Kellogg Company v. Toucan Golf, Inc.

Kellogg Company (plaintiff) held federal trademark registrations for its character Toucan Sam, a personified toucan bird that appeared on Fruit Loops cereal boxes and in all Fruit Loops print and television advertisements. Toucan Sam had a blue body and an oversized, multicolored striped beak. Toucan Sam appeared in a commercial soliciting Fruit Loops on a golf course, and Kellogg offered golf balls and golf shirts with Toucan Sam images. In 1994, Peter Boyko created Toucan Golf, Inc. (TGI) (defendant). TGI manufactured golf putter heads, sourced other putter components, and then assembled and sold completed putters. TGI used a toucan drawing, known as GolfBird or Lady GolfBird, to represent its products, featuring it on letterhead and business cards and on its website and building exterior. GolfBird had a multicolored body, which TGI varied for different purposes, but TGI mostly depicted GolfBird with a long, yellow beak with a black tip. GolfBird resembled an actual toucan bird except for the variable body coloring. In December 1994, TGI filed an intent-to-use trademark application with the United States Patent and Trademark Office (USPTO), seeking to register the word mark Toucan Gold for golf clubs and golf putters. Kellogg initiated an opposition proceeding with the USPTO’s Trademark Trial and Appeal Board (TTAB), asserting that TGI’s mark was likely to cause confusion with Kellogg’s Toucan Sam marks. The TTAB dismissed the opposition without testimony. Kellogg appealed to a federal district court, repeating its likelihood-of-confusion assertion by both reasserting its opposition to registration of TGI’s Toucan Gold mark and making a trademark-infringement claim to prevent TGI from using any of its toucan marks. Kellogg also added a claim under the Federal Trademark Dilution Act of 1995 (FTDA). After a bench trial, the district court dismissed Kellogg’s complaint, reasoning that confusion was unlikely due to dissimilarity in the parties’ products and that there was no dilution because the parties’ marks were “visually and verbally distinct.” Kellogg again appealed.