Legal Principles

- A party dissatisfied with a TTAB decision may seek de novo review by civil action in district court under 15 U.S.C. § 1071(b).
- Likelihood of confusion in the Sixth Circuit is evaluated through a multi-factor analysis, including strength of the plaintiff’s mark, relatedness of the goods, similarity of the marks, evidence of actual confusion, marketing channels, purchaser care, defendant’s intent, and potential expansion.
- Even when a senior mark is strong, dissimilar products sold through distinct channels, coupled with meaningful differences in word marks and design elements, can defeat a confusion claim.
- Under the FTDA (as applied in this case), a plaintiff must show a famous mark and that the defendant’s use causes dilution of the mark’s distinctive quality; lack of evidence of actual dilution (or its equivalent) is fatal.
- A party seeking attorneys’ fees or appellate damages must properly preserve the request, and frivolousness requires more than an unsuccessful appeal.

## Conclusion

The Sixth Circuit held that Toucan-themed branding on golf putters (“Toucan Gold” with a realistic toucan logo) did not infringe or dilute Kellogg’s famous Toucan Sam cereal marks because the products and markets were remote, the marks were distinct in sight and sound, and Kellogg offered no evidence of actual dilution; TGI also received no fees or frivolous-appeal damages.


Kellogg Co. v. Toucan Golf, Inc., 337 F.3d 616 (6th Cir. 2003)