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Excerpts of Appellant’s Reply Brief, Kellogg v. Toucan Golf
RESPONSE TO STATEMENT OF ISSUES AND FACTS.
TGI claims to summarize facts that are “undisputed.” TGI is wrong. Not only are its characterizations of the factual record erroneous, but, as discussed below, many are highly misleading. In
particular, TGI erroneously asserts that Kellogg “did not present any new evidence to the District
Court.” See Brief of TGI (“TGI's Brief”) at 2
Kellogg's 37 years of sales success, advertising and promotion of its FROOT LOOPS(R) cereal
has inculcated multiple generations with the name and image of TOUCAN SAM(R). See Kellogg's Brief, §IV.B. 1. Ignoring these facts, TGI asserts that the “TOUCAN SAM Design Mark
finds fame only among kids.” TGI's Brief at 10. But even the District Court, in ruling that the
TOUCAN Marks are famous, did not limit their fame to children. (See R.80 Opinion at 5-6, Apx.
pp. 47-48) TGI also argues that Kellogg presented no evidence at trial that the TOUCAN SAM
word mark is famous among adults. See TGI's Brief at 10. TGI is wrong.
First, as noted above, Kellogg's nearly four decades of sales and promotion of its TOUCAN
marks amply establish their fame. Second, at trial, Kellogg presented evidence of a 1997 “Cartoon Q Rating” study which included a nationally representative sample of adults, and was projectable to a national population. (See PX 4 at K019709, K019714-15, Apx. pp. 466, 471-472)
The survey found that 94 percent of adults, ages 18 to 49, were familiar with the character
TOUCAN SAM, even without being shown the TOUCAN Design. (See PX 4 at K019709,
K019741, Apx. pp. 466, 498) Thus, the record is undisputed that Kellogg's TOUCAN SAM
word mark is famous among the U.S. general adult population.
The foregoing discussion also exposes TGI's erroneous assertion, noted above, that Kellogg presented no new evidence before the District Court. Neither the “Cartoon Q Rating” study discussed above, nor the character study establishing 94 percent recognition of the TOUCAN Design mark (see Kellogg's Brief at 7-8), were before the TTAB (see TTAB Opinion at 3). Thus,
Kellogg presented the District Court with substantial new evidence of the broad and significant
scope of the fame of TOUCAN SAM.
Kellogg's Brief outlined extensive evidence of use of the TOUCAN Marks on (and with) many
different types of non-food products and items. These have included premium items promoted on
Kellogg cereal packaging, in advertising, and in retail stores since 1963, and Kellogg's licensed
products sold through the mail, in catalogs and at retail stores since at least 1988. Thus, Kellogg
established that consumers have been exposed to Kellogg's TOUCAN Marks on non-food items,
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products and promotions, and in multiple other non-food contexts.
TGI fails to address the fact that Kellogg has used its TOUCAN Marks on premium items for 37
years, and only parrots the District Court's finding that a number of Kellogg's catalogs featuring
its licensed items have been sales “incentive” catalogs. See TGI's Brief at 9. But TGI fails to note
that (1) Kellogg has distributed these catalogs not only to its salesforce and retail customers, but
also to consumers who request such catalogs from Kellogg; (2) since the mid-1990s, 15,000 to
20,000 of these catalogs have been distributed annually; and (3) Kellogg mass-mailed onequarter million catalogs to the general public in 1998. See Kellogg's Brief at 12.
Indeed, TGI again misleadingly asserts that Kellogg's licensed products, in addition to being sold
through catalogs, “are also sold in Battle Creek at the Kellogg museum and at a store known as
Classic Logos, and nowhere else.” TGI Brief at 9; emphasis added. But as identified in Kellogg's
Brief, Kellogg markets licensed goods featuring its TOUCAN Marks to the general public
through national retail chains such as Sam's Club, K Mart, Lillian Vernon and Wal-Mart. Additionally, Classic Logos generates sales of Kellogg-related merchandise through nationwide mailers and via an 800 telephone-number. See Kellogg's Brief at 13-14. Finally, TOUCAN SAM has
been featured on the Kellogg-sponsored car participating in NASCAR races throughout the nation, and on toy car replicas and other merchandise sold at those NASCAR races. (See Herdman
TR I at 35-40, Apx. pp. 68-73)
The above discussion further dispels TGI's erroneous claim that Kellogg presented no new evidence in the District Court. Kellogg submitted catalogs from the early 1990s, and from 1996 to
1999. Kellogg also established that (1) from about 1995 to the present, up to 20,000 such catalogs were distributed annually; (2) it mass-mailed one-quarter million of its “Kellogg's Gifts and
Collectibles” catalog directly to consumers in 1998; and (3) its licensed goods featuring the
TOUCAN Marks are marketed through national mass-merchandising chains such as Wal-Mart.
None of the foregoing evidence was before the TTAB. See TTAB Opinion at 7-8.
It is undisputed that Kellogg's TOUCAN Design was first used in the golf-related product market
prior to TGI's existence. See Kellogg's Brief at 11, 13 (establishing that Kellogg has licensed and
used its TOUCAN Design mark on golf balls since prior to 1994). TGI also does not dispute that
Kellogg has used its TOUCAN Design on golf-shirts since at least 1996. (See Hartung Depo.
Exh. 5, Apx. p. 345)
While admitting that Kellogg's TOUCAN Design mark has been used on golf shirts and golf
balls, TGI erroneously asserts that Kellogg's “TOUCAN SAM word mark has never been used
as such.” TGI Brief at 9; emphasis added. But Kellogg used the TOUCAN SAM word mark in
conjunction with the TOUCAN Design mark on golf balls in the 1998 catalog that was massmailed to the general public, in another catalog in 1999, and at the Classic Logos store during the
1990s as well. (See Hartung Depo. Exhs. 8 and 9, Apx. pp. 367, 395; Church TR II at 131-133,
Apx. pp. 119-121; PX 28, Apx. p. 675
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Kellogg's factual summary of TGI's business, and of TGI's limited use, promotion and sale of
products bearing its TOUCAN GOLD word mark and Cartoon Toucan Design marks is virtually
undisputed by TGI. Nevertheless, several assertions made by TGI should be addressed.
First, TGI claims that “[t]he TOUCAN GOLD mark was registered for golf clubs and golf putters.” TGI is mistaken. Kellogg timely opposed TGI's application to register that mark and the
propriety of that application is before this Court. See Kellogg's Brief §IV.A.
Second, the following facts set out in Kellogg's Brief and supported with trial record citations
(see id. §§IV.B.4.-5.) are undisputed and/or unrefuted by TGI:
• TGI offers golf-related products for sale directly to the public, and not just for corporate promotional purposes;
• TGI has used “Toucan Golf” as a trade name, as a product identifier and on promotional materials;
• TGI has used “Toucan” alone as a mark for mallet putters and other products;
• TGI's clubs featuring both the TOUCAN GOLD word mark and a toucan design mark have
been made available for sale to the public at trade shows and on the internet;
• TGI has used a colorful toucan design image with a vertically striped beak on its golf club
heads in promotional materials; and
• TGI has featured its Cartoon Toucan Design-either the multicolored rendition or a depiction
without color-on its TOUCAN GOLD golf clubs, on promotional putters, on advertising and
promotional materials such as product sales brochures, catalogs and mailings, on signs that TGI
displays at trade shows, on its website, and on its letterhead, business cards, company signs and
building.
Evidence that TGI has used its Cartoon Toucan Design on, inter alia, clubs and putters, and offers those items for sale to the public, was not before the TTAB. Such evidence was presented
for the first time in the District Court, where it was established that TGI has used TOUCAN
GOLD, other “Toucan” word marks, and its Cartoon Toucan Design marks on golf-related products and a broad array of promotional materials
ARGUMENT
The District Court Erred On Likelihood of Confusion.
1. The District Court's Errors On The Fame Factor Require Reversal.
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Kellogg's Brief established that, under the closely analogous case of Recot, Inc. v. M.C. Becton,
the District Court's failure to accord the fame of Kellogg's TOUCAN Marks “full weight” and a
“dominant role” in its likelihood of confusion analysis requires reversal. In response, TGI claims
that the Recot differs from the case at bar, and that the District Court did consider the fame of
Kellogg's marks. Neither argument has merit.
TGI first claims that Recot establishes that “[fame alone cannot overwhelm the other DuPont factors as a matter of law.” TGI's Brief at 19-20. However, TGI omitted portions of that sentence
from its quote. The Federal Circuit actually stated that “[a]though fame alone cannot overwhelm
the other DuPont factors as a matter of law ..., fame deserves its full measure of weight in assessing likelihood of consumer confusion.” Recot, 214 F.3d at 1328; (language deleted by TGI
emphasized). TGI again mischaracterizes Recot when it claims that “Recot only overturned the
TTAB's decision where the TTAB wholly ‘discounted the fame of the FRITO-LAY mark.’ ”
TGI's Brief at 22; emphasis added. The word “wholly”, however, is not present in the Recot
opinion; it was inserted by TGI, and mischaracterizes the basis for the Federal Circuit's reversal
in that case. In Recot, the TTAB did not “wholly discount” the fame of the FRITO-LAY mark;
on the contrary, it “acknowledged that the fame of the Recot's mark was ‘unquestionably established.’ ” 214 F.3d at 1328. Indeed, the Federal Circuit ruled that the “[TTAB] erred when it limited the weight accorded to the fame of the FRITO-LAY mark.” Id.; emphasis added. Thus, under Recot, if the District Court merely “limited” the weight accorded the TOUCAN Marks, or as
noted above, failed to accord it “full weight” and a “dominant role” in its analysis, reversal is
warranted.
TGI argues that the District Court “considered” the fame of the TOUCAN Marks “in the context
of the cereal industry.” TGI's Brief at 20. But nowhere in its Opinion does the District Court
acknowledge the well-established legal principles articulated in Recot. The District Court also
does not refer to according the fame factor a “dominant” role, “full weight” or any “weight.” Indeed, in its concluding paragraph on likelihood of confusion, the District Court did not discuss
the fame of the TOUCAN Marks at all.
TGI's reliance on University of Notre Dame v. J.C. Gourmet Food Imports Co., 703 F.2d 1372
(Fed. Cir. 1983) is unavailing. First, Notre Dame does not undermine the legal principles established in Recot, relied upon by Kellogg here, and which the District Court failed to follow. Indeed, as the Recot court noted, Notre Dame stands only for the proposition that fame alone is insufficient to prove likelihood of confusion. Kellogg, however, does not argue that fame alone
proves likelihood of confusion, but only that it should be properly weighed in the analysis. Notre
Dame also found the record to be “devoid of evidence on which to base a finding of likelihood of
confusion.” 703 F.2d at 1374. As Kellogg's Brief established, the fame factor and all other applicable confusion factors favor Kellogg here. Notre Dame is also distinguishable because here Kellogg has intensively and expansively used its TOUCAN Marks in many food and non-food contexts, and because Kellogg submitted consumer survey evidence establishing the fame of its
mark among the general, adult population--not just among cereal consumers. No such evidence
was present in Notre Dame.
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2. TOUCAN SAM and TOUCAN GOLD Are Similar.
TGI concedes Kellogg's point that while marks must be compared in their entireties, “it may be
appropriate in certain circumstances to give more weight to a particular component of the mark.”
TGI's Brief at 24. TGI also does not dispute the legal principles outlined by Kellogg which are
used in determining whether a portion of a mark is the “dominant” feature. The District Court's
quote set forth in TGI's Brief at pages 24-25, however, fails to properly apply those principles.
See Kellogg's Brief §VI.B.3.
TGI also acknowledges that “it is an accepted principle that similarities weigh heavier than differences ...” (TGI's Brief at 25), and does not dispute that the District Court ignored this principle
in its similarity analysis.
TGI does argue that similarity should be analyzed by looking at the marks as a whole as they appear in a marketplace context. But here, that argument further strengthens Kellogg's position,
because both parties prominently feature cartoon toucan bird designs in their advertising, promotion and on their products. See Kellogg's Brief §IV.B..-3, 5. Thus, in context, the parties' word
marks are even more likely to convey the overall impression of a colorful toucan bird.
Indeed, while TGI attempts to focus the Court on the image purportedly conveyed by the “gold”
portion of the TOUCAN GOLD mark, it is undisputed that (1) “gold” is the second term in the
mark, (2) “gold” is a common, laudatory term, and (3) it was selected by TGI to describe high
quality, and not as some distinctive element of the mark. Indeed, the most distinctive element of
each mark is “toucan”, which bears no relationship to either of the goods at issue. Thus, TGI
must concede, as it does, that at least one effect of TOUCAN GOLD mark is the bringing to
mind “the image of a toucan.” TGI's Brief at 28. TGI also claims that the “image of gold, or the
image of both commingled into some unique abstract image” are possibilities; but a “toucan” is
not a “mineral” or a “piece of jewelry”, and it defies common sense to assert that the dominant,
overall impression of both marks is anything other than a similar toucan image.
The Relatedness of the Goods Factor.
In an oversimplified analysis that mirrors the flawed assessment of the District Court, TGI argues that golf-related products and cereal are unrelated, and that therefore such “unrelatedness of
the markets is ... conclusive that there is no likelihood of confusion on this factor.” TGI's Brief at
31. Like the District Court, TGI failed to assess relatedness by evaluating whether consumers
might reasonably believe that TGI's golf-related items emanate from Kellogg, that Kellogg sponsors the goods, or that Kellogg licenses its mark for such use. TGI also failed to discuss or distinguish the highly analogous case, Recot v. M.C. Becton, cited by Kellogg, and similarly ignored
multiple authorities cited by Kellogg which found a likelihood of confusion between marks used
on different products and services (see Kellogg's Brief at 38-39).
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Like the District Court, TGI dismisses Kellogg's licensing program on the grounds that it the
program allegedly is designed to “promote its cereal product, or exploit the affinity which its
consumers might have with the company's spokescharacter.” But TGI fails to dispute the wellsettled rule that the parties' intent is not relevant to assessing whether or not “relatedness” impacts consumer perceptions. See Kellogg's Brief at 40-41. Indeed, TGI simply ignores Kellogg's
argument that the use of the TOUCAN Marks on myriad collateral products conditions consumers to expect a wide array of seemingly unrelated products to come from or be sponsored by Kellogg. See Kellogg's Brief at 41-43.
TGI's heavy reliance on Daddy's Junky Music Stores v. Big Daddy's Family Music Center, 109
F.3d 275 (6th Cir. 1997) is misplaced for several reasons. First, Daddy's Junky Music embraces
the principle that “[s]ervices and goods are related not because they coexist in the same broad
industry, but are related if the services are marketed and consumed such that buyers are likely to
believe that the services, similarly marked, come from the same source, or are somehow connected with or sponsored by a common company.” 109 F.3d at 283; quotations omitted. Here,
Kellogg's use of its TOUCAN Marks on collateral goods, including golf balls and other golfrelated items, has conditioned consumers to expect a wide range of products to be sponsored,
promoted or affiliated with the company.
Second, Daddy's Junky Music did not involve a plaintiff's mark which, due to 37 years of unparalleled sales success, advertising and promotion, is the subject of an ever-expanding corporate
licensing program involving, among other methods of distribution, a mass-mailing of one-quarter
million catalogs and sales through mass-merchandisers such as Wal-Mart. Indeed, this case is
much closer to Conan Properties, Inc. v. Conan's Pizza, Inc., 752 F.2d 145, 150 (5th Cir. 1985)
and Jaguar Cars, Ltd. v. Skandrani, 771 F.Supp. 1178, 1184 (S.D.Fla. 1991), which were cited
by Kellogg in its Brief, but ignored by TGI.
Finally, even under the relatedness analysis set out in Daddy's Junky Music, Kellogg's use of its
TOUCAN Marks on golf balls and other golf-related items is at least “somewhat related” to
TGI's use of TOUCAN GOLD on golf-related items. Additionally, Kellogg's use of its TOUCAN Marks on its cereal products is also somewhat related to TGI's use of TOUCAN GOLD in
the sense that TGI solicits Kellogg competitors, such as Quaker Oats and General Mills, in an
effort to place their name and logo on its clubs. See Kellogg's Brief at 17. Obviously, the combination of a cereal company's name on a club along with use of a mark that is very similar to a
famous Kellogg mark increases the likelihood that a consumer observing the club would “connect” it to Kellogg.
.
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