Kellogg Company v. Toucan Golf , Inc .

*The Honorable James G. Carr, United States District Judge for the
Northern District of Ohio, sitting by designation.
1
RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit Rule 206
ELECTRONIC CITATION: 2003 FED App. 0241P (6th Cir.)
File Name: 03a0241p.06
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
_________________
KELLOGG COMPANY ,
Plaintiff-Appellant,
v.
TOUCAN GOLF , I NC .,
Defendant-Appellee.
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No. 01-2394
Appeal from the United States District Court
for the Western District of Michigan at Kalamazoo.
No. 99-00091—Wendell A. Miles, District Judge.
Argued: May 6, 2003
Decided and Filed: July 23, 2003
Before: SUHRHEINRICH and COLE, Circuit Judges;
CARR, District Judge.*
_________________
COUNSEL
ARGUED: Daniel S. Mason, ZELLE, HOFMANN,
VOELBEL, MASON & GETTE, San Francisco, California,
2 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394
for Appellant. Gerard Mantese, MANTESE &
ASSOCIATES, Troy, Michigan, for Appellee. ON BRIEF:
Daniel S. Mason, Christopher T. Micheletti, ZELLE,
HOFMANN, VOELBEL, MASON & GETTE, San
Francisco, California, for Appellant. Gerard Mantese,
MANTESE & ASSOCIATES, Troy, Michigan, John J.
Conway, Detroit, Michigan, for Appellee.
_________________
OPINION
_________________
SUHRHEINRICH, Circuit Judge. Plaintiff-Appellant
Kellogg Company appeals from the district court’s
affirmation of the Trademark Trial and Appeal Board’s
(TTAB) decision to permit the registration of the word mark
“Toucan Gold” by Defendant-Appellee Toucan Golf, Inc.
(TGI), a manufacturer of promotional golf equipment.
Kellogg claims that TGI’s word mark and its corresponding
toucan logo create a likelihood of confusion with, and dilute
the distinctiveness of, Kellogg’s five federally-registered and
incontestable “Toucan Sam” logos and word mark under the
Lanham Act as amended, 15 U.S.C. §§ 1051, et seq.
We affirm the decision of the district court and deny
Kellogg’s claims. TGI’s use of the word mark “Toucan
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
toucan logo, as a realistic toucan design, does not create a
likelihood of confusion with Kellogg’s more cartoonish
“Toucan Sam” designs. Furthermore, Kellogg has not
presented any evidence that TGI’s use of its marks actually
dilutes the fame or distinctiveness of any of Kellogg’s marks.

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No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 3
1In 1964, the USPTO was known as the United States Patent Office.
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
fingers and toes, and only exhibits his wings while flying.
Moreover, in television advertisements over the past forty
years, Toucan Sam has been given a voice. He speaks with
a British accent, allowing him to fervently sing the praises of
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:
4 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394
The second mark was registered March 20, 1984, under
USPTO Reg. No. 1,270,940, and consists of an updated
version of the same toucan, standing and smiling with his
mouth open widely; and pointing his left index finger
upward:
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.

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No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 5
The fifth mark, registered January 31, 1995, under USPTO
Reg. No. 1,876,803, is essentially the same drawing as in the
fourth mark, except unshaded, as reproduced below:
Together the five registrations indicate that Kellogg’s marks
are for use in the breakfast cereal industry, and on clothing.
In 1994, Peter Boyko created TGI, an Ohio corporation
with its principal place of business in Mansfield, Ohio, with
his wife, Janice Boyko, and daughter. TGI is a manufacturer
of golf equipment, mainly putter heads. TGI creates putter
heads from polycarbonate plastics, purchases shafts and grips
from outside sources, and then assembles and sells the
putters. Principally, TGI’s clientele consists of companies
who use TGI’s goods as promotional gifts at charity events.
For this purpose, TGI prints the name or logo of its client on
the putter head or other piece of equipment being sold. TGI
rarely, if ever, sells directly to retailers or the public.
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
variable body coloring:
TGI has not registered its GolfBird logo with the USPTO.
On December 15, 1994, however, TGI did file an “intent to
use” application with the USPTO for the word mark “Toucan
Gold.” The application, as later amended, sought to use the
mark in relation to “golf clubs and golf putters.” Specifically,
TGI planned to use the mark for its newest line of putters
which consist of a putter head on a Boron Graphite shaft. On
August 29, 1995, the USPTO published TGI’s application for
opposition. Kellogg filed an opposition with the TTAB,
asserting that TGI’s proposed use of the mark “Toucan Gold”
for golf-related merchandise infringed upon Kellogg’s
Toucan Sam marks under the Lanham Act by creating a
likelihood of consumer confusion. On May 19, 1999, the
TTAB dismissed the opposition without testimony.
On July 16, 1999, Kellogg appealed the TTAB decision to
the district court below, and commenced a de novo review

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No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 7
under 15 U.S.C. § 1071(b). In its complaint, Kellogg again
claimed that TGI’s use of the word mark “Toucan Gold”
created a likelihood of confusion among consumers with
respect to Kellogg’s Toucan Sam word mark. Kellogg added
a likelihood of confusion claim with respect to the GolfBird
logo as well. Furthermore, Kellogg added a dilution claim
under the Federal Trademark Dilution Act of 1995 (FTDA).
See 15 U.S.C. §§ 1063 and 1125(c). On September 6, 2001,
after a four day bench trial, the district court dismissed
Kellogg’s complaint. The judgment was then entered on
September 10. 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. Moreover, the court found no dilution because the
parties’ marks are “visually and verbally distinct.” Kellogg
filed a notice of appeal on October 4, 2001, and this matter is
timely before this Court pursuant to Fed. R. App. P.
4(a)(1)(A).
II. Standard of Review and Jurisdiction
The TTAB “may refuse to register a trademark that so
resembles a registered mark ‘as to be likely, when used on or
in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive.’” Recot, Inc. v.
Becton, 214 F.3d 1322, 1326 (Fed. Cir. 2000) (quoting 15
U.S.C. § 1052(d)).
The federal courts have jurisdiction over appeals from the
TTAB. A party who lost before the TTAB may appeal the
decision to the United States Court of Appeals for the Federal
Circuit under a “substantial evidence” standard of review.
See, e.g., In re Thrifty, Inc., 274 F.3d 1349, 1350 (Fed. Cir.
2001). Otherwise, a party may appeal the TTAB decision, to
be reviewed de novo, to the United States District Court in
any district where venue is proper. 15 U.S.C. § 1071(b)(1).
A disappointed party may present new evidence before the
district court that was not presented to the TTAB. Dickinson
8 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394
v. Zurko, 527 U.S. 150, 164 (1999). Kellogg has chosen the
latter route.
We review the district court’s legal conclusions de novo;
but review its factual conclusions for clear error. See
McLaughlin v. Holt Pub. Schs. Bd. of Educ., 320 F.3d 663,
669 (6th Cir. 2003).
III. Analysis
Essentially, Kellogg seeks to block the registration of the
“Toucan Gold” word mark, and to prevent further
commercial use of both the word mark and the GolfBird logo.
To this end, Kellogg asserts that there is a Lanham Act
violation because there exists a likelihood that consumers will
be confused as to the source of TGI’s products. Moreover,
Kellogg asserts that, regardless of our confusion analysis,
TGI’s use of its marks dilutes the fame of Kellogg’s marks,
and therefore TGI is in violation of the FTDA.
A. Likelihood of Confusion
In order to show trademark infringement under the Lanham
Act, and that TGI is not entitled to registration, Kellogg must
show that TGI’s use of its marks constitutes use “in
commerce” of a “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 . . . .” 15
U.S.C. § 1114(1); see also Taubman Co. v. Webfeats, 319
F.3d 770, 774 (6th Cir. 2003).
This Court has established an eight-part test for
determining when a likelihood of confusion exists between
the origins of two products. Therma-Scan, Inc. v.
Thermoscan, Inc., 295 F.3d 623, 629-30 (6th Cir. 2002);
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

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No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 9
(6th Cir. 1982). The factors are: (1) the strength of the
plaintiff’s mark; (2) the relatedness of the goods or services
offered by the parties; (3) similarity of the marks; (4) any
evidence of actual confusion; (5) the marketing channels used
by the parties; (6) the probable degree of purchaser care and
sophistication; (7) the defendant’s intent; and (8) the
likelihood of either party expanding its product line using the
marks. Therma-Scan, 295 F.3d at 630; Daddy’s Junky Music
Stores, 109 F.3d at 280; Frisch’s Restaurants, 670 F.2d at
648. Not all of these factors will be relevant in every case,
and “[t]he ultimate question remains whether relevant
consumers are likely to believe that the products or services
offered by the parties are affiliated in some way.”
Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931
F.2d 1100, 1107 (6th Cir. 1991). Thus, the question here, as
in all trademark cases, is whether we believe consumers of
TGI’s golf equipment are likely to think it was manufactured
by Kellogg. See, e.g., Taubman Co., 319 F.3d at 776 (stating
that the only relevant question is whether there is confusion
as to the origin of the respective products) (citing Daddy’s
Junky Music Stores, 109 F.3d at 280). None of the factors is
dispositive, but the factors guide us in our ultimate
determination. See Landham v. Lewis Galoob Toys, Inc., 227
F.3d 619, 627 (6th Cir. 2000).
1. Strength of Kellogg’s Marks
The first factor of the test focuses on the distinctiveness of
a mark and the public’s ability to recognize it. See Therma-
Scan, 295 F.3d at 631. In Daddy’s Junky Music Stores, we
recognized a spectrum of distinctiveness for trademarks,
ranging from “generic” to “fanciful.” Daddy’s Junky Music
Stores, 109 F.3d at 280-81. For example, the word “cereal”
is generic, whereas the names “Xerox” and “Kodak” are
fanciful, having been completely fabricated by the trademark
holders. See Eastman Kodak Co. v. Weil, 137 Misc. 506, 243
N.Y.S. 319 (1930); see also Armstrong Cork Co. v. World
Carpets, Inc., 597 F.2d 496, 505 (5th Cir. 1979); Arrow
Distilleries, Inc. v. Globe Brewing Co., 117 F.2d 347, 349
10 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394
(4th Cir. 1941) (giving as other examples of fanciful marks
“Aunt Jemima” and “Rolls Royce”); cf. Aunt Jemima Mills
Co. v. Rigney & Co., 247 F. 407, 409 (2d Cir. 1917).
We find the “Toucan Sam” word mark and logo each to be
fanciful. Kellogg completely created the name “Toucan
Sam.” Kellogg also completely fabricated Toucan Sam’s
logo design. He does not resemble a real toucan. His 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.
In further support of the strength of its Toucan Sam marks,
Kellogg has submitted survey information indicating that
94% of Americans recognize Toucan Sam, and 81% of
children who recognize him correspond him with Froot
Loops. Moreover, Kellogg has submitted extensive records
detailing the massive amount of time, money, and effort
expended in regard to the marketing of Toucan Sam and
Froot Loops. We need not delve into Kellogg’s records; we
find the fact that Kellogg is the largest cereal maker in the
world, that Froot Loops is one of its best selling cereals, and
that 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.
Coupling that with his distinctiveness, Toucan Sam is a very
strong mark.
2. Relatedness of the Products
In consideration of the second factor, we must examine the
relatedness of the goods and services offered by each party.
We have established three benchmarks regarding the
relatedness of parties’ goods and services. First, if the parties
compete directly, confusion is likely if the marks are
sufficiently similar; second, if the goods and services are
somewhat related, but not competitive, then the likelihood of

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No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 11
confusion will turn on other factors; finally, if the products
are unrelated, confusion is highly unlikely. Therma-Scan,
295 F.3d at 632; Daddy’s Junky Music Stores, 109 F.3d at
282.
TGI makes golf equipment, mainly putter heads. TGI also
sells bag tags, divot tools, and full sets of clubs, but 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 times licensed its name and
characters to outside companies. Kellogg asserts before this
Court that it has sufficiently entered the golf equipment
industry. In support of this claim, Kellogg presents a catalog,
wherein it offers for sale golf balls and golf shirts on which
is imprinted the picture of Toucan Sam. Moreover, Kellogg
has presented a mass-marketed 1982 animated television
advertisement wherein Toucan Sam is portrayed soliciting his
Froot Loops on a golf course, and interacting with a golf-
playing bear. Kellogg claims these materials indicate that the
Toucan Sam marks are related not only to the manufacture of
breakfast cereal, but to the golf equipment industry as well.
However, Kellogg, although it is the largest producer of
breakfast cereal nationally, has not presented evidence that its
golf “equipment” has been marketed nationally. The golf
balls and shirts are available on a limited basis, either through
the aforementioned catalog— which is not widely
distributed— or through select local theme stores, such as
Kellogg’s own “Cereal City” in Battle Creek, Michigan.
Moreover, the commercial in which Toucan Sam plays golf
is nonetheless an advertisement for Froot Loops, not golf
equipment. The district court found that Kellogg’s presence
in the golf industry was insignificant, and nothing more than
a marketing tool to further boost sales of its cereal. We
agree. We find that one thirty second advertisement does not
render Toucan Sam a golfer, nor does a novelty catalog make
Kellogg a player in the golfing industry. In any event,
12 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394
trademark law is grounded on a likelihood of confusion
standard. We find that no consumer would associate Kellogg
with top-line golf equipment based on Kellogg’s extremely
limited licensing of its characters on novelty items. We also
believe that 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. We find the parties’ products
completely unrelated. And under the benchmarks established
in this Circuit, the second factor therefore supports a
conclusion that confusion is not likely to occur. See Therma-
Scan, 295 F.3d at 632 (stating that confusion is highly
unlikely where goods are completely unrelated).
3. Similarity of the Marks
Kellogg argues that it can prove a likelihood of confusion
notwithstanding the unrelatedness of the goods. It has
presented several cases to demonstrate that courts have held
for trademark owners relying heavily on the similarity of the
marks, even where the parties’ goods were in different
product markets. See, e.g., Recot, 214 F.3d at 1328 (finding
likelihood of confusion between “Frito Lay” and “Fido Lay”
even though one is used for snack chips and one is used for
dog food); Hunt Foods & Indus., Inc. v. Gerson Stewart
Corp., 367 F.2d 431, 435 (C.C.P.A. 1966) (holding “Hunt’s”
for canned goods and “Hunt” for cleaning products
confusingly similar); American Sugar Refining Co. v.
Andreassen, 296 F.2d 783, 784 (C.C.P.A. 1961) (finding
“Domino” for sugar and “Domino” for pet food confusingly
similar); Yale Elec. Corp. v. Robertson, 26 F.2d 972, 974 (2d
Cir. 1928) (finding “Yale” for flashlights and locks
confusingly similar); Quality Inns Int’l, Inc. v. McDonald’s
Corp., 695 F. Supp. 198, 221-22 (D. Md. 1988) (finding
similarity between “McSleep Inn” and McDonald’s’
trademarks); John Walker & Sons, Ltd. v. Bethea, 305 F.
Supp. 1302, 1307-08 (D.S.C. 1969) (finding “Johnnie
Walker” whiskey and “Johnny Walker” hotels confusingly
similar). But each of these cases is distinguishable. In some

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No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 13
2It 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.
of the cases cited by Kellogg, the courts did find that the
goods were related. See, e.g., Recot, 214 F.3d at 1328
(finding that some snack chip makers might also make dog
food); Hunt Foods, 367 F.2d at 434 (finding a relationship
between the respective products); American Sugar Refining
Co., 296 F.2d at 784 (finding goods related because both are
sold at grocery stores); Yale Elec. Corp., 26 F.2d at 974
(finding locks and flashlights related because “the trade has
so classed them”). In the other cases cited by Kellogg, the
names, as well as other marks, were either not only similar,
but substantially identical, see John Walker & Sons, 305 F.
Supp. at 1307-08 (comparing “Johnnie Walker” whiskey to
“Johnny Walker” hotels and finding infringement where
defendant also used same color scheme and same script); or
the similar portion of the senior mark was both famous and
fanciful, and thus so distinctive that its use would transcend
its market.2 Cf. Recot, 214 F.3d at 1328 (stating that “Frito
Lay” word mark “casts a ‘long shadow which competitors
must avoid’”) (citations omitted); Quality Inns, 695 F. Supp.
at 216-21 (intimating that the prefix mark “Mc” used by
McDonald’s is highly distinctive in regard to anything but
surnames).
But here, the parties’ goods are completely unrelated, and
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. Kellogg has taken an everyday word and applied it
to a setting where it is not naturally placed. See, e.g.,
Daddy’s Junky Music Stores, 109 F.3d at 280-81 (recognizing
distinctiveness spectrum and stating that a mark is arbitrary
14 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394
when it is an everyday name or thing mismatched to the
product it represents, such as “Camel” for cigarettes or
“Apple” for computers). As opposed to a fanciful mark, an
arbitrary mark is distinctive only within its product market
and entitled to little or no protection outside of that area. See,
e.g., Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 260
(5th Cir. 1980) (implying that plaintiff’s arbitrary term
“Domino” is entitled to no protection outside of the sugar and
condiments market). Thus, unlike the Recot, John Walker &
Sons, and Quality Inns cases, here TGI has not used any
distinctive portion of Kellogg’s word mark at all.
Admittedly, we would have a far different case had TGI
attempted to use a mark such as “Toucan Sam Gold” for its
line of products, because the “Toucan Sam” word mark, in its
entirety, is fanciful and likely transcends its market in the
same way “Frito Lay” and the “Mc” prefix do. Cf. Recot, 214
F.3d at 1328; Quality Inns, 695 F.Supp. at 216-21. Kellogg
has not cornered the market on all potential uses of the
common bird name “toucan” in commerce, only on uses of
“Toucan Sam.” In regard to the word marks, TGI’s
apparently similar use is therefore not enough to overcome
the unrelatedness of the goods.
As for the logos, the actual Toucan Sam design is fanciful.
Hence, in step with cases like Recot, if TGI’s GolfBird is
similar to Toucan Sam’s design, there may be a Lanham Act
violation in spite of the unrelated goods. But we find
GolfBird dissimilar to Toucan Sam. GolfBird resembles a
real toucan. She has the look and proportions of a toucan that
one would encounter in the wild. Toucan Sam is
anthropomorphic, with a discolored, misshaped beak. His
body type is not the same as that of a real toucan; and he
smiles and has several other human features. We therefore
find no similarity between Toucan Sam and GolfBird.

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

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No. 01-2394 Kellogg Co. v. Toucan Golf, Inc. 17
Catalogue, Inc., 123 S.Ct. 1115, 1122 (2003); see also FTDA
§ 4, 15 U.S.C. § 1127. We have developed a five part test to
determine whether dilution has occurred under the FTDA: the
senior mark must be (1) famous; and (2) distinctive. Use of
the junior mark must (3) be in commerce; (4) have begun
subsequent to the senior mark becoming famous; and
(5) cause dilution of the distinctive quality of the senior mark.
See, e.g., Kellogg Co. v. Exxon Corp., 209 F.3d 562, 577 (6th
Cir. 2000).
The first four factors are not in dispute and require no
discussion. The only factor before this Court is whether TGI
has diluted Kellogg’s Toucan Sam marks. The Supreme
Court has held that, under the plain language of the FTDA,
for a plaintiff to show dilution, he must demonstrate actual
dilution, and not merely the likelihood of dilution. Moseley,
123 S.Ct. at 1124.
The plaintiff need not show actual loss of sales or profit,
but the mere fact that customers might see the junior mark
and associate it with a famous mark does not establish
dilution. Id. at 1124. In Moseley, the defendant created a
lingerie shop called “Victor’s Little Secret.” The owners of
the more famous lingerie-related mark “Victoria’s Secret”
sued under the FTDA. The Supreme Court held that the
plaintiff’s claim failed, even though it presented evidence that
consumers had associated the two marks. The plaintiff did
not present any empirical evidence that consumers no longer
clearly understood to which products the “Victoria’s Secret”
mark was related, and thus failed to demonstrate the
“lessening of the capacity of the Victoria’s Secret mark to
identify and distinguish goods or services sold in Victoria’s
Secret stores or advertised in its catalogs.” Id. at 1125.
Likewise, here, Kellogg has presented no evidence that TGI’s
use of its toucan marks has caused consumers no longer to
recognize that Toucan Sam represents only Froot Loops. In
fact, Kellogg’s own 1991 study indicated that 94% of
children recognize Toucan Sam and 81% of children relate
him to Froot Loops. Kellogg performed another study in
18 Kellogg Co. v. Toucan Golf, Inc. No. 01-2394
1997— after TGI started business— wherein it determined
that 94% of adults likewise recognized Toucan Sam. Kellogg
has failed to present evidence that any segment of the
population recognizes Toucan Sam as the spokesbird only for
Froot Loops in lesser numbers than it did before TGI started
using its toucan marks. Accordingly, we affirm the decision
of the district court and deny Kellogg’s FTDA claims.
Kellogg asks this Court for a remand on this issue in light
of the fact that the Supreme Court decided Moseley and
clarified the dilution standard after the briefing stage in this
case. Kellogg believes it is entitled to the opportunity to
present empirical evidence of actual dilution before the
district court. We find a remand inappropriate. In Moseley,
the Supreme Court provided a stricter standard for proving
dilution than the likelihood of dilution standard that was
previously employed by this Court. See V Secret Catalogue,
Inc. v. Moseley, 259 F.3d 464 (6th Cir. 2001), rev’d, 123
S.Ct. 1115 (2003). We find Kellogg’s proffered empirical
evidence insufficient even to meet the lesser standard.
IV. Attorney’s Fees and Sanctions
TGI has brought a separate motion for sanctions and
attorney’s fees. Under § 35(a) of the Lanham Act, the
prevailing party may recover attorney’s fees in “exceptional
cases.” 15 U.S.C. § 1117(a). TGI did not raise its claim
below, but instead raises this issue for the first time on
appeal. We have made clear in the past that the award of
attorney’s fees under § 35(a) is at the discretion of the district
court alone. U.S. Structures, Inc. v. J.P. Structures, Inc., 130
F.3d 1185, 1191-92 (6th Cir. 1997). Having not raised the
issue with the district court, TGI’s § 35 claim is waived. See
also Paccar, Inc. v. Telescan Technologies, L.L.C., 319 F.3d
243, 258 (6th Cir. 2003).
TGI also moves for “just damages” under Fed. R. App. P.
38. That rule provides:

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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 M ORNING 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.

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