Fun_People Archive
15 Apr
More on the Toucans case

Date: Sat, 15 Apr 95 03:24:06 PDT
From: Peter Langston <psl>
To: Fun_People
Subject: More on the Toucans case

Forwarded-by: <Ninafel@aol.com>
From: toucans@blarg1.blarg.com (Toucans Steel Drum Band)

Re: Kellogg Company vs. Toucans
Contact: toucans@blarg.com

     STEEL DRUMS VS. BREAKFAST CEREAL?

     Offical Toucans Response to Kellogg's

     Recap:  The Toucans, a Seattle-based steel drum band who have been
playing in the Northwest for close to a decade, applied for a federal
trademark in class 9 to protect their name.  The band was stunned when
opposition to their application was filed by the Kellogg Company, which
claims infringment on their 'toucan sam' trademark (in class 30,
cereal-derived food products), as well as  damages caused by the band's
name!

     This post is the Toucans' response to the formal posting made by the
Kellogg Company on March 24.  Watch for an update on the depositions of the
band members soon!

     (All blocked text verbatim Kellogg's posting)

: Kellogg Company has not filed a lawsuit and has never
: objected to the group's name, TOUCANS STEEL DRUM BAND.

     Kellogg's states that it does not object to the band's name, but
rather to their attempt to register it as a trademark.  This is a clever
attempt to cast the breakfast-food behemoth in a non-aggressive light.
However, if Kellogg's is successful in denying the band protection of the
trademark laws for the current band name "Toucans", it will effectively
force the group to choose another name in order to pursue their musical
careers at a higher level and eventually achieve trademark registration of
the band name.  The Toucans will have to abandon 8 years of painstaking
work establishing a regional reputation.  Make no mistake about it:
Kellogg's "defensive" action is a direct assault on the Toucans'
livelihood.

: Rather, Kellogg Company is involved in an administrative
: matter before the U.S. Patent and Trademark Office regarding
: the band's attempt to register the name TOUCANS and obtain
: exclusive rights to its future use.

     Kellogg's tries to avoid blame for initiating this dispute by saying
that it "did not file a lawsuit" against the Toucans and by minimizing this
case as an "administrative matter".  No matter what you call it, Kellogg's
is using real lawyers (earning real fees) to waste the band's time and
money, and to serve subpoenas for eight-hour depositions on the band
members while they perform at elementary schools, as well subpoenaing the
band's agent to produce all documents in her possession relating to the
band.  Not bad for an "administrative matter".  We wonder what they use for
REAL litigation?

: Please understand - contrary to information that the band is
: putting before the public - if the band's trademark request
: were granted, it could stop Kellogg Company from using its
: own TOUCAN SAM and TOUCAN Bird trademarks on all future
: recordings, even though Kellogg has made recordings since it
: first registered the trademarks in 1964.

     Kellogg's claim that allowing the band to register "Toucans" as a
trademark would somehow preclude Kellogg's from using its existing "Toucan
Sam" mark on future musical recordings is utterly unsubstantiated.  The two
marks are clearly distinguishable, and there is no reason why they cannot
exist in perfect harmony.
     Kellogg's has produced only one recording of Toucan Sam, a promotional
album available for a short time in 1984, after which it was discontinued.
Trademark law explicitly requires CONTINUING USAGE to maintain trademark
rights.  If Kellogg's suddenly discovers a desire to produce Toucan Sam
recordings (after a hiatus of 11 years), nothing in the Toucans'
application will prevent them from doing so.

: If the band is granted this request, it could dilute the
: protection given Kellogg's TOUCAN SAM and TOUCAN Bird design
: trademarks in all future cases, including lawsuits.

     Such claims of dilution are highly questionable.  Dilution requires an
established *intent* to trade off another's reputation.  The Toucans would
like nothing more than to keep their distance from the Kellogg Company, and
in any event, has never associated itself with Toucan Sam, Froot Loops, or
Kellogg's in any way.  Those who know trademark law know that dilution
claims are difficult to win.  It's almost certainly easier to strong-arm a
small entity than it is to prevail in litigation (or an opposition hearing
before the Patent & Trademark Office) in such a case.

: We assure you that this is not a case of big business versus
: a small helpless band, as the band is leading the public to
: believe.

     Kellogg's says that this case is not about a "big business versus a
small helpless band".  But if Kellogg's is not trying to use its economic
leverage to squash the Toucans meritorious but underfunded cause, then why
has the company resorted to expensive legal proceedings while repeatedly
stiff-arming the Toucans' offers to seek a fair and equitable settlement?

: This is a question of Kellogg Company's right to a trademark
: it has owned for more than 30 years.

     This is nothing of the sort.  There is absolutely nothing in the
Toucans' application which threatens Kellogg's well-established trademark
rights in the field of cereal-derived food products.  For the Kellogg
Company to presume that use in one class grants exclusive rights for all
classes is arrogant beyond belief.  The Toucans do not sell cereal; they
seek registration only in the class that includes sound recordings.

: We assure you that these are the facts surrounding this
: issue and after more than 80 years of valuing our image in
: the public please know that we understand fully that:  "A
: reputation is a very fragile thing."     - Kellogg Company

     Kellogg's is quite correct that "a reputation is a fragile thing."
Yet 80 years of peddling cereal have somehow failed to teach this company
very much about what the public is willing to swallow.  Kellogg's trademark
rights are not in danger in this case.  But its bullying tactics and lack
of common sense are very much on trial.

     Toucans Steel Drum Band
_________

     Please contact Kellogg's hired lawyers (Jeffrey Kaufman of Oblon,
Spivak, McClelland, Maier & Neustadt) at jhkau@oblon.com with your opinions
on this matter.
     For more information, please email the Toucans at toucans@blarg.com,
or write to: Toucans Steel Drum Band, PO Box 30081, Seattle, WA  98103


::: :: :::: : :::::: :: ::::::
                          Toucans Steel Drum Band
                     PO Box 30081, Seattle, WA  98103
                 (206) 545-7375 voice, (206) 633-1877 fax
                             toucans@blarg.com
              A Division of Marketable Tone Generation Systems
                           "Iron helps us play!"

© 1995 Peter Langston