Kellogg Co v. Toucan Golf

• Court: Court of Appeals for the Sixth Circuit
• Decided: July 23, 2003
• Docket: 01-2394
• Status: Published

Opinion

RECOMMENDED FOR FULL-TEXT PUBLICATION Pursuant to Sixth Circuit Rule 206 2 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394 ELECTRONIC CITATION: 2003 FED App. 0241P (6th Cir.) File Name: 03a0241p.06 for Appellant. Gerard Mantese, MANTESE & ASSOCIATES, Troy, Michigan, for Appellee. ON BRIEF: Daniel S. Mason, Christopher T. Micheletti, ZELLE, UNITED STATES COURT OF APPEALS HOFMANN, VOELBEL, MASON & GETTE, San Francisco, California, for Appellant. Gerard Mantese, FOR THE SIXTH CIRCUIT MANTESE & ASSOCIATES, Troy, Michigan, John J. _________________ Conway, Detroit, Michigan, for Appellee.

X _________________ Plaintiff-Appellant, - KELLOGG COMPANY,

- OPINION - _________________ - No. 01-2394 v. , > SUHRHEINRICH, Circuit Judge. Plaintiff-Appellant - Kellogg Company appeals from the district court’s TOUCAN GOLF, INC., Defendant-Appellee. - affirmation of the Trademark Trial and Appeal Board’s N (TTAB) decision to permit the registration of the word mark “Toucan Gold” by Defendant-Appellee Toucan Golf, Inc. Appeal from the United States District Court (TGI), a manufacturer of promotional golf equipment. for the Western District of Michigan at Kalamazoo. No. 99-00091—Wendell A. Miles, District Judge. Kellogg claims that TGI’s word mark and its corresponding toucan logo create a likelihood of confusion with, and dilute Argued: May 6, 2003 the distinctiveness of, Kellogg’s five federally-registered and incontestable “Toucan Sam” logos and word mark under the Decided and Filed: July 23, 2003 Lanham Act as amended, 15 U.S.C. §§ 1051, et seq. We affirm the decision of the district court and deny Before: SUHRHEINRICH and COLE, Circuit Judges; Kellogg’s claims. TGI’s use of the word mark “Toucan CARR, District Judge.* Gold” does not create a likelihood of confusion among _________________ consumers, principally because TGI’s use of its mark is in an industry far removed from that of Kellogg. Also, TGI’s COUNSEL toucan logo, as a realistic toucan design, does not create a likelihood of confusion with Kellogg’s more cartoonish ARGUED: Daniel S. Mason, ZELLE, HOFMANN, “Toucan Sam” designs. Furthermore, Kellogg has not VOELBEL, MASON & GETTE, San Francisco, California, presented any evidence that TGI’s use of its marks actually dilutes the fame or distinctiveness of any of Kellogg’s marks.

* The Honorable James G. Carr, United States District Judge for the Northern District of Ohio, sitting by designation.

1 No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 3 4 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394

I. Facts Kellogg, a Delaware corporation based in Battle Creek, Michigan, is the largest producer of breakfast cereal in the world. On July 24, 1963, Kellogg first introduced Toucan Sam on boxes of “Froot Loops” cereal. Kellogg has used Toucan Sam on Froot Loops boxes, and in every print and television advertisement for the cereal, since. Toucan Sam is an anthropomorphic cartoon toucan. He is short and stout and walks upright. He is nearly always smiling with a pleasant and cheery demeanor, but looking nothing similar to a real toucan. He has a royal and powder blue body and an elongated and oversized striped beak, colored shades of orange, red, pink, and black. He has human features, such as The second mark was registered March 20, 1984, under fingers and toes, and only exhibits his wings while flying. USPTO Reg. No. 1,270,940, and consists of an updated Moreover, in television advertisements over the past forty version of the same toucan, standing and smiling with his years, Toucan Sam has been given a voice. He speaks with mouth open widely; and pointing his left index finger a British accent, allowing him to fervently sing the praises of upward: the cereal he represents, and to entice several generations of children to “follow his nose” because “it always knows” where to find the Froot Loops. Kellogg is the holder of five federally-registered Toucan Sam marks at issue in this case. The first was registered on August 18, 1964, under United States Patent and Trademark Office1 (USPTO) Reg. No. 775,496, and consists of a simplistic toucan design, drawn with an exaggerated, striped beak, standing in profile with hands on hips and smiling, as reproduced below:

The third mark is for the word mark, “Toucan Sam.” This mark was registered on June 18, 1985, under USPTO Reg. No. 1,343,023. The fourth mark, registered on June 21, 1994, under USPTO Reg. No. 1,840,746, is a shaded drawing of Toucan Sam flying, with wings spread, and smiling. 1 In 1964, the USPTO was known as the United States Patent Office. No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 5 6 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394

TGI likewise uses a toucan drawing, known as “GolfBird” or “Lady GolfBird,” to represent its products. TGI has placed this logo on letterhead, business cards, its web site, and even on the outside of its building in Mansfield. GolfBird has a multi-colored body, and TGI displays GolfBird in a myriad of color schemes for different purposes. Invariably, however, 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 The fifth mark, registered January 31, 1995, under USPTO variable body coloring: Reg. No. 1,876,803, is essentially the same drawing as in the fourth mark, except unshaded, as reproduced below:

TGI has not registered its GolfBird logo with the USPTO. On December 15, 1994, however, TGI did file an “intent to Together the five registrations indicate that Kellogg’s marks use” application with the USPTO for the word mark “Toucan are for use in the breakfast cereal industry, and on clothing. Gold.” The application, as later amended, sought to use the mark in relation to “golf clubs and golf putters.” Specifically, In 1994, Peter Boyko created TGI, an Ohio corporation TGI planned to use the mark for its newest line of putters with its principal place of business in Mansfield, Ohio, with which consist of a putter head on a Boron Graphite shaft. On his wife, Janice Boyko, and daughter. TGI is a manufacturer August 29, 1995, the USPTO published TGI’s application for of golf equipment, mainly putter heads. TGI creates putter opposition. Kellogg filed an opposition with the TTAB, heads from polycarbonate plastics, purchases shafts and grips asserting that TGI’s proposed use of the mark “Toucan Gold” from outside sources, and then assembles and sells the for golf-related merchandise infringed upon Kellogg’s putters. Principally, TGI’s clientele consists of companies Toucan Sam marks under the Lanham Act by creating a who use TGI’s goods as promotional gifts at charity events. likelihood of consumer confusion. On May 19, 1999, the For this purpose, TGI prints the name or logo of its client on TTAB dismissed the opposition without testimony. the putter head or other piece of equipment being sold. TGI rarely, if ever, sells directly to retailers or the public. On July 16, 1999, Kellogg appealed the TTAB decision to the district court below, and commenced a de novo review No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 7 8 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394

under 15 U.S.C. § 1071(b). In its complaint, Kellogg again v. Zurko, 527 U.S. 150, 164 (1999). Kellogg has chosen the claimed that TGI’s use of the word mark “Toucan Gold” latter route. created a likelihood of confusion among consumers with respect to Kellogg’s Toucan Sam word mark. Kellogg added We review the district court’s legal conclusions de novo; a likelihood of confusion claim with respect to the GolfBird but review its factual conclusions for clear error. See logo as well. Furthermore, Kellogg added a dilution claim McLaughlin v. Holt Pub. Schs. Bd. of Educ., 320 F.3d 663, under the Federal Trademark Dilution Act of 1995 (FTDA). 669 (6th Cir. 2003). See 15 U.S.C. §§ 1063 and 1125(c). On September 6, 2001, after a four day bench trial, the district court dismissed III. Analysis Kellogg’s complaint. The judgment was then entered on September 10. The court found that confusion was highly Essentially, Kellogg seeks to block the registration of the unlikely, principally because Kellogg is in the business of “Toucan Gold” word mark, and to prevent further selling cereal, whereas TGI is in the business of selling commercial use of both the word mark and the GolfBird logo. putters. Moreover, the court found no dilution because the To this end, Kellogg asserts that there is a Lanham Act parties’ marks are “visually and verbally distinct.” Kellogg violation because there exists a likelihood that consumers will filed a notice of appeal on October 4, 2001, and this matter is be confused as to the source of TGI’s products. Moreover, timely before this Court pursuant to Fed. R. App. P. Kellogg asserts that, regardless of our confusion analysis, 4(a)(1)(A). TGI’s use of its marks dilutes the fame of Kellogg’s marks, and therefore TGI is in violation of the FTDA. II. Standard of Review and Jurisdiction A. Likelihood of Confusion The TTAB “may refuse to register a trademark that so resembles a registered mark ‘as to be likely, when used on or In order to show trademark infringement under the Lanham in connection with the goods of the applicant, to cause Act, and that TGI is not entitled to registration, Kellogg must confusion, or to cause mistake, or to deceive.’” Recot, Inc. v. show that TGI’s use of its marks constitutes use “in Becton, 214 F.3d 1322, 1326 (Fed. Cir. 2000) (quoting 15 commerce” of a “reproduction, counterfeit, copy, or colorable U.S.C. § 1052(d)). imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or The federal courts have jurisdiction over appeals from the services on or in connection with which such use is likely to TTAB. A party who lost before the TTAB may appeal the cause confusion, or to cause mistake, or to deceive . . . .” 15 decision to the United States Court of Appeals for the Federal U.S.C. § 1114(1); see also Taubman Co. v. Webfeats, 319 Circuit under a “substantial evidence” standard of review. F.3d 770, 774 (6th Cir. 2003). See, e.g., In re Thrifty, Inc., 274 F.3d 1349, 1350 (Fed. Cir. 2001). Otherwise, a party may appeal the TTAB decision, to This Court has established an eight-part test for be reviewed de novo, to the United States District Court in determining when a likelihood of confusion exists between any district where venue is proper. 15 U.S.C. § 1071(b)(1). the origins of two products. Therma-Scan, Inc. v. A disappointed party may present new evidence before the Thermoscan, Inc., 295 F.3d 623, 629-30 (6th Cir. 2002); district court that was not presented to the TTAB. Dickinson Daddy’s Junky Music Store, Inc. v. Big Daddy’s Family Music Center, 109 F.3d 275, 280 (6th Cir. 1997); Frisch’s Restaurants, Inc. v. Elby’s Big Boy, Inc., 670 F.2d 642, 648 No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 9 10 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394

(6th Cir. 1982). The factors are: (1) the strength of the (4th Cir. 1941) (giving as other examples of fanciful marks plaintiff’s mark; (2) the relatedness of the goods or services “Aunt Jemima” and “Rolls Royce”); cf. Aunt Jemima Mills offered by the parties; (3) similarity of the marks; (4) any Co. v. Rigney & Co., 247 F. 407, 409 (2d Cir. 1917). evidence of actual confusion; (5) the marketing channels used by the parties; (6) the probable degree of purchaser care and We find the “Toucan Sam” word mark and logo each to be sophistication; (7) the defendant’s intent; and (8) the fanciful. Kellogg completely created the name “Toucan likelihood of either party expanding its product line using the Sam.” Kellogg also completely fabricated Toucan Sam’s marks. Therma-Scan, 295 F.3d at 630; Daddy’s Junky Music logo design. He does not resemble a real toucan. His unique Stores, 109 F.3d at 280; Frisch’s Restaurants, 670 F.2d at shape, coloring, size, and demeanor are entirely the creation 648. Not all of these factors will be relevant in every case, of Kellogg, and not reminiscent of anything seen in the wild. and “[t]he ultimate question remains whether relevant Therefore, as a logo, he is also a fanciful mark and consumers are likely to believe that the products or services distinctive. offered by the parties are affiliated in some way.” Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 In further support of the strength of its Toucan Sam marks, F.2d 1100, 1107 (6th Cir. 1991). Thus, the question here, as Kellogg has submitted survey information indicating that in all trademark cases, is whether we believe consumers of 94% of Americans recognize Toucan Sam, and 81% of TGI’s golf equipment are likely to think it was manufactured children who recognize him correspond him with Froot by Kellogg. See, e.g., Taubman Co., 319 F.3d at 776 (stating Loops. Moreover, Kellogg has submitted extensive records that the only relevant question is whether there is confusion detailing the massive amount of time, money, and effort as to the origin of the respective products) (citing Daddy’s expended in regard to the marketing of Toucan Sam and Junky Music Stores, 109 F.3d at 280). None of the factors is Froot Loops. We need not delve into Kellogg’s records; we dispositive, but the factors guide us in our ultimate find the fact that Kellogg is the largest cereal maker in the determination. See Landham v. Lewis Galoob Toys, Inc., 227 world, that Froot Loops is one of its best selling cereals, and F.3d 619, 627 (6th Cir. 2000). that Toucan Sam has appeared in every print and television advertisement for Froot Loops since 1963 enough to establish 1. Strength of Kellogg’s Marks that Toucan Sam is visually recognizable by an overwhelming cross-section of American consumers. The first factor of the test focuses on the distinctiveness of Coupling that with his distinctiveness, Toucan Sam is a very a mark and the public’s ability to recognize it. See Therma- strong mark. Scan, 295 F.3d at 631. In Daddy’s Junky Music Stores, we recognized a spectrum of distinctiveness for trademarks, 2. Relatedness of the Products ranging from “generic” to “fanciful.” Daddy’s Junky Music Stores, 109 F.3d at 280-81. For example, the word “cereal” In consideration of the second factor, we must examine the is generic, whereas the names “Xerox” and “Kodak” are relatedness of the goods and services offered by each party. fanciful, having been completely fabricated by the trademark We have established three benchmarks regarding the holders. See Eastman Kodak Co. v. Weil, 137 Misc. 506, 243 relatedness of parties’ goods and services. First, if the parties N.Y.S. 319 (1930); see also Armstrong Cork Co. v. World compete directly, confusion is likely if the marks are Carpets, Inc., 597 F.2d 496, 505 (5th Cir. 1979); Arrow sufficiently similar; second, if the goods and services are Distilleries, Inc. v. Globe Brewing Co., 117 F.2d 347, 349 somewhat related, but not competitive, then the likelihood of No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 11 12 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394

confusion will turn on other factors; finally, if the products trademark law is grounded on a likelihood of confusion are unrelated, confusion is highly unlikely. Therma-Scan, standard. We find that no consumer would associate Kellogg 295 F.3d at 632; Daddy’s Junky Music Stores, 109 F.3d at with top-line golf equipment based on Kellogg’s extremely 282. limited licensing of its characters on novelty items. We also believe that if any consumers ever did associate Kellogg and TGI makes golf equipment, mainly putter heads. TGI also Toucan Sam with golf based on the 1982 commercial, it is sells bag tags, divot tools, and full sets of clubs, but has never highly unlikely that they would still do so twenty years after sold any merchandise unrelated to golf. the advertisement last aired. We find the parties’ products completely unrelated. And under the benchmarks established Kellogg is primarily a producer of breakfast cereal, but has in this Circuit, the second factor therefore supports a branched off from cereal and sold products in other industries conclusion that confusion is not likely to occur. See Therma- on a limited basis. It has also at times licensed its name and Scan, 295 F.3d at 632 (stating that confusion is highly characters to outside companies. Kellogg asserts before this unlikely where goods are completely unrelated). Court that it has sufficiently entered the golf equipment industry. In support of this claim, Kellogg presents a catalog, 3. Similarity of the Marks wherein it offers for sale golf balls and golf shirts on which is imprinted the picture of Toucan Sam. Moreover, Kellogg Kellogg argues that it can prove a likelihood of confusion has presented a mass-marketed 1982 animated television notwithstanding the unrelatedness of the goods. It has advertisement wherein Toucan Sam is portrayed soliciting his presented several cases to demonstrate that courts have held Froot Loops on a golf course, and interacting with a golf- for trademark owners relying heavily on the similarity of the playing bear. Kellogg claims these materials indicate that the marks, even where the parties’ goods were in different Toucan Sam marks are related not only to the manufacture of product markets. See, e.g., Recot, 214 F.3d at 1328 (finding breakfast cereal, but to the golf equipment industry as well. likelihood of confusion between “Frito Lay” and “Fido Lay” even though one is used for snack chips and one is used for However, Kellogg, although it is the largest producer of dog food); Hunt Foods & Indus., Inc. v. Gerson Stewart breakfast cereal nationally, has not presented evidence that its Corp., 367 F.2d 431, 435 (C.C.P.A. 1966) (holding “Hunt’s” golf “equipment” has been marketed nationally. The golf for canned goods and “Hunt” for cleaning products balls and shirts are available on a limited basis, either through confusingly similar); American Sugar Refining Co. v. the aforementioned catalog— which is not widely Andreassen, 296 F.2d 783, 784 (C.C.P.A. 1961) (finding distributed— or through select local theme stores, such as “Domino” for sugar and “Domino” for pet food confusingly Kellogg’s own “Cereal City” in Battle Creek, Michigan. similar); Yale Elec. Corp. v. Robertson, 26 F.2d 972, 974 (2d Moreover, the commercial in which Toucan Sam plays golf Cir. 1928) (finding “Yale” for flashlights and locks is nonetheless an advertisement for Froot Loops, not golf confusingly similar); Quality Inns Int’l, Inc. v. McDonald’s equipment. The district court found that Kellogg’s presence Corp., 695 F. Supp. 198, 221-22 (D. Md. 1988) (finding in the golf industry was insignificant, and nothing more than similarity between “McSleep Inn” and McDonald’s’ a marketing tool to further boost sales of its cereal. We trademarks); John Walker & Sons, Ltd. v. Bethea, 305 F. agree. We find that one thirty second advertisement does not Supp. 1302, 1307-08 (D.S.C. 1969) (finding “Johnnie render Toucan Sam a golfer, nor does a novelty catalog make Walker” whiskey and “Johnny Walker” hotels confusingly Kellogg a player in the golfing industry. In any event, similar). But each of these cases is distinguishable. In some No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 13 14 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394

of the cases cited by Kellogg, the courts did find that the when it is an everyday name or thing mismatched to the goods were related. See, e.g., Recot, 214 F.3d at 1328 product it represents, such as “Camel” for cigarettes or (finding that some snack chip makers might also make dog “Apple” for computers). As opposed to a fanciful mark, an food); Hunt Foods, 367 F.2d at 434 (finding a relationship arbitrary mark is distinctive only within its product market between the respective products); American Sugar Refining and entitled to little or no protection outside of that area. See, Co., 296 F.2d at 784 (finding goods related because both are e.g., Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 260 sold at grocery stores); Yale Elec. Corp., 26 F.2d at 974 (5th Cir. 1980) (implying that plaintiff’s arbitrary term (finding locks and flashlights related because “the trade has “Domino” is entitled to no protection outside of the sugar and so classed them”). In the other cases cited by Kellogg, the condiments market). Thus, unlike the Recot, John Walker & names, as well as other marks, were either not only similar, Sons, and Quality Inns cases, here TGI has not used any but substantially identical, see John Walker & Sons, 305 F. distinctive portion of Kellogg’s word mark at all. Supp. at 1307-08 (comparing “Johnnie Walker” whiskey to Admittedly, we would have a far different case had TGI “Johnny Walker” hotels and finding infringement where attempted to use a mark such as “Toucan Sam Gold” for its defendant also used same color scheme and same script); or line of products, because the “Toucan Sam” word mark, in its the similar portion of the senior mark was both famous and entirety, is fanciful and likely transcends its market in the fanciful, and thus so distinctive that its use would transcend same way “Frito Lay” and the “Mc” prefix do. Cf. Recot, 214 its market.2 Cf. Recot, 214 F.3d at 1328 (stating that “Frito F.3d at 1328; Quality Inns, 695 F.Supp. at 216-21. Kellogg Lay” word mark “casts a ‘long shadow which competitors has not cornered the market on all potential uses of the must avoid’”) (citations omitted); Quality Inns, 695 F. Supp. common bird name “toucan” in commerce, only on uses of at 216-21 (intimating that the prefix mark “Mc” used by “Toucan Sam.” In regard to the word marks, TGI’s McDonald’s is highly distinctive in regard to anything but apparently similar use is therefore not enough to overcome surnames). the unrelatedness of the goods. But here, the parties’ goods are completely unrelated, and As for the logos, the actual Toucan Sam design is fanciful. the “Toucan Sam” and “Toucan Gold” word marks are Hence, in step with cases like Recot, if TGI’s GolfBird is similar only in that they each contain the common word similar to Toucan Sam’s design, there may be a Lanham Act “toucan.” Although the name “Toucan Sam” is itself fanciful violation in spite of the unrelated goods. But we find and distinctive, use of the word “toucan” for cereal is merely GolfBird dissimilar to Toucan Sam. GolfBird resembles a arbitrary. Kellogg has taken an everyday word and applied it real toucan. She has the look and proportions of a toucan that to a setting where it is not naturally placed. See, e.g., one would encounter in the wild. Toucan Sam is Daddy’s Junky Music Stores, 109 F.3d at 280-81 (recognizing anthropomorphic, with a discolored, misshaped beak. His distinctiveness spectrum and stating that a mark is arbitrary 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. 2 It is also of note that in each of the cases cited by Kellogg, the infringed upon trademark was the actual name of the senior user’s product. Here, Kellogg claims that TGI has infringed only upon the name of a character that represents Kellogg’s product. This would again be a different case if TGI had named itself “Froot Loops Golf” or some derivative thereof. No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 15 16 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394

4. The Other Confusion Factors Lastly, there is no evidence to suggest that TGI has any desire to enter the cereal game, or that Kellogg has any plan The other five factors can be disposed of quickly. Kellogg to begin manufacturing golf equipment on a full-scale basis. has presented no evidence of actual customer confusion. As stated above, we do not believe Kellogg’s limited Thus, we need not consider that factor. licensing of golf balls and golf shirts with a Toucan Sam logo, nor the single 1982 advertisement wherein Toucan Sam The parties do not use similar avenues of commerce. parades around a golf course, announces Kellogg’s entry into Kellogg distributes Froot Loops through regular wholesale the golf market, or its intention to do so. and retail channels. Kellogg advertises its product nationally on television and in print. Conversely, TGI distributes its Accordingly, we find no likelihood of confusion between product primarily at trade shows and over the internet. TGI TGI’s use of its marks— the word mark “Toucan Gold” and does not sell its golf equipment via retail outlets or advertise its GolfBird logo; and Kellogg’s marks— the word mark on television or radio. Cf. Hunt Foods, 367 F.2d at 435 “Toucan Sam” and the Toucan Sam design. In fact, the only (finding same channels of commerce because both goods are of the eight factors we find in favor of Kellogg is the strength sold at grocery stores); American Sugar Refining Co., 296 of its marks. The products sold by each party are wholly F.2d at 784 (stating same). unrelated; the similarity between the word marks or the bird designs is not enough to overcome this unrelatedness; and TGI’s clientele is primarily, and almost exclusively, TGI’s clientele is not the sort to believe that Kellogg now comprised of corporations and wealthy golfers.3 We find manufactures golf clubs. We affirm the decision of the each of these groups to be sufficiently sophisticated, so as not district court and find no likelihood of confusion. to believe that Kellogg, a cereal company, has manufactured a golf club named “Toucan Gold.” Moreover, we find the B. Dilution two industries sufficiently separate, so that there will rarely, if ever, exist a consumer who is looking for Kellogg’s Kellogg also raises claims of trademark dilution under the product in the golf equipment market. FTDA of 1995. The FTDA amended § 43 of the Lanham Act to include a remedy for “dilution of famous marks.” 15 Next, there is no evidence to suggest that Boyko chose his U.S.C. § 1125. “Dilution” is defined as “the lessening of the toucan marks in order to dishonestly trade on Kellogg’s capacity of a famous mark to identify and distinguish goods marks. Again, the goods are so unrelated as to dispose of this and services.” FTDA § 4, 15 U.S.C. § 1127. Kellogg factor with little discussion. Boyko testified that he chose the believes that TGI’s marks dilute the fame of the Toucan Sam name “toucan” because of any bird’s obvious connection to marks, and that Kellogg may oppose TGI’s marks on that the game of golf, as evidenced through golfing terms such as ground and obtain relief under the FTDA. The district court “eagle,” “birdie,” and “albatross.” The district court found rejected Kellogg’s argument. his testimony on this issue credible, and Kellogg has presented no evidence to cause us to doubt that Boyko’s Dilution law, unlike traditional trademark infringement intent was not dishonorable. law, does not exist to protect the public. It is not based on a likelihood of confusion standard, but only exists to protect the quasi-property rights a holder has in maintaining the integrity 3 and distinctiveness of his mark. See Moseley v. V Secret A set of Toucan Gold clubs costs $1500. No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 17 18 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394

Catalogue, Inc., 123 S.Ct. 1115, 1122 (2003); see also FTDA 1997— after TGI started business— wherein it determined § 4, 15 U.S.C. § 1127. We have developed a five part test to that 94% of adults likewise recognized Toucan Sam. Kellogg determine whether dilution has occurred under the FTDA: the has failed to present evidence that any segment of the senior mark must be (1) famous; and (2) distinctive. Use of population recognizes Toucan Sam as the spokesbird only for the junior mark must (3) be in commerce; (4) have begun Froot Loops in lesser numbers than it did before TGI started subsequent to the senior mark becoming famous; and using its toucan marks. Accordingly, we affirm the decision (5) cause dilution of the distinctive quality of the senior mark. of the district court and deny Kellogg’s FTDA claims. See, e.g., Kellogg Co. v. Exxon Corp., 209 F.3d 562, 577 (6th Cir. 2000). Kellogg asks this Court for a remand on this issue in light of the fact that the Supreme Court decided Moseley and The first four factors are not in dispute and require no clarified the dilution standard after the briefing stage in this discussion. The only factor before this Court is whether TGI case. Kellogg believes it is entitled to the opportunity to has diluted Kellogg’s Toucan Sam marks. The Supreme present empirical evidence of actual dilution before the Court has held that, under the plain language of the FTDA, district court. We find a remand inappropriate. In Moseley, for a plaintiff to show dilution, he must demonstrate actual the Supreme Court provided a stricter standard for proving dilution, and not merely the likelihood of dilution. Moseley, dilution than the likelihood of dilution standard that was 123 S.Ct. at 1124. previously employed by this Court. See V Secret Catalogue, Inc. v. Moseley, 259 F.3d 464 (6th Cir. 2001), rev’d, 123 The plaintiff need not show actual loss of sales or profit, S.Ct. 1115 (2003). We find Kellogg’s proffered empirical but the mere fact that customers might see the junior mark evidence insufficient even to meet the lesser standard. and associate it with a famous mark does not establish dilution. Id. at 1124. In Moseley, the defendant created a IV. Attorney’s Fees and Sanctions lingerie shop called “Victor’s Little Secret.” The owners of the more famous lingerie-related mark “Victoria’s Secret” TGI has brought a separate motion for sanctions and sued under the FTDA. The Supreme Court held that the attorney’s fees. Under § 35(a) of the Lanham Act, the plaintiff’s claim failed, even though it presented evidence that prevailing party may recover attorney’s fees in “exceptional consumers had associated the two marks. The plaintiff did cases.” 15 U.S.C. § 1117(a). TGI did not raise its claim not present any empirical evidence that consumers no longer below, but instead raises this issue for the first time on clearly understood to which products the “Victoria’s Secret” appeal. We have made clear in the past that the award of mark was related, and thus failed to demonstrate the attorney’s fees under § 35(a) is at the discretion of the district “lessening of the capacity of the Victoria’s Secret mark to court alone. U.S. Structures, Inc. v. J.P. Structures, Inc., 130 identify and distinguish goods or services sold in Victoria’s F.3d 1185, 1191-92 (6th Cir. 1997). Having not raised the Secret stores or advertised in its catalogs.” Id. at 1125. issue with the district court, TGI’s § 35 claim is waived. See Likewise, here, Kellogg has presented no evidence that TGI’s also Paccar, Inc. v. Telescan Technologies, L.L.C., 319 F.3d use of its toucan marks has caused consumers no longer to 243, 258 (6th Cir. 2003). recognize that Toucan Sam represents only Froot Loops. In fact, Kellogg’s own 1991 study indicated that 94% of TGI also moves for “just damages” under Fed. R. App. P. children recognize Toucan Sam and 81% of children relate 38. That rule provides: him to Froot Loops. Kellogg performed another study in No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 19

If a court of appeals determines that an appeal is frivolous, it may, after a separately filed motion or notice from the court and reasonable opportunity to respond award just damages and single or double costs to the appellee. TGI’s argument that Kellogg’s appeal is frivolous is based solely on the contention that Kellogg’s arguments on appeal “mirror its arguments to the TTAB and the district court— and both tribunals rejected Kellogg’s arguments as untenable.” Brief for Respondent, at 55. However, the fact that Kellogg has repeated the same argument that failed below does not necessarily render that argument frivolous. Kellogg has aggressively sought to protect its marks over the years. See, e.g., Exxon Corp., 209 F.3d 562; Kellogg Co. v. Pack ’Em Enters., Inc., 951 F.2d 330 (Fed. Cir. 1991); Kellogg Co. v. Western Family Foods, Inc., 1980 WL 39054, 209 U.S.P.Q. 440 (Trademark Tr. & App. Bd. Dec. 22, 1980); see also Bruce Walkley, Toucan Sam’s Cereal Killer, SYDNEY MORNING HERALD (Australia), July 27, 1999, at 3 (recounting Kellogg’s complaints against a company making fruit juice). And it has challenged smaller entities even where it is likely that no trademark infringement claim exists. See, e.g., Sylvia Wieland Nogaki, Seattle Band Throws Kellogg for a Loop, SEATTLE TIMES, Mar. 10, 1995, at A1 (describing Kellogg’s battle with a small Seattle music band over the name “Toucans”). But although many of Kellogg’s claims against smaller companies may border on excessive and arguably warrant sanctions, the Supreme Court decision in Moseley, setting forth and changing the standards for trademark dilution in this Circuit, was not entered until after briefs were filed in this appeal. Therefore, we find sanctions under Fed. R. App. P. 38 inappropriate in this instance. V. Conclusion For the foregoing reasons, we AFFIRM the decision of the district court.