Kellogg Company v. Exxon Corporation

*The Honorable Denise Page Hood, United States District Judge for
the Eastern District of Michigan, sitting by designation.
1
RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit Rule 206
ELECTRONIC CITATION: 2000 FED App. 0123P (6th Cir.)
File Name: 00a0123p.06
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
_________________
KELLOGG C OMPANY ,
Plaintiff-Appellant/
Cross-Appellee,
v.
EXXON C ORPORATION ,
Defendant-Appellee/
Cross-Appellant.
;>

1
Nos. 98-6237/6360
Appeal from the United States District Court
for the Western District of Tennessee at Memphis.
No. 96-03070—Julia S. Gibbons, Chief District Judge.
Argued: September 14, 1999
Decided and Filed: April 6, 2000
Before: BATCHELDER and GILMAN, Circuit Judges;
HOOD,* District Judge.

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2 Kellogg Co. v. Exxon Corp. Nos. 98-6237/6360
_________________
COUNSEL
ARGUED: Daniel S. Mason, San Francisco, California, for
Appellant. Louis T. Pirkey, ARNOLD, WHITE & DURKEE,
Austin, Texas, for Appellee. ON BRIEF: Daniel S. Mason,
San Francisco, California, Grady M. Garrison, BAKER,
DONELSON, BEARMAN & CALDWELL, Memphis,
Tennessee, Christopher T. Micheletti, FURTH, FAHRNER
& MASON, San Francisco, California, for Appellant. Louis
T. Pirkey, Stephen P. Meleen, William G. Barber, ARNOLD,
WHITE & DURKEE, Austin, Texas, Buckner P. Wellford,
John J. Thomason, THOMASON, HENDRIX, HARVEY,
JOHNSON & MITCHELL, Memphis, Tennessee, Robert D.
Rippe, Jr., Charles A. Beach, EXXON CORPORATION,
Irving, Texas, Christopher T. Micheletti, FURTH, FAHRNER
& MASON, San Francisco, California, for Appellee.
_________________
OPINION
_________________
ALICE M. BATCHELDER, Circuit Judge. Plaintiff-
Appellant Kellogg Company appeals the district court’s order
granting summary judgment to Defendant-Appellee Exxon
Corporation on Kellogg’s complaint alleging federal and state
law claims of trademark infringement, false designation of
origin, false representation, dilution, and unfair competition.
Because we conclude that the district court erred in (1)
holding that Kellogg had acquiesced in Exxon’s use of the
challenged mark, (2) dismissing Kellogg’s dilution claim, and
(3) holding that no genuine issues of fact material to
Kellogg’s claim of abandonment remain for trial, we reverse
the judgment of the district court and remand the case for
further proceedings.
Nos. 98-6237/6360 Kellogg Co. v. Exxon Corp. 27
CONCLUSION
Accordingly, we REVERSE the judgment of the district
court granting summary judgment to Exxon on Kellogg’s
claims of infringement, dilution, and abandonment, we
VACATE the grant of summary judgment to Exxon on
Kellogg’s claimed grounds of progressive encroachment, and
REMAND the case for further proceedings consistent with
this opinion.

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26 Kellogg Co. v. Exxon Corp. Nos. 98-6237/6360
4The Tennessee statute controlling Kellogg’s state dilution claim
applies “notwithstanding the absence of competition between the parties
or the absence of confusion as to the source of goods or services.” TENN.
CODE A NN. § 47-25-512 (1998).
amended by the Federal Trademark Dilution Act of 1995,
states:
The term “dilution” means the lessening of the capacity
of a famous mark to identify and distinguish goods and
services, regardless of the presence or absence of -- (1)
competition between the owner of the famous mark and
other parties, or (2) likelihood of confusion, mistake or
deception.
15 U.S.C. § 1127 (emphasis added).4
The federal cause of action for dilution is found in 15
U.S.C. § 1125(c)(1). For a plaintiff to succeed on a federal
claim of dilution “(1) the senior mark must be famous; (2) it
must be distinctive; (3) the junior use must be a commercial
use in commerce; (4) it must begin after the senior mark has
become famous; and (5) it must cause dilution of the
distinctive quality of the senior mark.” Nabisco, Inc. v. PF
Brands, Inc., 191 F.3d 208, 215 (2d Cir. 1999); see also
Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d
633, No. 98-4217, 1999 WL 707786, at *5 (7th Cir. Sept. 13,
1999); Ringling Bros.-Barnum & Bailey Combined Shows,
Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 452 (4th Cir.
1999), cert. denied, 120 S.Ct. 286 (1999); I.P. Lund Trading
v. Kohler Co., 163 F.3d 27, 45-50 (1st Cir.1998); Panavision
Int'l v. Toeppen, 141 F.3d 1316, 1324 (9th Cir. 1998).
We hold that the district court’s dismissal of Kellogg’s
dilution claims was improper. Because we hold that Kellogg’s
infringement claim is not in fact barred by acquiescence, we
also hold that the district court’s dismissal of Kellogg’s bad
faith infringement claim was improper.
Nos. 98-6237/6360 Kellogg Co. v. Exxon Corp. 3
BACKGROUND
In 1952, Kellogg began using a cartoon tiger in connection
with “Kellogg’s Frosted Flakes” cereal and registered its
“Tony The Tiger” name and illustration in the United States
Patent and Trademark Office (“PTO”). Today, Kellogg owns
a number of federal trademark registrations for the name and
appearance of its “Tony The Tiger” trademark; those
trademark registrations cover, among other things, “cereal-
derived food product to be used as a breakfast food, snack
food or ingredient for making food.”
In 1959, Exxon began using a cartoon tiger to promote
motor fuel products, and in 1965, Exxon registered federally
its “Whimsical Tiger” for use in connection with the sale of
petroleum products. Exxon used its cartoon tiger in its “Put
A Tiger In Your Tank” advertising campaign, which ran
between 1964 and 1968. In 1968, Kellogg acknowledged
Exxon’s use of its cartoon tiger when it requested Exxon not
to oppose Kellogg’s application to register its “Tony The
Tiger” trademark in Germany. Exxon’s “Whimsical Tiger”
trademark, obtained with no opposition from Kellogg, became
incontestable in 1970.
In 1972, Exxon changed its name from Standard Oil
Company to Exxon Corporation and changed its primary
trademarks from “Esso,” “Enco”, and “Humble” to “Exxon.”
Exxon submitted into evidence numerous newspaper and
magazine articles and other promotional materials
demonstrating its extensive and costly advertising campaign
to promote its new “Exxon” mark using the cartoon tiger and
to launch its “Energy For A Strong America” campaign,
which ran in the latter half of the 1970s. For example, an
article in a 1973 issue of Advertising Age called Exxon’s
advertising campaign “the classic ‘name change’ campaign of
all time, with approximately $100,000,000 involved in the
face lift!” Harry Wayne McMahan, McMahan Picks the 100
Best TV Commercials of the Year, ADVERTISING AGE ,
Feb. 19, 1973.

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4 Kellogg Co. v. Exxon Corp. Nos. 98-6237/6360
In the early 1980s, Exxon’s advertising agency, McCann-
Erickson (“McCann”), suggested that Exxon phase out the use
of its cartoon tiger and begin using a live tiger, opining that
the cartoon tiger was too whimsical and, hence, inappropriate
in light of prevalent oil shortages. In 1981, Exxon began to
adopt a new look for its gas stations, implementing a program
to modernize the gas pumps and to eliminate its cartoon tiger
on the pump panels. At that time, Exxon had between 16,000
and 18,000 gas stations in the United States. Over 11,000 of
these gas stations were owned and operated by independent
distributors (“distributor stations”), and the rest were owned
and operated by Exxon (“company operated retail stores” or
“CORS”) or owned by Exxon and operated by independent
dealers (“dealer stations”). The modernization program to
bring about this “new look” entailed removal of the cartoon
tiger head design from the lower panels or “pump skirts” on
its Exxon “Extra” gasoline dispensers. In a letter dated
August 12, 1982, Exxon instructed its regional managers to
begin phasing out their use of the cartoon tiger:
The purpose of this memo is to communicate new
guidelines pertaining to the application of the Exxon
Tiger and the Exxon Emblem in all advertising, point-of-
sale material, Company publications, etc.
Exxon Tiger--Effective immediately, the use of the
cartoon tiger is to be discontinued.
Exxon explored possible ways to protect its cartoon tiger
trademark while shifting toward a live tiger. For example, a
1984 internal office memo suggested:
Since the only way to protect the Trademark is to use it,
it might be wise for us to explore ways that the Cartoon
Tiger can be used in marketing on a limited basis. This
is not a hot item, but one that we can’t forget about and
be embarrassed later.
A 1985 internal office memo, which listed the subject as
“Trademarks,” stated:
Nos. 98-6237/6360 Kellogg Co. v. Exxon Corp. 25
The district court held that Kellogg had failed to produce
evidence of nonuse—the only element of abandonment that
Exxon’s motion for summary judgment addressed—and that
Exxon was therefore entitled to summary judgment on
Kellogg’s abandonment claim. Our review of the record,
however, persuades us that there remain for trial genuine
issues of material fact with regard to whether Exxon’s use of
its cartoon tiger during the 1980s was bona fide or simply a
sham to protect its rights in the mark. Because we have held
as a matter of law that Kellogg did not acquiesce in Exxon’s
use of its cartoon tiger in connection with the sale of non-
petroleum products, Kellogg’s abandonment claim with
regard to Exxon’s affirmative defense of acquiescence is
moot. But because the abandonment claim may yet be
germane to the issues remaining for trial, we conclude that the
summary judgment in favor of Exxon on this claim must be
reversed.
C. Kellogg’s Remaining Claims
In granting Exxon’s motion for summary judgment, the
district court, in a footnote, dismissed Kellogg’s remaining
claims as moot:
The dismissal of Kellogg’s action renders moot the
following pending motions: Exxon’s renewed motion
for partial summary judgment on Kellogg’s state dilution
claim; Exxon’s motion for partial summary judgment on
Kellogg’s dilution by tarnishment claims; Exxon’s
motion for partial summary judgment on the issue of bad
faith; and Exxon’s motion for summary judgment on
Kellogg’s federal dilution claim.
The short shrift given to Kellogg’s dilution claims ignores
the fact that dilution rests on legal grounds entirely distinct
from the law governing infringement. In granting Exxon’s
motion for summary judgment, the district court held that the
connection between the products offered by Kellogg and
those offered by Exxon and the respective marketing channels
for those products were too attenuated for the parties to be
considered competitors. However, the Lanham Act, as

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24 Kellogg Co. v. Exxon Corp. Nos. 98-6237/6360
including acts of omission as well as commission, causes
the mark to become the generic name for the goods or
services on or in connection with which it is used or
otherwise to lose its significance as a mark. Purchaser
motivation shall not be a test for determining
abandonment under this paragraph.
15 U.S.C. § 1127.
In order for a party to succeed on a claim of abandonment,
it must prove the elements of both non-use and intent, i.e.,
that the other party actually abandoned its mark through non-
use and that it intended to do so. See United States Jaycees
v. Philadelphia Jaycees, 639 F.2d 134, 138 (3d Cir. 1981)
(“To establish the defense of abandonment it is necessary to
show not only acts indicating a practical abandonment, but an
actual intent to abandon.”) (internal quotation marks and
citation omitted); Citibank v. Citibanc Group, Inc., 724 F.2d
1540, 1545 (5th Cir. 1984) (citing Jaycees and holding that
abandonment requires a showing of non-use and intent to
abandon and that the claimant bears a high burden of proof);
Prudential Ins. Co., 694 F.2d at 1156 (same).
Kellogg argues that Exxon abandoned its “bona fide” use
of the cartoon tiger during the 1970s and 1980s, and that
Exxon therefore may not rely on its use of the cartoon tiger
mark prior to 1991—when Exxon reintroduced the tiger to
promote convenience store food and beverage sales—to
support its affirmative defenses to Kellogg’s infringement
claims. Kellogg asserts that even if Exxon presented
evidence to establish that its use of the cartoon tiger was fairly
continuous, albeit regionally limited, throughout the 1980s,
Exxon’s use of its cartoon tiger in the 1980s was not “bona
fide” but, rather, “made merely to reserve a right in [the]
mark.” 15 U.S.C. § 1127. See Exxon Corp. v. Humble
Exploration Co., Inc., 695 F.2d 96, 99-100 (5th Cir. 1983)
(recognizing that sham use of a trademark—one instituted
solely for the purposes of maintaining trademark rights—does
not qualify as a “bona fide” use under the statute).
Nos. 98-6237/6360 Kellogg Co. v. Exxon Corp. 5
Advertising discontinued use of the “Cartoon Tiger” in
all advertising, point-of-sale material and company
publications on August 12, 1982. Regions were advised
at that time to do the same (see letter attached). To my
knowledge, there has been no use of the “Cartoon Tiger”
by advertising or [in] the areas other than the tiger head
which appears on the pre-RID Trimline Exxon Extra
gasoline pumps/dispensers.
We have asked McCann to explore ways that the
“Cartoon Tiger” could be used to protect the mark. In
reviewing possible station applications, two general areas
seem to afford the most opportunities . . . .
This memo discussed possible strategic placement of cartoon
tiger decals around the pump islands and sales rooms/kiosks.
Other correspondence between Exxon’s attorneys, Exxon’s
marketing department, and McCann reveals Exxon’s efforts
to reduce its use of the cartoon tiger while ensuring trademark
protection. Exxon ultimately decided to use its cartoon tiger
as a graphic display on its stations’ pump toppers.
Many Exxon stations were slow to remove the cartoon tiger
from their pumps. In late 1985 and early 1986, Exxon was
using its cartoon tiger on pump toppers at approximately
2,500 gas stations. In 1987, Exxon photographed every
distributor station in the United States. Thousands of
photographs were taken and stored at Exxon, but most of
them were destroyed in a 1994 routine file room clean-up.
Based upon those photographs that remain, Exxon estimates
that approximately 10% of the 11,000 distributor stations still
displayed the cartoon tiger in 1987. In 1993, Exxon
contractually obligated its distributors to comply with the
modernization program and to convert their stations to the
“new look,” threatening to remove from the Exxon chain
those stations that failed to comply by April 1, 1995.
Exxon submitted evidence in an effort to show that, despite
its efforts to convert the look of its gas stations and shift
toward the use of a live tiger, its use of the cartoon tiger
throughout the 1980s was sufficient to maintain its rights in

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6 Kellogg Co. v. Exxon Corp. Nos. 98-6237/6360
the mark. In November 1985, Exxon had renewed its federal
trademark registration for its cartoon tiger; this renewal would
last an additional 20 years. From 1985 to 1990, some Exxon
stations used a costumed version of the cartoon tiger for
appearances at grand opening events and various promotional
activities. In late 1989 and again in 1993, Exxon ran a
promotion called “Color to Win,” in which over one million
contestants submitted entries of a cartoon tiger to hundreds of
Exxon stations. In the early 1990s, Exxon used its cartoon
tiger to promote the Texas State Fair. Exxon also presented
evidence showing that in 1973, an Exxon distributor in
Virginia placed a large statue of a cartoon tiger in front of its
gas station near the highway, and the statue remains there
today.
In the early 1990s, after the Exxon Valdez oil spill, Exxon
changed the appearance of its cartoon tiger, making it “more
endearing, warm, and friendly.” In the words of Exxon’s
principal artist, “Today’s tiger is now cast in a more
humanitarian role. He is polite to the elderly, plants trees for
ecology and has an overall concern for the environment.”
Exxon also began to expand the use of its cartoon tiger.
Although Exxon had opened its first company-operated
convenience store in 1984, it was not until the early 1990s
that Exxon began to use its cartoon tiger to promote the sale
in those stores of certain foods and beverages, such as
Domino’s Pizza, Coca Cola, Pepsi Cola, Lays Potato Chips,
and Dunkin Donuts. Exxon also began using its cartoon tiger
to promote its own private label beverage, “Wild Tiger,” and
its own private label coffee, “Bengal Traders.”
Exxon’s use of the cartoon tiger to promote food,
beverages, and convenience stores increased dramatically
from 1992 to 1996. In October 1992, Exxon had about eight
“Tiger Mart” stores; by October 1993, there were about 68
“Tiger Mart” stores; by October 1996, there were over 265
“Tiger Mart” stores.
On November 3, 1992, having learned of Exxon’s
reintroduction of its cartoon tiger in Canada and Argentina,
Nos. 98-6237/6360 Kellogg Co. v. Exxon Corp. 23
suit in the first place, and no infringing conduct in which the
plaintiff could have acquiesced. Put another way, if there is
sufficient similarity between the products and connection
between the marketing channels to start the clock running on
the defendant’s affirmative defense of acquiescence, then
there is sufficient similarity and connection to permit the
plaintiff to counter that defense with a showing of progressive
encroachment.
Here, we have found as a matter of law that Kellogg did not
acquiesce in Exxon’s use of the cartoon tiger. Because
progressive encroachment has relevance only to counter
Exxon’s claim of acquiescence, the district court erred in
treating progressive encroachment as a claim independent of
Exxon’s acquiescence defense. Therefore, we will vacate the
district court’s grant of summary judgment to Exxon with
regard to progressive encroachment; we note that the district
court need not engage in a progressive encroachment analysis
on remand.
B. Abandonment
In addition to its progressive encroachment claim, Kellogg
claimed that Exxon had abandoned the cartoon tiger mark.
Kellogg’s Complaint recites Exxon’s pending application to
register a service mark depicting the cartoon tiger, called
“Hungry Tiger & Design;” the Complaint raises as a separate
claim for relief that Exxon abandoned its use of the cartoon
tiger and demands a declaratory judgment to that effect.
Abandonment is defined in § 1127 of the Lanham Act:
A mark shall be deemed to be “abandoned” if either of
the following occurs: (1) When its use has been
discontinued with intent not to resume such use. Intent
not to resume may be inferred from circumstances.
Nonuse for 3 consecutive years shall be prima facie
evidence of abandonment. “Use” of a mark means the
bona fide use of such mark made in the ordinary course
of trade, and not made merely to reserve a right in a
mark. (2) When any course of conduct of the owner,

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22 Kellogg Co. v. Exxon Corp. Nos. 98-6237/6360
reverse the district court’s grant of summary judgment to
Exxon on the infringement claim and remand this matter for
trial on the merits of that claim.
We turn next to the district court’s conclusion, based
largely on the Prudential decision, that “direct competition”
was dispositive of Kellogg’s progressive encroachment claim:
Although Exxon has entered into the convenient market
food sales arena, Exxon has not become a manufacturer
or distributor of food items. Exxon’s “product” is a retail
convenience store engaged in the business of selling food
on the premises of gasoline service stations. Kellogg’s
“product” for the purposes of this case is cereal.
Although, Exxon may sell Kellogg’s cereal product in
the Tiger Mart or Tiger Express stores, this fact alone
does not establish that the parties are competitors in the
same or even a related market. Even if there is actual
confusion between the Kellogg and Exxon cartoon tiger
trademarks, connection between the parties’ products and
marketing channels for the sale of their products is too
attenuated to support Kellogg’s claim of progressive
encroachment.
Kellogg, 50 U.S.P.Q.2d at 1507. In ruling, without engaging
in any analysis of the likelihood of confusion, that progressive
encroachment requires “direct competition” of identical
products, the district court erred as a matter of law. The
district court held that (1) a plaintiff who failed to bring suit
when it first learned of the defendant’s infringing use of
plaintiff’s mark has acquiesced in the defendant’s infringing
use, but (2) the plaintiff does not have a meritorious claim of
progressive encroachment because the parties’ products are
dissimilar and the connection between their marketing
channels is attenuated. These two propositions are
fundamentally irreconcilable. If the second were true, there
could be no likelihood of confusion; without a likelihood of
confusion, the plaintiff would not have a provable claim of
infringement; in the absence of a provable claim of
infringement, there would be no basis for the plaintiff’s filing
Nos. 98-6237/6360 Kellogg Co. v. Exxon Corp. 7
Kellogg’s trademark counsel complained about that use in a
telephone conversation with an Exxon attorney and was
advised that Exxon had been using its cartoon tiger in the
United States as well. Kellogg immediately requested
examples of such use, and on November 20, 1992, Exxon sent
Kellogg a compilation of 14 examples of promotional
materials appearing in the United States featuring its cartoon
tiger. Not one of those examples disclosed Exxon’s use of its
cartoon tiger to promote food and beverage items or its new
“Tiger Mart” stores.
In 1993, Kellogg challenged Exxon’s use of the cartoon
tiger in Canada, and in 1994, filed a lawsuit against Exxon’s
Canadian affiliate. Kellogg was unsuccessful in its attempt to
negotiate a global settlement in 1994 and 1995. In March
1996, Exxon published for opposition its application to the
PTO to register its cartoon tiger for use with convenience
stores, and Kellogg commenced opposition proceedings. On
October 7, 1996, Kellogg filed suit against Exxon in the
United States District Court for the Western District of
Tennessee. Kellogg originally sought actual and punitive
damages derived from Exxon’s use of its cartoon tiger
trademark in connection with the sale of food items, as well
as a preliminary and permanent injunction to prohibit Exxon’s
continued use of its cartoon tiger in connection with the sale
of food items on the ground that it unlawfully infringed upon
and diluted Kellogg’s “Tony The Tiger” mark. Exxon moved
for summary judgment on the infringement claim based on its
affirmative defense of acquiescence, and for partial summary
judgment on Kellogg’s claims of abandonment and
progressive encroachment. The district court granted these
motions and, holding that its decision rendered all remaining
motions moot, dismissed Kellogg’s bad faith infringement
and dilution claims. See Kellogg Co. v. Exxon Corp., 50
U.S.P.Q.2d 1499, 1507 (W.D. Tenn. 1998).
Kellogg raises the following assignments of error on
appeal: (1) the district court improperly granted summary
judgment because Exxon presented no evidence that Kellogg
acquiesced in Exxon’s use of its cartoon tiger in connection

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8 Kellogg Co. v. Exxon Corp. Nos. 98-6237/6360
1Kellogg also sought declaratory relief pursuant to 28 U.S.C.
§§ 2201, 2202, requesting that Exxon be required to abandon with
prejudice its application for federal trademark registration of its “Hungry
Tiger & Design” mark. Exxon filed a counterclaim pursuant to 15 U.S.C.
§ 1119 for declaratory judgment of its right to register federally its
“Hungry Tiger & Design” mark, as well as its “Whimsical Tiger” and
“Tiger Express” marks, based on its intent to use those marks to promote
retail convenience store services rendered at gasoline stations. The
district court did not rule on Exxon’s counterclaim, stating only that
Kellogg failed to put Exxon’s use of the “Hungry Tiger” at issue in any
of its dispositive motions before the court and that Exxon’s creation and
use of the “Hungry Tiger” is not determinative of Exxon’s claim of
acquiescence or Kellogg’s claims of abandonment and progressive
encroachment. The district court found in favor of Exxon in all respects
and never addressed Exxon’s counterclaim for declaratory judgment to
register its marks. Because Exxon filed a timely notice of cross-appeal to
preserve its right to reassert its counterclaim in the event that any portion
of Kellogg’s claims is remanded for further proceedings, and because we
reverse the district court decision in its entirety, we note that Exxon is
entitled to pursue its counterclaim on remand.
with the sale of non-petroleum products; (2) the district court
improperly denied Kellogg’s progressive encroachment claim
because progressive encroachment is not limited by a
requirement of “direct competition” and the district court
failed to consider the likelihood of confusion between the
marks; (3) the district court improperly denied Kellogg’s
abandonment claim because there are genuine issues of
material fact with regard to whether Exxon’s use of its
cartoon tiger during the 1980s was bona fide or simply a sham
to protect its rights in the mark; and (4) the district court
improperly dismissed Kellogg’s bad faith infringement and
dilution claims as moot. In this appeal, Kellogg has
abandoned its claim for damages and pursues only its claim
for injunctive relief.1
ANALYSIS
We review de novo a district court’s order granting
summary judgment. See Avery v. King, 110 F.3d 12, 13 (6th
Cir. 1997). Summary judgment is appropriate when there
exists “no genuine issue of material fact and . . . the moving
Nos. 98-6237/6360 Kellogg Co. v. Exxon Corp. 21
connection with food, beverages, and retail convenience
stores.
To defeat a suit for injunctive relief, a defendant must
also prove elements of estoppel which requires more than
a showing of mere silence on the part of the plaintiff;
defendant must show that it had been misled by plaintiff
through actual misrepresentations, affirmative acts of
misconduct, intentional misleading silence, or conduct
amounting to virtual abandonment of the trademark.
SCI, 748 F. Supp. at 1262. The record reflects a genuine
factual dispute as to whether Kellogg was put on notice of
such use by Exxon in the mid 1980s or the early 1990s;
indeed, the evidence suggests that in 1992, when Kellogg
requested examples of Exxon’s then-current use of its cartoon
tiger in the United States, Exxon did not include a single
example of its cartoon tiger used in connection with the sale
of food items, leading Kellogg to believe that Exxon’s use of
its cartoon tiger in the United States was limited to the
promotion of petroleum products. But even if we were to
assume for the sake of argument that Kellogg should have
known as early as 1984, when Exxon opened its first
convenience store, that Exxon was using the cartoon tiger to
promote the sale of food products, Kellogg’s failure to bring
suit until 1996 was not “so outrageous, unreasonable and
inexcusable as to constitute a virtual abandonment of its
right” to seek injunctive relief with regard to the sale of non-
petroleum products. See University of Pittsburgh, 686 F.2d
at 1044-45. There simply is no evidence in this record that in
waiting until 1996 to file its complaint, Kellogg actively
consented to Exxon’s use of its cartoon tiger in connection
with the sale of non-petroleum products or that it engaged in
some “affirmative conduct in the nature of an estoppel, or
conduct amounting to ‘virtual abandonment.’ ” See Tandy,
769 F.2d at 366 n.2 (internal citations omitted).
We therefore hold that, as a matter of law, Kellogg did not
acquiesce in Exxon’s use of its cartoon tiger in connection
with the sale of non-petroleum products. Accordingly, we

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20 Kellogg Co. v. Exxon Corp. Nos. 98-6237/6360
opposition from Kellogg–and Kellogg did not file suit until
31 years later. See Kellogg, 50 U.S.P.Q.2d at 1505.
We think that the district court erred in this conclusion.
The failure to oppose Exxon’s registration of its tiger and the
lapse of time from that event until the filing of this action are
not dispositive here. Although Exxon did in fact register its
“Whimsical Tiger” trademark in 1965—with no opposition
from Kellogg—Exxon’s trademark registration was for use in
connection with the sale of petroleum products, a product and
product market with which Kellogg had no connection.
Exxon had used its cartoon tiger to promote petroleum sales
and Kellogg used its trademark to promote food sales; the two
marks peaceably co-existed, each catering to its own market.
Because proof of the likelihood of confusion is necessary in
any trademark infringement claim, Kellogg was not obligated
to bring suit at that time in order to protect its trademark. It
is undisputed, however, that at some point after registering its
cartoon tiger in 1965, Exxon moved into the non-petroleum
market of food, beverages, and retail convenience stores and
used its cartoon tiger in connection with those sales. The
point at which Exxon established itself in this non-petroleum
market was the point at which Kellogg knew or should have
known that it now had a provable claim for infringement; it
was at this point that Kellogg’s duty to defend its trademark
was triggered, and it is from this point that any delay must be
measured for purposes of determining laches or acquiescence.
We hold that Exxon’s 1965 registration was insufficient to
put Kellogg on notice of Exxon’s later use of its cartoon tiger
in connection with the sale of non-petroleum products. The
district court’s failure to distinguish between Exxon’s sale of
petroleum and non-petroleum products resulted in the clearly
erroneous conclusion that Kellogg acquiesced in Exxon’s use
of its cartoon tiger to promote any and all of its products.
Although Kellogg originally challenged Exxon’s use of its
cartoon tiger in connection with both petroleum and non-
petroleum products, Kellogg now seeks injunctive relief only
to prohibit Exxon’s continued use of its cartoon tiger in
Nos. 98-6237/6360 Kellogg Co. v. Exxon Corp. 9
party is entitled to judgment as a matter of law.” FED R. C IV .
P. 56(c). “[T]he mere existence of some alleged factual
dispute between the parties will not defeat an otherwise
properly supported motion for summary judgment; the
requirement is that there be no genuine issue of material
fact.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-8
(1986). The nonmoving party “must set forth specific facts
showing that there is a genuine issue for trial” such that a jury
reasonably could find for the plaintiff. Id. at 250 (citing FED .
R. C IV . P. 56(e)). However, it is for the jury and not the judge
to weigh the evidence and draw inferences from the facts. See
id. at 250. “The evidence of the nonmovant is to be believed,
and all justifiable inferences are to be drawn in his favor.” Id.
at 255 (citing Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-
59 (1970)); see also Wathen v. General Electric Co., 115 F.3d
400, 403 (6th Cir. 1997) (holding that when reviewing a
motion for summary judgment, the district court must resolve
all ambiguities and draw all factual inferences in favor of the
nonmoving party).
Kellogg alleged trademark infringement against Exxon in
violation of § 1114 of the Lanham Act, which states:
(1) Any person who shall, without the consent of the
registrant–(a) use in commerce any reproduction,
counterfeit, copy, or colorable imitation of a registered
mark in connection with the sale, offering for sale,
distribution, or advertising of any goods or services on or
in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive . . . shall be
liable in a civil action by the registrant for the remedies
hereinafter provided.
15 U.S.C. § 1114(1). In Daddy’s Junky Music Stores, Inc. v.
Big Daddy’s Family Music Ctr., 109 F.3d 275 (6th Cir. 1997),
we set forth the elements necessary to succeed on a claim of
trademark infringement.
The touchstone of liability under § 1114 is whether the
defendant’s use of the disputed mark is likely to cause
confusion among consumers regarding the origin of the

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10 Kellogg Co. v. Exxon Corp. Nos. 98-6237/6360
goods offered by the parties. When determining whether
a likelihood of confusion exists, a court must examine
and weigh the following eight factors:
1. strength of the senior mark;
2. relatedness of the goods or services;
3. similarity of the marks;
4. evidence of actual confusion;
5. marketing channels used;
6. likely degree of purchaser care;
7. the intent of defendant in selecting the mark; and
8. likelihood of expansion of the product lines.
When applying these factors to a given case, a court must
remember that these factors imply no mathematical
precision, but are simply a guide to help determine
whether confusion is likely. They are also interrelated in
effect. Each case presents its own complex set of
circumstances and not all of these factors may be
particularly helpful in any given case. But a thorough
and analytical treatment must nevertheless be attempted.
The ultimate question remains whether relevant
consumers are likely to believe that the products or
services offered by the parties are affiliated in some way.
Id. at 280 (internal quotation marks, citations, and alterations
omitted). Thus, crucial to any trademark infringement claim
is the plaintiff’s ability to show a likelihood of confusion on
some fundamental level.
A. Laches, Acquiescence and Progressive
Encroachment
In its motion for summary judgment, Exxon asserted the
affirmative defenses of laches and acquiescence. Although
laches precludes a plaintiff from recovering damages, it does
not bar injunctive relief. See TWM Mfg. Co., Inc. v. Dura
Corp., 592 F.2d 346, 349-50 (6th Cir. 1979) (“Laches alone
does not foreclose a plaintiff’s right in an infringement action
to an injunction and damages after the filing of the suit. Only
by proving the elements of estoppel may a defendant defeat
Nos. 98-6237/6360 Kellogg Co. v. Exxon Corp. 19
3The time period that the Anheuser-Busch Court considered so
grossly extended as to constitute acquiescence and bar injunctive relief
was 31 years (1909 to 1940). See Anheuser-Busch, 175 F.2d at 374.
resulting from the defendant’s moving into the same or
similar market area and placing itself more squarely in
competition with the plaintiff. This approach is consistent
with the principle that the touchstone of liability for
trademark infringement is the likelihood of confusion, not
direct competition of identical products. Although direct
competition of identical products certainly would make it
easier for a plaintiff to show a likelihood of confusion, this
factor alone is not dispositive of progressive encroachment.
In evaluating a plaintiff’s claim of progressive encroachment,
a court must perform a likelihood of confusion analysis,
informed by factors such as whether the defendant has
brought itself more squarely into competition with the
plaintiff, whether the defendant has made changes to its mark
over the years so that it more closely resembles plaintiff’s
mark, whether the parties market to the same customers or
area, and whether the parties sell products interchangeable in
use.
In the case before us here, the district court held both that
Kellogg had acquiesced in Exxon’s use of the cartoon tiger
and that Kellogg could not demonstrate progressive
encroachment by Exxon on Kellogg’s mark. We will address
first the district court’s holding that Kellogg acquiesced in
Exxon’s use of the cartoon tiger.
In granting Exxon’s motion for summary judgment based
on acquiescence, the district court held that Kellogg’s
remaining silent for a grossly extended period of time and
refusing to facilitate the protection of its trademark
constituted “conduct amounting to virtual abandonment” such
that it acquiesced in Exxon’s infringing use of its cartoon
tiger. See SCI, 748 F. Supp. at 1262; Tandy, 769 F.2d at 366
n.2. Relying on the Anheuser-Busch decision,3 the district
court found that Kellogg similarly was “grossly remiss” in
that Exxon registered its “Whimsical Tiger” in 1965–with no

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18 Kellogg Co. v. Exxon Corp. Nos. 98-6237/6360
Manufacturers Screw Products to Stronghold Screw Products,
and the plaintiff filed suit in 1948. See id. The district court
held that the plaintiff was barred by laches because it knew of
defendant’s infringing use of its trademark as early as 1940 or
1941 and did not bring suit until 1948. See id. The Seventh
Circuit reversed the district court under a theory of
progressive encroachment, stating:
Prior to 1946 there was no confusion among prospective
customers that had come to the attention of plaintiff's
officers. It was defendant’s incorporation of the word
“Stronghold” into its business name that caused most of
the confusion. Defendant’s course was “progressive * *
* encroachment” and “such a course does not tend to
arouse hostile action until it is fully developed.”
Independent Nail & Packing, 205 F.2d at 927 (emphasis
added) (citing O. & W. Thum, 245 F. at 623). In determining
whether, for purposes of the defendant’s laches defense, the
plaintiff had unreasonably delayed in filing suit, the court did
not consider the period prior to the defendant’s incorporation
of the word “Stronghold” into its business name, when there
was little likelihood of confusion. Rather, the court
determined when the likelihood of confusion began to loom
large, considering such factors as the similarity in scope of the
parties’ geographic markets, the degree to which the parties
contacted the same prospective customers and appealed to the
same general users’ market, and the interchangeability of the
products the parties sold; the court calculated the
reasonableness of the plaintiff’s delay from that point. The
court’s finding of progressive encroachment was not
dependent upon a finding of direct competition between
identical products; rather the progressive encroachment
finding involved a recognition that the defendant’s increasing
use of the challenged word was not actionable until it actually
caused a likelihood of confusion.
It is clear from all of these cases that the progressive
encroachment analysis turns not on the single question of
direct competition, but rather, on the likelihood of confusion
Nos. 98-6237/6360 Kellogg Co. v. Exxon Corp. 11
such prospective relief.”); Tandy Corp. v. Malone & Hyde,
Inc., 769 F.2d 362, 366 n.2 (6th Cir. 1985) (same). Because
Kellogg withdrew its claim for actual and punitive damages,
seeking injunctive relief only, the district court properly
determined that laches was inapplicable and that Exxon must
prove acquiescence.
Acquiescence, like laches, requires a “finding of conduct on
the plaintiff’s part that amounted to an assurance to the
defendant, express or implied, that plaintiff would not assert
his trademark rights against the defendant.” Elvis Presley
Enter., Inc., v. Elvisly Yours, Inc., 936 F.2d 889, 894 (6th Cir.
1991) (quoting Sweetheart Plastics, Inc. v. Detroit Forming,
Inc., 743 F.2d 1039, 1046 (4th Cir. 1984)). Although both
laches and acquiescence require proof that the party seeking
to enforce its trademark rights has unreasonably delayed
pursuing litigation and, as a result, materially prejudiced the
alleged infringer, acquiescence requires more. See Elvis, 936
F.2d at 894 (holding that with acquiescence, “more is
necessary than the ordinary requirement of showing
unreasonable delay and prejudice to the defendant”); Tandy,
769 F.2d at 366 n.2 (“To deny injunctive relief in trademark
litigation, . . . some affirmative conduct in the nature of an
estoppel, or conduct amounting to ‘virtual abandonment,’ is
necessary.”) (internal citations omitted); Sara Lee Corp. v.
Kayser-Roth Corp., 81 F.3d 455, 462 (4th Cir. 1996)
(“Although the doctrines of acquiescence and laches, in the
context of trademark law, both connote consent by the owner
to an infringing use of his mark, acquiescence implies active
consent, while laches implies a merely passive consent.”); SCI
Sys., Inc. v. Solidstate Controls, Inc., 748 F. Supp. 1257, 1262
(S.D. Ohio 1990) (same).
In University of Pittsburgh v. Champion Prod., Inc., 686
F.2d 1040, 1044-45 (3d Cir. 1982), a decision relied upon by
this Court in Tandy, the Third Circuit recognized that
although mere delay by an injured party in bringing suit
would not bar injunctive relief, “there is that narrow class of
cases where the plaintiff's delay has been so outrageous,
unreasonable and inexcusable as to constitute a virtual

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12 Kellogg Co. v. Exxon Corp. Nos. 98-6237/6360
2In this context, we use the analysis of laches and acquiescence
interchangeably given that acquiescence encompasses the elements of
laches.
abandonment of its right.” (citing Anheuser-Busch, Inc. v.
DuBois Brewing Co., 175 F.2d 370, 374 (3d Cir. 1949)
(“[M]ere delay by the injured party in bringing suit would not
bar injunctive relief. This doctrine, however, has its limits;
for example, had there been a lapse of a hundred years or
more, we think it highly dubious that any court of equity
would grant injunctive relief against even a fraudulent
infringer.”)).
Implicit in a finding of laches or acquiescence is the
presumption that an underlying claim for infringement existed
at the time at which we begin to measure the plaintiff’s
delay.2 In Brittingham v. Jenkins, 914 F.2d 447 (4th Cir.
1990), the Fourth Circuit held:
While the operation of laches depends upon the
particular facts and circumstances of each case, the
following factors ordinarily should be considered: (1)
whether the owner of the mark knew of the infringing
use; (2) whether the owner’s delay in challenging the
infringement of the mark was inexcusable or
unreasonable; and (3) whether the infringing user was
unduly prejudiced by the owner’s delay.
Id. at 456. In Sara Lee, the Fourth Circuit recognized that a
laches analysis “assumes the existence of an infringement for
an extended period prior to the commencement of litigation.”
81 F.3d at 462 (relying on Brittingham and holding that “to
the extent that a plaintiff’s prior knowledge may give rise to
the defense of estoppel by laches, such knowledge must be of
a pre-existing, infringing use of a mark.”). In other words,
when a defendant charged with trademark infringement avails
itself of an acquiescence defense, we must presume the
existence of some underlying infringement to which the
plaintiff acquiesced, and any delay attributable to the plaintiff
must be measured from the time at which the plaintiff knew
Nos. 98-6237/6360 Kellogg Co. v. Exxon Corp. 17
In Prudential Ins. Co. v. Gibraltar Fin. Corp., 694 F.2d
1150, 1154 (9th Cir. 1982), a decision largely relied upon by
the SCI Court, the plaintiff was a general insurance provider,
and the defendant was a savings and loan association with
insurance sales comprising less than 0.3 % of its business.
See id. at 1155. Relying on a number of progressive
encroachment cases, the Prudential Court stated:
These cases all rely on the principle that if the junior user
of a mark moves into direct competition with the senior
user, selling the same “product” through the same
channels and causing actual market confusion, laches is
no defense. Gibraltar has not moved into direct
competition with Prudential as contemplated in these
cases. Gibraltar and Prudential do not offer the same
services to any substantial extent and there is no evidence
that actual confusion of their services has occurred.
Id. at 1154 (emphasis added) (citing Chandon Champagne
Corp. v. San Marino Wine Corp., 335 F.2d 531, 535 (2nd Cir.
1964); Standard Oil Co. v. Standard Oil Co., 252 F.2d 65
(10th Cir. 1958); Independent Nail & Packing Co. v.
Stronghold Screw Products, Inc., 205 F.2d 921, 927 (7th Cir.
1953); Miss Universe, Inc. v. Patricelli, 271 F. Supp. 104,
110 (D. Conn. 1967)).
Kason, SCI and Prudential, however, do not stand for the
proposition that direct competition of identical products in
identical markets is required for a finding of progressive
encroachment. For example, in Independent Nail & Packing,
205 F.2d at 923, the plaintiff was a manufacturer of nails, and
registered its “Stronghold Nails” trademark in 1938. Shortly
thereafter, the defendant, a manufacturer of screws, nuts, and
bolts, began using the name “Stronghold” in the design of a
bolt and washer displayed on its business forms and catalogs;
also displayed on these items was the company’s name,
Manufacturers Screw Products. See id. at 923-24. The
plaintiff was aware of defendant’s use of the name
“Stronghold” on its business forms as early as 1941. See id.
at 924, 927. In 1946, the defendant changed its name from

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16 Kellogg Co. v. Exxon Corp. Nos. 98-6237/6360
In SCI Systems, 748 F. Supp. at 1257, the district court also
was faced with a progressive encroachment claim countering
a laches defense. There, the plaintiff provided a variety of
electrical and electronic goods, including electrical power
supplies and engineering services, and the defendant
manufactured and sold electrical power control equipment.
See id. at 1259. The plaintiff admitted that it had been aware
of defendant’s trademark and product since 1969, but claimed
that the defendant had “only recently departed from the
business practices which had allowed the parties to co-exist
peaceably for many years, and that defendant has only
recently encroached on plaintiff’s rights.” Id. at 1262. The
plaintiff presented evidence showing that the defendant made
certain changes to its mark, making it more similar in
appearance to plaintiff’s mark. See id. at 1262-63.
[I]t was not until the 1980’s when defendant entered into
the data processing market, of which plaintiff had been
a part for many years, by offering uninterruptible power
supplies specially designed for use with data processing
equipment . . . that actual confusion between the
companies developed. It was not until this time, plaintiff
contends, that the defendant changed its color scheme
and its trademark presentation significantly which
brought its usage of the mark “SCI” much closer to
plaintiff’s use.
Id. at 1262 (emphasis added).
The SCI Court recognized that under a progressive
encroachment analysis, changes to a trademark and entry into
the same marketing area can defeat a claim of laches. See id.
at 1262. Because the defendant in SCI had “expanded its line
and entered into new marketing areas[, and] . . . changed the
appearance of its mark through presentation changes in design
and color,” the SCI Court, without addressing the merits of
the underlying dispute or whether defendant was within its
rights to make such changes, reversed the district court’s grant
of summary judgment in favor of the defendant on the defense
of laches. Id. at 1263.
Nos. 98-6237/6360 Kellogg Co. v. Exxon Corp. 13
or should have known that this infringement had ripened into
a provable claim. See Kason Indus., Inc. v. Component
Hardware Group, 120 F.3d 1199, 1206 (11th Cir. 1997)
(“[D]elay is to be measured from the time at which the
plaintiff knows or should know she has a provable claim for
infringement.”); Gasser Chair Co. v. Infanti Chair Mfg.
Corp., 60 F.3d 770, 777 (Fed. Cir. 1995) (holding that the
trigger for delay begins when the plaintiff’s “right ripens into
one entitled to protection”) (citation omitted).
Potential plaintiffs in trademark infringement cases steer a
hazardous course between the Scylla of laches and
acquiescence and the Charybdis of premature litigation. The
Fourth Circuit articulated this quandary as follows:
From the time that [defendant] Kayser-Roth first
introduced its Leg Looks (R) products, [plaintiff] Sara
Lee has been on the horns of a dilemma: If [the
trademark owner] waits for substantial injury and
evidence of actual confusion, it may be faced with a
laches defense. If it rushes immediately into litigation, it
may have little or no evidence of actual confusion and
real commercial damage, may appear at a psychological
disadvantage as “shooting from the hip” and may even
face a counterclaim for overly aggressive use of
litigation.
Sara Lee, 81 F.3d at 462 (internal quotation marks and
citation omitted) (third alteration in original). This common
predicament has given rise to the doctrine of progressive
encroachment.
Progressive encroachment is relevant in assessing whether
laches or acquiescence may be used to bar a plaintiff’s
trademark claim; it applies in cases where the defendant has
engaged in some infringing use of its trademark—at least
enough of an infringing use so that it may attempt to avail
itself of a laches or acquiescence defense—but the plaintiff
does not bring suit right away because the nature of
defendant’s infringement is such that the plaintiff’s claim has
yet to ripen into one sufficiently colorable to justify litigation.

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14 Kellogg Co. v. Exxon Corp. Nos. 98-6237/6360
In Kason, the Eleventh Circuit addressed a plaintiff’s
progressive encroachment claim in the context of a
defendant’s laches defense, explaining the relationship
between the two doctrines as follows:
Though courts typically discuss encroachment as an
excuse for delay, a close examination of . . . cases reveals
that the doctrine significantly overlaps the courts’ inquiry
into when delay begins. In AmBrit, for example, this
court measured delay from the point where the plaintiff
knew the defendant was manufacturing the allegedly
infringing product, but we considered the plaintiff's
reasonable explanation for failing to sue immediately.
Kason, 120 F.3d at 1206 (citing AmBrit, Inc. v. Kraft, Inc.,
812 F.2d 1531, 1546 (11th Cir. 1986)). The plaintiff in
Kason was a manufacturer and distributor of commercial
refrigeration and food services hardware, and the defendant
produced and marketed nearly identical hardware. See id. at
1201. Both parties competed in two markets: the original
equipment manufacturer’s market (OEMs) and the
replacement parts distribution markets. See id. However,
with regard to some particular parts, the plaintiff alleged that
the defendant had been competing only in one market and had
slowly encroached upon the other market—that is, the market
in which plaintiff had been competing. See id. at 1201-2.
Kason held that “where a defendant begins use of a trademark
or trade dress in the market, and then directs its marketing or
manufacturing efforts such that it is placed more squarely in
competition with the plaintiff, the plaintiff's delay is
excused.” Id. at 1205.
Because the doctrines of laches and acquiescence must
assume some underlying infringement, we recognize
progressive encroachment as simply giving the plaintiff some
latitude in the timing of its bringing suit, that is, waiting until
the “likelihood of confusion looms large” to bring the action.
Sara Lee, 81 F.3d at 462 (quoting THOMAS M CC ARTHY ,
M CC ARTHY ON TRADEMARKS AND UNFAIR C OMPETITION ,
§ 31.06[2][a] (3d ed. 1995), renumbered as § 31.19 (4th ed.
Nos. 98-6237/6360 Kellogg Co. v. Exxon Corp. 15
1997)); see also O. & W. Thum Co. v. Dickinson, 245 F. 609,
623 (6th Cir. 1917) (recognizing that progressive
encroachment is “a course [that] does not tend to arouse
hostile action until it is fully developed”). Progressive
encroachment is an offensive countermeasure to the
affirmative defenses of laches and acquiescence; upon a
finding of progressive encroachment, the delay upon which
those defenses are premised is excused. In other words,
progressive encroachment allows the plaintiff to demonstrate
that although it might have been justified in bringing suit
earlier but did not, certain factors now exist that have
prompted it to do so.
The Kason Court, like many courts before it, recognized
that implicit in a progressive encroachment analysis is an
inquiry into the likelihood of confusion between the parties’
marks.
The district court should have evaluated under the
progressive encroachment theory the point at which
Kason could have demonstrated likelihood of confusion
in its primary (either OEM or replacement) market . . . .
It is not clear when Kason determined there was a
likelihood of confusion in either market to file a claim
for dress infringement. Thus, the district court on
remand must view the merits of Kason’s claims of trade
dress infringement for each product in terms of the
market involved. It must determine whether there is a
difference between the two markets material to the
infringement claim, and whether and when any
likelihood of confusion might have ripened into a claim.
We deem all of these facts not only relevant to the merits
of Kason’s claims, but also relevant to the equitable
doctrine of laches and when, if at all, Kason legally could
have asserted a provable claim of trade dress
infringement. On the record submitted, without further
explication by the district court, we cannot say as a
matter of law that laches bars any claim.
Kason, 120 F.3d at 1206-07 (emphasis added).

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