There are more than 40 species of toucan in the world, featuring a diversity of sizes, feather patterns, and beak colorations. But the Kellogg Company, maker of children’s breakfast cereal Froot Loops, thinks that it owns the sole right to use toucans in commerce — any kind of toucan, no matter what it looks like. In fact, Kellogg’s believes that they are the only company allowed to even use the brand name “toucan”, or anything that even kind of vaguely sounds like “toucan.”
The latest victim of Kellogg’s trademark overreach is the Maya Archaeology Initiative (MAI), a nonprofit that defends and promotes the study of indigenous Maya culture. Kellogg’s is opposing registration of MAI’s logo, claiming that its inclusion of a toucan is an illegal infringement on Kellogg’s Toucan Sam character.
The Maya Archaeology Initiative’s logo features a stylized keel-billed toucan in front of a Mayan pyramid.
In contrast, the Froot Loops mascot, Toucan Sam, is an anthropomorphic blue bird that has no immediately recognizable analog in nature, except possibly some kind of dodo bird/blueberry hybrid. The only toucan species that Toucan Sam bears even a plausible resemblance to is the plate-billed mountain toucan, which is a different genus all together from the more commonly depicted toco toucan or keel-billed toucan. Literally the only thing Toucan Sam has in common with the MAI’s logo is that in both cases the bird depicted is intended to be some kind of toucan.
Nevertheless, Kellogg’s has filed a Notice of Opposition to MAI’s registration of its toucan-and-pyramid logo, alleging that
Applicant’s TOUCAN BIRD DESIGN mark so resembles Opposer’s TOUCAN marks as to be likely, when applied to the goods of Opposer, including Opposer’s wide range of licensed goods, including clothing, to cause confusion or mistake or to deceive purchasers resulting in damage and detriment of Opposer and its reputation. In this regard, it should be noted that Opposer’s TOUCAN SAM Marks are frequently displayed in connection with depictions of a jungle theme including Mayan temples and surrounding vegetation. Thus, use of the Mayan pyramid in the Applicant’s TOUCAN BIRD DESIGNS is likely to further strengthen the public’s connection of Applicant’s design with Opposer’s famous TOUCAN equities.
Kellogg’s isn’t just claiming that it owns toucans. It especially owns toucans displayed in Mayan temples and vegetation!
In a July 19, 2011 letter to MAI, prior to filing its Notice of Opposition,
Kellogg corporate counsel David Herdman wrote: “Because the applied for goods of your client’s application are in the clothing category and Kellogg has extensively licensed our TOUCAN SAM character for the exact goods, we are concerned about both consumer confusion and a dilution of our strong equity in these marks.”
The Kellogg letter also said the company is concerned that the initiative’s logo uses Mayan imagery, “given that our character is frequently depicted in that setting.”
Kellogg’s does not really have any particular beef with MAI — and given the amount of publicity this attack has received, I would guess that Kellogg’s is regretting ever picking this fight. But MAI is only the latest target in Kellogg’s two decade history of groundlessly prosecuting any toucan that is used to sell something other than Froot Loops. Here is a very incomplete list of other trademarks that Toucan Sam has threatened or initigated legal action against, alleging that the marks would mislead consumers into believing the goods were related to Froot Loops:
- GrowTech, Inc., a pruning and shearers manufacturer:
- Toucan International:
- Fruitiki Fruit Bars:
- Jungle Joy, energy bars and drinks:
- TwoCan Talk:
- U Toucan Paint, Acrylic and watercolor lessons:
- The SnakHut:
- Family Dollar Stores of Michigan, Inc.:
- Amazona’s Rainforest Products:
- Johnny Cakes:
- Toucan Industries, Inc., maker of accessories (wallets, handbags, backpacks, and luggage):
- Tucan Coffee Estates and Roasters, Ltd.:
- Toucan Willie’s Restaurant and Bar:
- Coco Loco Espresso:
- U-Too-Can, maker of children’s toys:
- Toucan Markers, writing utensils:
- The Daiquiri Factory:
- Pacific Packaging Concepts:
- Toucan Charlie’s, restaurant:
- Oroverde Energy Drinks:
- Tampico Beverages, fruit-flavored beverages:
- Tukaiz Communications, prerecorded children’s music:
- Tucan Tina’s, Restaurant services:
- The Toucan Bar and Grill:
- Tucan Farms:
- Dos Hombres, Inc., restaurant services:
- Island Spring:
- Toucan’s Sportz Bar & Grill:
- The Toucan, Ltd., Bar and Grill:
- Basic, leather goods:
- Riegel Textile Corporation:
- Toucan, Computer Hardware (workmark)
- Toucan, Cordaire & Partners Company Inc. (workmark)
- TÜKHAN athletic apparel (wordmark)
- Tucano Urbano, motorcycle padlocks (wordmark)
- Toucan Treasures, game machines (wordmark)
- Tukan Tukan, distilled spirits (wordmark)
- Schucan, general foods (wordmark)
- Toucan, scanners (wordmark)
- Caffe Toucano, Inc., coffee (wordmark)
- Toucan Toes, candy variety (wordmark)
- Toucon Mon, clothing (wordmark)
- Toucan Chocolates (wordmark)
- Toucan’s Place, Inc. (wordmark)
- The Toucans, a Seattle-based steel drum band
- Green Jellÿ, a comedy rock band that satirically featured Toucan Sam on an album cover
Not one of the above design or wordmarks would appear to be genuine potential infringement upon Toucan Sam, or any of Kellogg’s other Froot Loops associated marks. The above marks feature toucans (or even just rhyme with the word toucan) — but the similarities end there.
This is not to say that some of Kellog’s trademark prosecutions have not been perfectly legitimate. For instance, the logo for Froot’s Really Good Smoothies features a toucan that looks nothing like Sam. But the combination of ‘Froot’ and a toucan could genuinely invoke thoughts of Froot Loops in consumers’ minds.
And TwoCan Partners, LLC, a restaurant services company, has an image that also bears at least a superficial resemblance to Toucan Sam.
Other than those two, however, none of the challenged marks look as if they may really be infringements under the Lanham Act. And yet, the overwhelming majority of the above marks were abandoned by their owners when threatened with litigation by Kellogg’s. In short, Kellogg’s has improperly used the trademark system to artificially ensure that almost every logo with a toucan in it belongs to Kellogg’s.
But legally, Kellogg’s doesn’t have a leg to stand on. When Kellogg’s picks these fights, it is not relying on the accuracy of its reading of the law, but rather it is counting on its size and entrenched legal resources to outweigh the strength of its opponents legal arguments. Even though legal precedent is solidly against it, Kellogg’s has, for two decades, maintained a steady persecution of all other businesses whose names or logos reference members of family Ramphastidae.
That Kellogg’s legal arguments are bunk is not mere speculation. The Sixth Circuit has already held that Kellogg’s overreaching claims of infringement are legally unsupported. In 2003, Kellogg’s tried to block a trademark registration by Toucan Golf, a golfing equipment company. The court found that Kellogg’s opposition to the rival toucan mark was unjustified, as “confusion [between the marks] was highly unlikely, principally because Kellogg is in the business of selling cereal, whereas TGI is in the business of selling putters.” Kellogg Co. v. Toucan Golf, Inc., 337 F.3d 616, 620 (6th Cir. 2003). The court did agree that Kellogg’s had “establish[ed] that Toucan Sam is visually recognizable by an overwhelming cross-section of American consumers. Coupling that with his distinctiveness, Toucan Sam is a very strong mark.” But then Kellog tried to argue that its toucan mark went so far as to encompass golf equipment, on the basis of a 1982 commercial:
Kellogg asserts before this Court that it has sufficiently entered the golf equipment industry. In support of this claim, Kellogg presents a catalog, wherein it offers for sale golf balls and golf shirts on which is imprinted the picture of Toucan Sam. Moreover, Kellogg has presented a mass-marketed 1982 animated television advertisement wherein Toucan Sam is portrayed soliciting his Froot Loops on a golf course, and interacting with a golf-playing bear. Kellogg claims these materials indicate that the Toucan Sam marks are related not only to the manufacture of breakfast cereal, but to the golf equipment industry as well.
The court promptly told Kellogg to STFU: “Kellogg has not cornered the market on all potential uses of the common bird name ‘toucan’ in commerce, only on uses of ‘Toucan Sam.'”
Not only are other uses of the wordmark ‘toucan’ not a likely source of confusion for Froot Loops, but there is also no Lanham Act violation where another product happens to have a design mark with a toucan in it. The Sixth Circuit held, with respect to the GolfBird logo,
“GolfBird resembles a real toucan. She has the look and proportions of a toucan that one would encounter in the wild. Toucan Sam is anthropomorphic, with a discolored, misshaped beak. His body type is not the same as that of a real toucan; and he smiles and has several other human features. We therefore find no similarity between Toucan Sam and GolfBird.”
Everything from the Toucan Golf case sounds extremely familiar to Kellogg’s current claims against MAI, in which Kellogg asserts that the Mayan imagery of the MAI logo increases the confusion, because Toucan Sam frequently appears with Mayan imagery. As with the claims in Toucan Golf that Toucan Sam is associaterd with golf clubs, Kellogg’s claims that Toucan Sam is associated by consumers with Mayan imagery are nothing more than invented bullshit. Worse still, the only “Mayan imagery” Toucan Sam has ever walked in front of is fairly offensive:
[MAI’s attorney, Mott] said she had looked at Kellogg’s websites in an effort to explore this claim. The only imagery she could find that was even “vaguely Mayan,” she said, was on the Froot Loops site, which includes a number of “Adventure” games set in various locales. Generic pyramids do appear in one of those, she noted (this one), but there doesn’t appear to be anything distinctively Mayan about them. (Unless the Mayans put Froot Loops on their pyramids, I think she has to be right. Even if they did, that might pose other problems for Kellogg’s claim.) Worse, the only quasi-Maya depicted there is not depicted favorably:
“Disturbingly, the villain in this Kellogg Adventure and its related games — and the only character who is of color [other than the birds] — is a ‘witch doctor’ with a cackling screech. Apparently, he is supposed to be a Maya. At best, this is culturally insensitive. I would characterize it as a demeaning caricature of an advanced and ancient civilization about which your game developers know nothing.”
Kellogg then promptly removed the video, saying “As a company long committed to diversity and inclusion and responsible marketing, Kellogg takes this concern very seriously.” Niiiice, Kellogg’s. Way to rely on the old “I’m-sorry-if-you-were-offended” non-apology, for explaining your use of witch doctors in children’s advertising.
Sadly, despite the baselessness of Kellogg’s claims, MAI has little choice but to attempt to settle with Kellogg’s, and relinquish its legal right to continued use of its logo. That’s because actually defending against Kellogg’s frivolous claims will easily cost north of $25,000, which is a lot for a tiny non-profit to spend on defending a principle. Even though Kellogg’s claims are legally and factually unsupportable, it will probably succeed in forcing MAI to stand down.
Looking over Kellogg’s trademark prosecution record, the only conclusion one can draw is that Kellogg’s attorneys are a bunch of bullies. Moreover, Kellogg’s longstanding pattern of abuse and intimidation when it comes to trademark litigation demonstrates that it is a company policy to prosecute all other uses of toucan in commerce, regardless of the fact that a circuit court has already soundly rejected their fanciful claims to the contrary. But despite Kellogg’s trigger happy litigation tactics, Kellogg’s indisputably does not have a right to exclude all others from using depictions of toucans in commerce — and Kellogg’s attempts to enforce such a nonexistent right ought to get them sanctioned by the court the next time they are dumb enough to try and bring a Toucan Sam infringement claim to trial.
Update: As of November 4, 2011, Kellogg’s withdrew its opposition to the trademark. Apparently once its scare tactic proved ineffective, Kellogg’s was not willing to try out the strength of its claims on the merits.
Why can’t MAI use any of this information as grounds for summary dismissal of the suit?
They can — eventually.
The problem is the costs associated with taking the case even that far. Most of the marks listed above were voluntarily withdrawn by the applicants once Kellogg’s indicated its intention to oppose, likely because the applicants lacked the resources to take on the fight.
For instance, in the Kellogg Company v. Toucan Golf case discussed above, Toucan Golf originally filed for its trademark in 1994. Kellogg then began to launch a series of oppositions and appeals, losing at every step of the way, until eventually, in 2003, having the Sixth Circuit affirm the decisions against Kellogg. That is almost a decade of litigation — and it is exceedingly unlikely that, for any non-multinational corporation, such a fight to defend a mark would ever be financially worthwhile.
Kellogg’s is obviously very experienced with the mass filing of oppositions, and has an assembly line for this kind of proceeding; each Notice of Opposition they file is essentially a form copy, with a few tweaks and details added in. So the marginal costs for each trademark opposition by Kellogg’s is relatively small, while the cost to a small and comparatively unsophisticated registrant to defend against the opposition is very high.
In short, MAI would be almost certain to win this fight on the merits. But, for a small non-profit like MAI, diverting a huge percentage of its resources in order to defend its right to use its preferred version of its logo might just not be a financially viable decision.
But what I don’t get is why it should have to go so far in the first place. Why can’t their attorney in the very first minutes of trial request dismissal of the suit citing the past rulings? Or is it that before it ever gets to trial there is a small fortune in legal costs responding to the complaint through letters and motions?
The latter. Trial is many months down the road. And before you get to that, you have to deal with discovery and motions practice. And even if you prevail before the TTAB, you have to deal with the possibility of appeal…
The whole scheme is designed to get the applicant to eventually think, “You know, do I *really* need to have an image of a toucan in my logo? Is it really worth all this headache an expense? Maybe I’ll just use a cockatoo instead….”
Hmmm well this is disappointing. I really wish there was some way that this kind of practice could become as risky for the claimant as the defendant. Like if a claim is made and the determination is that it is baseless, the claimant has to fully reimburse the defendant all losses and fees that are attributable to having to defend their application. Such losses to include estimated lost revenue that could have be received by using the mark had approval been granted with no such challenge. That or some kind of flag can be raised when a company garners a reputation for abusive actions like this. I don’t know, I hate bullies and have often taken a personal stand in opposing them. Thanks for taking the time to answer my questions. Keep up the good fight, someone has to.
I am the owner of Toucan Golf which is mentioned a few times in the above article and can offer my opinion that although the attorneys for Kelloggs knew they were not going to prevail they
let me know that Kellogg’s has deep pockets and that they were in those pockets for themselves.
They billed Kelloggs for hundreds of hours and were able to prostitute themselves for the sake of the enormous amount of billing that went into their pockets. The officers running Kelloggs didn’t much care as the money going out didn’t affect their paycheck, just a small portion of the bottom. Maybe somewhere down the line I will get my own money back when Hollywood decides to make movie about the way “some” unethical attorneys make a living. I’m also happy that my
decision to battle Kelloggs has paved the way for others wanting to use a Toucan.
Im the designer of an app game that has a mayan temple and so happens to have a cartoony toucan as a villain. Through researching toucan online I came across this link. my obvious question is will I have a problem with using a toucan in my game even though I will not trademark the toucan at this stage??
Well, from your IP, I take it you’re Australian, so the trademark laws will be different from what I’m used to, but your proposed use wouldn’t violate U.S. trademark laws (unless there are some relevant details about your game that you’re leaving out). And as long as you don’t try to register it, Kellogg’s isn’t going to take any action against it, justified or not.