October 25 Reading Notes
Federal Trademark Registration:
Requirements are that the mark must be used in interstate commerce; the mark must
be distinctive; and the mark must not be barred from registration (same rules apply for
protection of an unregistered trademark against infringement
Validity comes from registration or distinctive use in interstate commerce
Federal registration initially provides prima facie evidence of validity; after five years of
continuous registration and use, federal registration provides conclusive evidence of
Any person who believes that he would be damaged by registration of the mark can file
for an opposition within thirty days of the mark’s publication
For Intent to Use apps, if the mark is not successfully opposed, then the applicant
receives a notice of allowance. Within six months of the notice of allowance, the
applicant must establish use of the mark in interstate commerce.
The trademark owner must maintain the mark and continue to use the mark to maintain
If a mark has been registered and used continuously for five consecutive years, then the
mark is incontestable and can be challenged only if the mark is generic or the mark is a
collective mark that is not being properly used.
Supplemental Registration can be sought for descriptive marks or surnames that might
not meet the distinctiveness standard required for the principal register. Allows the
trademark owner to sue in federal court for trademark infringement but provides none
of the evidentiary advantages of registration on the principal register, such as
presumptions of validity or constructive notice, and does not allow the owner to stop
unauthorized importation of the mark.
Mountain Top Beverage Group Inc. v. Wildlife Brewing N.B., Inc.
Plaintiff had not yet contracted with a brewer to produce a Wildcat product at the time
the SOU was filed, and the brewer with whom Skinner companies were in contact could
not even quote a price yet let alone have produced a shipment of the actual brew
The shipment of sample packaging alone before the product is in existence is insufficient
and was held to not even constitute a token use
Until they are in actual existence the mark had not been used
The talismanic test for use in commerce remains whether or not the use was sufficiently
public to identify or distinguish the marked goods in an appropriate segment of the
public mind as those of the adopter of the mark.
Kellogg Company v. Toucan Golf, Inc.
Kellogg’s trademarks consists of a simplistic toucan design, drawn with an exaggerated,
striped beak, standing in profile with hands on hips and smiling; another version of the
same toucan, standing and smiling with his mouth open widely, and pointing his left index finger upward; A shaded drawing of Toucan Sam flying, with wings spread, and
smiling; Kellogg’s marks are for use in the breakfast cereal industry, and on clothing
TGI likewise uses a toucan drawing, known as “GolfBird” or “Lady GolfBird,” to represent
its products; has a multi-colored body, and TGI displays GolfBird in a myriad of color
schemes for different purposes. She has a long, narrow, yellow beak with a black tip, not
disproportionate to or unlike that of a real toucan. GolfBird is always seen perched upon
a golf iron as if it were a tree branch. She has no human features whatsoever, and
resembles a real toucan in all aspects except, perhaps, her variable body coloring.
The court found that confusion was highly unlikely, principally because Kellogg is in the
business of selling cereal, whereas TGI is in the business of selling putters.
Likelihood of confusion is based on: the strength of the plaintiff’s mark, the relatedness
of the goods or services offered by the parties, similarity of the marks, any evidence of
actual confusion, the marketing channels used by the parties, the probable degree of
purchaser care and sophistication, the defendant’s intent, the likelihood of either party
expanding its product line using the marks
The “Toucan Sam” word mark is fanciful. Toucan Sam’s unique shape, coloring, size, and
demeanor are entirely the creation of Kellogg, and not reminiscent of anything seen in
the wild. Therefore, as a logo, he is also a fanciful mark and distinctive.
94% of Americans recognize Toucan Sam, and 81% of children who recognize him
correspond him with Froot Loops. Have extensive records detailing the massive amount
of time, money, and effort expended in regard to the marketing of Toucan Sam and
Kellogg is the largest cereal maker in the world, Froot Loops is one of is best-selling
cereals, and Toucan Sam has appeared in every print and television advertisement for
Froot Loops since 1963 enough to establish that Toucan Sam is visually recognizable by
an overwhelming cross-section of American consumers.
If the parties compete directly, confusion is likely if the marks are sufficiently similar. If
the goods and services are somewhat related, but not competitive, then the likelihood
of confusion will turn on other factors. If the products are unrelated, confusion is highly
TGI has never sold any merchandise unrelated to golf
Kellogg is primarily a producer of breakfast cereal but has branched off from cereal and
sold products in other industries on a limited basis. It has also at time licensed its name
and characters to outside companies.
Kellogg presented a catalog wherein it offers for sale golf balls and golf shirts on which is
imprinted the picture of Toucan Sam
Kellogg 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,
The golf balls and shirts are available on a limited basis and the commercial is an
advertisement for Froot Loops, not golf equipment
No consumer would associate Kellogg with top-line golf equipment based on Kellogg’s
extremely limited licensing of its characters on novelty items. If any consumers ever did associate Kellogg and Toucan Sam with golf based on the
1982 commercial, it is highly unlikely that they would still do so twenty years after the
advertisement last aired
The Toucan Sam and Toucan Gold word marks are similar only in that they each contain
the common word “toucan.” Although the name Toucan Sam is itself fanciful and
distinctive, use of the word toucan for cereal is merely arbitrary. A arbitrary mark is