Kellogg Co.v.Toucan Golf, Inc.

Trademark Trial and Appeal Board

May 19, 1999

No. 91102734 (T.T.A.B. May. 19, 1999)

Hearing: Paper No. 21
July 16, 1998 ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Kellogg Company
v.
Toucan Golf, Inc.
_____
Opposition No. 102,734
to application Serial No. 74/611,345
filed on December 15, 1994
_____
Jeffrey H. Kaufman of Oblon Spivak McClelland Maier &
Neustadt, P.C. for Kellogg Company
Toucan Golf, Inc., pro se.
______
Before Simms, Seeherman and Wendel, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Kellogg Company has opposed the application of Toucan
Golf, Inc. to register TOUCAN GOLD as a trademark for golf
clubs and putters.1 As grounds for opposition, opposer has

1 Application Serial No. 74/611,345, filed December 15, 1994 and
asserting a bona fide intention to use the mark in commerce.
Opposition No. 102,734
2
alleged that since prior to applicant’s filing date, opposer
has used trademarks "comprising the word ’toucan’" in
connection with food products and ancillary promotional
items; that it owns and relies on registrations for various
marks consisting of a design of a toucan and for the words
TOUCAN SAM for cereal or cereal-derived food products; that
it relies on its common law use of toucan marks on ancillary
promotional items, including golf ball markers; and that
applicant’s use of TOUCAN GOLD on its identified goods is
likely to cause confusion or mistake or to deceive. Opposer
has also asserted that "the bona fides of Applicant’s
intent-to-use is [sic] not apparent from materials of record
in the subject application, and Opposer therefore challenges
same."
In its answer applicant has admitted opposer’s
ownership of its five pleaded registrations, and that these
registrations are valid and subsisting, and denied the
remaining salient allegations of the notice of opposition.
Both opposer and applicant filed briefs. Opposer filed
what it styled as a "reply at final hearing," in which it
asserts that there are no facts of record to substantiate
the claims and argument made in applicant’s brief, and
points out that the brief is not signed and does not bear a
certificate of service. Opposer asks that applicant’s brief
be given no consideration. To the extent that opposer
Opposition No. 102,734
3
objects to applicant’s brief on the basis that it does not
satisfy certain procedural formalities, the objection is
denied. Although the brief does not contain all the
elements of a certificate of service, as set forth in
Trademark Rule 2.119(a), it does indicate that a copy was
sent to opposer. Further, opposer has not asserted that it
did not receive applicant’s brief, or that it was in any way
prejudiced by the fact that it did not bear a certificate of
service. Similarly, there is no apparent prejudice from the
fact that the brief is unsigned. Therefore, applicant’s
brief has been considered, although any argument which is
not factually supported by the record is necessarily of
little value.
The record includes the pleadings; the file of the
opposed application; and the testimony, with exhibits, of
opposer’s witnesses Mark Childs and William Nielsen.
Opposer has also submitted, under a notice of reliance,
applicant’s responses to certain of opposer’s
interrogatories and requests for admission; portions of the
discovery deposition of Peter Boyko, applicant’s chief
executive officer; certain printed publications; and
certified status and title copies of opposer’s five pleaded
registrations, as well as Registration No. 1,979,527.2

2 Registration No. 1,979,527 issued on June 11, 1996, and the
notice of opposition was filed on July 29, 1996. Because of the
short time between the issuance of the registration and the
Opposition No. 102,734
4
The marks and goods of these registrations are shown below:
Cereal breakfast foods3
Cereal-derived food
product to be used as a
breakfast food, snack
food or ingredient for
making food4
TOUCAN SAM Cereal-derived food
product to be used as a
breakfast food snack food
or ingredient for making
food5

filing of the opposition it is possible that opposer’s outside
counsel was unaware that the registration had issued at the time
it prepared the opposition papers. In that case, it would have
been the better practice to have amended the notice of opposition
when counsel became aware of the registration. However, because
the registration was introduced during the discovery deposition
of applicant’s witness and was made of record during opposer’s
testimony period (and because applicant did not object thereto),
we deem the pleadings to have been amended pursuant to FRCP Rule
15(b) to include this registration.
3 Registration No. 775,496, issued August 18, 1964; renewed.
4 Registration No. 1,270,940, issued March 20, 1984; Section 8
affidavit accepted; Section 15 affidavit received.
5 Registration No. 1,343,023, issued June 18, 1985; Section 8
affidavit accepted; Section 15 affidavit received.
Opposition No. 102,734
5
Processed cereal to be
used as a breakfast
cereal, snack food or
primary component in
combination with other
foods6
Processed cereal to be
used as a breakfast food,
snack food or ingredient
for making food7
clothing, namely
t-shirts, sweatshirts,
nightshirts, pajamas and
caps8
Applicant, which was not represented by counsel, has
not submitted any evidence, nor did it appear at the
testimony depositions of opposer’s witnesses or at the oral
hearing.
Opposer sells cereal products. In 1963 it introduced a
cereal under the trademark FROOT LOOPS. Since its
introduction, the packaging for this cereal has featured a
cartoon-like picture of a toucan. Through the years the

6 Registration No. 1,840,746, issued June 21, 1994. The drawing
of the mark is lined for the colors green, orange, light blue,
dark blue, red and pink,and such colors are claimed to be a
feature of the mark.
7 Registration No. 1,876,803, issued January 31, 1995.
8 Registration No. 1,979,527, issued June 11, 1996.
Opposition No. 102,734
6
toucan has changed slightly; for example, the original
packaging shows the toucan with a closed beak, and later
versions depict it with an open "mouth" or outspread wings.
Opposer refers to its toucan as TOUCAN SAM, and several
of the packages which opposer has introduced as exhibits
bear this name. For example, exhibit No. 3, which depicts
packaging from June 1964, refers to a TOUCAN SAM stuffed toy
which is offered as a promotional item. This toy is a
stuffed animal representation of the toucan design on the
package. Exhibit 7, which depicts a FROOT LOOPS package
from 1972, features a "TOUCAN SAM ’Ring Toss’ game," and the
game itself uses a 7-inch tall figure of the toucan.
Mark Childs, who is opposer’s Director of Kit Driven
Equities, testified that, based on studies of children’s
name recall, children refer to the toucan design equally as
"Toucan" and "Toucan Sam." A 1996 study prepared by an
advertising agency on the "star power" of various character
and celebrity names showed that of 600 people who were shown
the visual image of Toucan Sam, 57% were aware of the
character.
Opposer’s FROOT LOOPS cereal is available in grocery
stores, "manufacturer" stores like K-Mart and Target, club
stores, institutions and schools. The primary consumers of
the cereal are children and teens (60%); the remaining 40%
are adults over 18.
Opposition No. 102,734
7
Opposer advertises its FROOT LOOPS cereal nationally on
television, and in ads with coupons which are part of a
coupon-filled insert placed in Sunday newspapers. Opposer
also has a web page which includes the FROOT LOOPS brand and
the Toucan Sam character.
Opposer’s FROOT LOOPS cereal has enjoyed significant
sales. In the five-year period from 1988 through 1992, net
sales in the United States were over $759 million, while for
a similar period from 1993 through 1997 (the figures for the
last 4 months being estimated), net sales were over $1
billion. Advertising and promotional expenses amounted to
$204 million in the earlier period, and $358 million in the
latter.
Opposer, in addition to its cereal products, is
involved in a licensing/merchandising program. William
Nielsen, the Director of Promotion, Development & Licensing
for opposer’s subsidiary Kellogg USA, testified regarding
opposer’s use of the "TOUCAN SAM mark." In reviewing this
testimony, we note that Mr. Nielsen did not make a
distinction between the design mark that is referred to as
Toucan Sam, and the word mark TOUCAN SAM which opposer has
registered. Based upon the exhibits which were submitted
during Mr. Nielsen’s testimony, though, it appears to us
that in general he is referring to the design of the toucan,
rather than the word mark TOUCAN SAM.
Opposition No. 102,734
8
Mr. Nielsen testified that opposer has licensed the
"TOUCAN SAM mark" for, inter alia, golf balls, caps,
t-shirts, toy miniature cars, watches, coffee mugs, plates,
spoons and squirt bottles. A catalog which bears an issue
date of January 1994 offers merchandise featuring opposer’s
various marks and characters, including representations of
TONY THE TIGER for, inter alia, golf shirts, golf balls,
golf headcovers, caps, baseballs and squeeze bottles;
KELLOGG’S for, inter alia, golf umbrellas, golf balls, a
"golf package" with tees, ball markers and a divot fixer,
and golf towels; and the Toucan Sam design (shown in
Registration No. 1,270,940) for golf balls, t-shirts, soft
magnets and lapel pins. Mr. Nielsen testified that the
items bearing the Toucan Sam design were available to the
public through the catalog.
Mr. Nielsen also testified that similar catalogs were
in use at least as of 1989 (when he joined the company),
although he did not testify as to the specific goods which
were offered in those catalogs, or the marks they bore.
Another catalog, bearing a copyright date of 1995, which was
introduced in late 1994 or early 1995, offers additional
merchandise, including a KELLOGG’S trademarked mountain
bike, golf putter and golf bag (which, in addition to the
KELLOGG’S mark, bears a Tony the Tiger design). The Toucan
Opposition No. 102,734
9
Sam design mark appears, inter alia, on one of the golf
balls shown in this catalog.
The catalogs are available to the general public.
Specifically, they are sent out by opposer’s Consumer
Affairs department to any consumers who call and indicate
they are interested in obtaining opposer’s licensed items.
The catalogs are also used "with our customers for
promotional programs where they need to get these types of
items." Nielsen, p. 11. Although opposer has not made
clear whether these customers are distributors or retail
stores, it is obvious that Mr. Nielsen is not referring to
the general public. In addition, opposer’s sales people use
the catalog to order gifts for opposer’s employees, and
families and friends of employees order licensed merchandise
through the catalogs.
Besides selling licensed items through its catalogs,
opposer has, since 1987, sold its products through a store,
Classic Logos, which is located in a mall in Battle Creek,
Michigan, the city where opposer has its headquarters. The
items sold in the store feature all of opposer’s characters,
including Toucan Sam, and the items which are sold include
t-shirts, mugs, pens, caps and sweatshirts.
Opposer also uses its licensed goods in merchandising
programs with the trade by which a customer could buy, for
example, a Toucan Sam t-shirt if he bought a box of cereal.
Opposition No. 102,734
10
Many of these types of promotions occur each year, and have
for many years. Trade programs also include a "store inside
a store type of setup," in which a store will sell Kellogg
merchandise.
In 1996 opposer ran a one-hour TV program on QVC, a
national cable television channel which sells products via
television to viewers in their homes. The program featured
"Kellogg licensed merchandise," including "a number of
different items which includes again TOUCAN SAM as well as
TONY and CORNELIUS and DIG’EM and t-shirts and caps and mugs
and various things like that." Nielsen, p. 23.
Opposer also sponsors a car in the NASCAR circuit of
races, and at the tracks there are big trailers which carry
"a considerable amount of Kellogg licensed merchandise in
conjunction with our car." Nielsen, p. 23. Mr. Nielsen
testified that in 1998 (the year after his testimony was
taken), opposer planned to feature Toucan Sam on a NASCAR
car.
Finally, Mr. Nielsen testified that in general
opposer’s golf-related products are "very popular with the
trades," p. 27, and for charitable events. In particular,
he said that when opposer sponsors golf outings it always
gives out "Kellogg golf balls," p. 27, and that they are the
most popular item opposer provides. He did not furnish any
information, however, as to when, where or how many golf
Opposition No. 102,734
11
outings opposer had sponsored, nor did he indicate the
specific marks appearing on the golfing products.
Applicant was incorporated in the summer of 1994. It
sells promotional golf-related products, such as bag tags,
divot repair tools, putters, golf clubs and ball markers.
In July or August of 1994 applicant’s CEO, Peter Boyko,
decided to use the name TOUCAN GOLD for golf clubs and
putters, and filed an intent-to-use application for this
mark on December 15, 1994. Applicant has had 1800 clubs
(forming 100 sets with 13 clubs in a set, plus 500 lob
wedges) made for it with the words TOUCAN GOLD engraved on
the club heads. Applicant intends to sell its TOUCAN GOLD
golf sets for $1500, and the individual lob wedge club for
$100 to $150. Applicant also was planning to make other
sets of clubs, which it might call TOUCAN SILVER or TOUCAN
RED.
Applicant’s TOUCAN GOLD clubs are intended to be used
as a promotional product, sold to a corporate account that
might have a golf tournament or want to give something away
to charity. The clubs could also be offered by a company as
an incentive to its customers, e.g., "buy so many cases of
beer and you get a free set of clubs." Boyko, p. 49.
Applicant’s sales target is a company’s decision maker,
executive, or premium buyer. In both 1995 and 1996
applicant exhibited its TOUCAN GOLD golf clubs in four
Opposition No. 102,734
12
"premium" trade shows, two in the United States and two in
Canada. Companies which want to provide premiums as
customer incentives, such as a bank which offers a free
product to anyone opening a new CD account, would attend
such trade shows.
Apart from the trade shows, applicant has not yet
advertised its golf clubs, nor has it created any
advertising or promotional material. Applicant explained
that it decided not to prepare any literature because of the
present opposition.
As a preliminary matter, we point out that, although
opposer alleged in its notice of opposition that applicant
did not have a bona fide intention to use its mark at the
time it filed its application, opposer has not argued this
issue in its brief. Accordingly, we deem opposer to have
waived this claim. We would also add that the evidence
which is of record supports the position that applicant did
have the requisite intent.
Additionally, we note that opposer has asserted
throughout its brief that it owns a family of TOUCAN marks.
Opposer never made such an allegation in its pleading, nor
do we regard this assertion to have been tried.
Accordingly, we have given no consideration to opposer’s
claim of a family of marks.
Opposition No. 102,734
13
The issue before us, therefore, is whether applicant’s
intended use of TOUCAN GOLD for golf clubs and putters is
likely to cause confusion with opposer’s Toucan design and
TOUCAN SAM marks.
First, we note that priority is not in issue with
respect to opposer’s use of Toucan designs for cereal,
cereal-based snack food, and clothing, and TOUCAN SAM for a
cereal-derived snack food, in view of opposer’s
registrations which are of record. King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Apart from the registration of the Toucan
design for clothing, however, opposer does not own
registrations for the collateral merchandise items on which
it uses its marks. Accordingly, opposer’s rights in its
marks for these products are based on common law.
We must say that the evidence opposer has provided with
respect to the use of the Toucan designs or the words TOUCAN
SAM on collateral merchandise is rather vague. Mr.
Nielsen’s testimony about such usage was in very general
terms, and did not provide any concrete information about
sales or the extent of opposer’s advertising, such as the
number of catalogs which had been distributed. Opposer’s
failure to provide definite information with respect to
sales of opposer’s golf balls bearing the Toucan design is
particularly disturbing, since in its brief opposer’s
Opposition No. 102,734
14
discussion of the similarity-of-the-goods factor rests
solely on the relatedness between golf balls and golf clubs.
Detailed testimony regarding sales of golf balls bearing the
Toucan design prior to applicant’s filing date would have
had far more probative value than a "yes" response to "And
would the items featured on that page [of the Kellogg’s
merchandise catalog] generally be available to the public
through this catalog?" Nielsen, p. 12.
Nonetheless, we find that Mr. Nielsen’s testimony,
coupled with the exhibits of record, shows that the catalog
represented in Exhibit 30 was available to the general
public prior to the filing date of applicant’s intent-to-use
application, and that the inclusion in this catalog of golf
balls bearing the design of a toucan (the same mark which is
the subject of Registration No. 1,270,940), is sufficient to
establish that, at the very least, opposer made use
analogous to trademark use by advertising and offering such
items for sale. Accordingly, opposer has established prior
common law rights in the Toucan design mark for golf balls
sold in this particular channel of trade, i.e., opposer’s
own merchandise catalog, distributed to members of the
public who specifically call opposer to request such
merchandise.
This brings us to the issue of likelihood of confusion.
Opposer’s argument seems to be based on formulaic
Opposition No. 102,734
15
pronouncements: opposer’s marks are famous and famous marks
are entitled to a wide latitude of protection; the parties’
marks are substantially identical because TOUCAN is the
dominant part of applicant’s mark, which is the verbal
equivalent of opposer’s famous marks; and golf clubs and
golf balls have an inherent relationship.
Upon closer examination, we find there are several
problems with the steps upon which opposer bases its
conclusion of likelihood of confusion.
First, we find that opposer’s Toucan design marks are
famous for cereal. As indicated previously, opposer has
prominently displayed the design of a toucan on its FROOT
LOOPS cereal since 1963, and the cereal has enjoyed
extensive sales as well as advertising. Moreover, the
Toucan design has been emphasized with various promotions
offered on the cereal boxes, such as the ring toss game in
the form of a toucan, and a stuffed toucan animal. We
recognize that the Toucan design has changed through the
years, and that opposer’s registrations show different
versions of the toucan, but despite the variations in pose
and color, the commercial impression of the designs is that
they depict a single cartoon-like toucan.
However, we cannot agree with opposer that the word
mark TOUCAN SAM is famous for cereal. Although the design
of a Toucan appears to have been used on all of opposer’s
Opposition No. 102,734
16
packaging and advertising for its cereal, it is clear from
the evidence of record that the word mark TOUCAN SAM does
not appear on many of the cereal boxes or on the print
advertising.9 Consequently, we cannot treat the sales and
advertising figures opposer provided for its FROOT LOOPS
cereal as representing sales and advertising with respect to
the TOUCAN SAM word mark. Opposer has not provided any
sales or advertising figures from which we can ascertain the
number of cereal packages or the amount of advertising which
does bear the word mark.
We also take exception to the implications of opposer’s
position that its Toucan design marks are famous. Opposer
appears to take the view that if a mark is deemed to be
famous, it is famous for everything. That, however, would
amount to saying that the owner of a famous mark has a mark
in gross, and that is clearly not true. A mark is used in
connection with particular goods or services, and becomes
famous because of that use. Thus, while we have found that
the Toucan design marks are famous for cereal, there is no
evidence in the record that they are famous for any item
other than cereal, such as golf balls. Thus, although the
fame of a mark plays a dominant role in determining
likelihood of confusion, Kenner Parker Toys Inc. v. Rose Art

9 Opposer did not make of record videotapes of its television
commercials so we cannot ascertain whether the word mark was used
in those advertisements.
Opposition No. 102,734
17
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992), it is not the only factor that should be considered.
With respect to the marks, opposer has, as noted above,
applied a very formulaic approach. Opposer asserts that
TOUCAN is the dominant part of both applicant’s mark TOUCAN
GOLD and opposer’s marks TOUCAN SAM and the Toucan designs,
and therefore essentially ignores the presence of the word
GOLD in applicant’s mark and SAM in opposer’s. We disagree
with that position.
In opposer’s mark TOUCAN SAM, each element of the mark
has a trademark value; neither the word TOUCAN nor the word
SAM as used in opposer’s mark creates a dominant impression.
As for applicant’s mark, there is no evidence that the term
"gold" has a suggestive significance as used with golf
products, nor has opposer made of record any third-party
registrations from which such a conclusion can be drawn.
Applicant’s CEO testified that the word GOLD was chosen for
the mark because the golf clubs have a gold circle design on
them.10 We cannot conclude from the evidence of record that

10 We note that in applicant’s brief it states that gold is
recognized as the top prize in Olympic and other sporting events,
and that the term was intended to identify the highest rank of
its product. However, there is no support for this statement in
the record, and opposer specifically requested that applicant’s
brief be given no consideration. Therefore, we cannot regard
opposer as having stipulated these statements into the record.
Moreover, even if we were to view the word GOLD as a sporting
allusion to first prize, that would not be sufficient for us to
find that the word GOLD, as used in applicant’s mark, is so
Opposition No. 102,734
18
the word GOLD in applicant’s mark is weak or has minor
trademark significance. As with opposer’s TOUCAN SAM mark,
TOUCAN GOLD must be considered a unitary term, with both
elements having an impact on consumers.
When TOUCAN SAM and TOUCAN GOLD are compared in their
entireties, they convey different commercial impressions.
TOUCAN SAM connotes a name; TOUCAN GOLD does not. Because
of the juxtaposition of the words in applicant’s mark, with
the word GOLD following TOUCAN, TOUCAN appears in the manner
of an adjective modifying GOLD, and results in a commercial
impression which is different from that of a toucan bird.
Further, because TOUCAN GOLD creates a different
impression from the word TOUCAN per se, we cannot find under
the case law that applicant’s mark is the equivalent of
opposer’s design marks of a cartoon-like, anthropomorphic
bird. Cf. Squirrel Brand Co. v. Green Gables Inv. Co., 223
USPQ 154 (TTAB 1984). We would also point out that in none
of opposer’s Toucan design marks is its toucan shown in
gold.
This brings us to a consideration of the parties’
goods. In discussing this factor, opposer refers only to
opposer’s golf-related products and argues that the goods

highly suggestive of golf clubs and putters that TOUCAN must be
considered the dominant part of the mark.
Opposition No. 102,734
19
are complementary with applicant’s goods.11 However, the
only evidence of record regarding opposer’s toucan marks
(either the designs or the words TOUCAN SAM) in connection
with golf-related goods is common law use of the Toucan
design shown in Registration No. 1,270,940 placed on golf
balls. To the extent that opposer is relying solely on its
common law rights in the Toucan design for golf balls to
prove likelihood of confusion vis-à-vis applicant's use of
TOUCAN GOLD on golf clubs and putters, that claim must fail.
Opposer has provided evidence of its prior use of the
Toucan design on golf balls sold only through in its own
catalog which is devoted solely to opposer's trademarked
merchandise, and that catalog is distributed only to those
members of the general public who would directly telephone
opposer seeking trademarked merchandise. Opposer's common
law rights in the Toucan design mark for golf balls are thus
limited to that very narrow and specialized channel of
trade. Opposer has failed to prove that the consumers who
would contact opposer directly in their desire to obtain
merchandise bearing opposer's trademarks are likely to be
confused if they encountered golf clubs and putters sold in

11 We note that opposer characterizes applicant as marketing and
selling "clubs, putters, bag tags, divot repair tools, putters
[sic], golf clubs [sic] and ball markers." Brief, p. 16. While
it is true that applicant markets all of these goods, the only
goods for which applicant has applied to use the mark TOUCAN
GOLD, and the only goods on which applicant has testified it
intends to use this mark, are golf clubs and golf putters.
Applicant uses a different mark on the other golf-related items.
Opposition No. 102,734
20
a different channel of trade, particularly when the marks
involved are not the same.
Mr. Nielsen also testified that the 1994 collateral
merchandise catalog which included the golf balls with the
toucan design is "used with our customers for promotional
programs where they need to get these types of items. And
it’s used by our sales people for gifts by our employees,
and families of our employees and friends of employees to
order Kellogg licensed merchandise." P. 11. Again, we find
this testimony to be extremely vague. At most, it indicates
that the catalog was distributed to employees or those
closely associated with opposer, and perhaps to distributors
or retail stores. All of these customers would be
knowledgeable enough about opposer and its merchandising
efforts to realize, if they did encounter applicant’s golf
clubs and putters sold under the mark TOUCAN GOLD, that such
goods were not associated with opposer.
Thus, although we acknowledge that opposer’s Toucan
design marks are famous for cereal, the other factors in
this case, such as the differences in the marks and the
channels of trade for the goods, outweigh the fame of the
mark for goods which are very different from golf clubs and
putters. Further, golf clubs and putters are not
inexpensive items and, because golf is not generally a
child’s game, they are likely to be purchased by adults.
Opposition No. 102,734
21
Accordingly, some degree of care will be exercised in
purchasing these items.
Although opposer has not specifically argued this
point, we think it appropriate to consider the fact that
golf putters can be used as promotional or collateral
merchandise items by various companies, including a cereal
company like opposer. Indeed, the evidence shows that
opposer does use the marks KELLOGG’S and TONY THE TIGER on
golf putters which it offers for sale as collateral
merchandise. Moreover, applicant itself is in the business
of providing promotional items to companies, and has
indicated that it will market its putters under the
trademark TOUCAN GOLF as a vehicle on which companies can
put their logos.
Based on this record, though, we cannot find that
consumers, knowing that companies like opposer have their
marks placed on golf putters, would assume that golf putters
bearing the mark TOUCAN GOLD are sponsored by opposer.
Opposer has not provided any specific testimony with respect
to the offering to the public of putters other than the
information indicated above with respect to the distribution
of its catalogs. Otherwise, opposer has presented some
rather general testimony about the offering of its
trademarked items, e.g., at trailers set up at NASCAR races;
at "store within a store" set-ups; through a one-hour QVC
Opposition No. 102,734
22
television program originating at its headquarters. Opposer
has presented few details about these activities, but it
appears that the trademarked merchandise is set apart in a
specific area devoted solely to opposer’s products.12
Because opposer’s collateral products are advertised and
sold in such an environment, and because of the differences
between opposer’s marks TOUCAN SAM and the Toucan Designs
and applicant’s mark TOUCAN GOLD, consumers are not likely
to believe that applicant’s TOUCAN GOLD golf clubs and
putters are associated with opposer. Further, any consumer
who is familiar enough with the use of marks on collateral
items, such that they would recognize that a cereal company
could be associated with golf clubs and putters, would also
be familiar with the fact that collateral merchandise would
carry the identical mark that is used on the primary
product. See Viacom International, Inc. v. Kermit Komm et
al, 46 USPQ2d 1233 (TTAB 1998) (in finding no likelihood of
confusion between MY-T-MOUSE and design and MIGHTY MOUSE,
the Board stated, "Because merchandising marks are exploited
for their connection to the exploited property, consumers
would not expect that applicants’ goods bearing the mark MY-
T-MOUSE with an abstract mouse design emanate from or are
sponsored by opposer.")

12 If, in fact, opposer’s collateral products are displayed in
close proximity to similar products of other companies, it was
incumbent on opposer to provide evidence of this.
Opposition No. 102,734
23
TOUCAN GOLD is clearly not the same as the design of a
toucan that appears on opposer’s cereal box and on its golf
balls, nor is it the same as the character name TOUCAN SAM.
Thus, anyone who is aware of opposer’s marks and thus could
be confused by the use of such marks on collateral products
would be equally aware of the differences between TOUCAN
GOLD and opposer’s Toucan design marks, and know that
opposer would not use such a mark on collateral merchandise.
Opposer has also argued that the parties’ trade
channels overlap because both intend that their products
will be distributed "either as premium incentive items to
the general public or to company executives as performance
incentives." brief, p.16. As a preliminary matter, we note
that opposer has not provided any evidence that golf putters
displaying any of its trademarks are distributed in either
of these ways. Further, there is a distinction between
premium incentive items distributed to the general public
and performance incentives provided to company executives.
Company executives to whom applicant may market its goods to
be used as performance incentives, or retailers or
distributors who receive such incentives, must be regarded
as sophisticated in the ways of the trade. They would
immediately realize, if applicant were to attempt to sell
them its TOUCAN GOLD golf clubs for their own use as

Opposition No. 102,734
24
promotional items, or if they were in turn given TOUCAN GOLD
golf clubs by a company using the clubs as incentives, that
applicant and its clubs are not associated with opposer.
As for the general public, opposer has provided very
little evidence as to how members of the public at large are
given collateral merchandise as a premium or incentive item.
Mr. Nielsen testified that licensed merchandise is used by
customers for promotional programs, but he did not provide
any details of such programs. The evidence that we do have
is that opposer has long engaged in offering promotional
premiums with opposer’s cereal packages, e.g., games in
exchange for cereal box tops, or has offered the collateral
products as in-store purchases with the cereal, e.g., buy a
box of cereal and purchase a t-shirt, too. There is no
evidence that opposer, or any company, has ever offered to
the general public golf clubs or putters or even golf balls
as a premium or purchase in connection with boxes of cereal,
e.g., where one could send in box tops to obtain a golf club
or putter, nor is there evidence that opposer or any company
has made available in stores golf clubs or putters or golf
balls for sale if one purchases boxes of cereal or, for that
matter, any product. In any case, because of the manner in
which opposer makes available its free or incentive
promotional items, they are so closely tied to opposer’s
cereal that consumers would not associate golf clubs and
Opposition No. 102,734
25
putters not provided in this manner, and sold under the mark
TOUCAN GOLD, with opposer.
In the Recitation of Facts section of its brief opposer
mentions that in one instance applicant’s advertising
materials depict "the corporate logo of QUAKER OATS, a
direct competitor," on a putter. p. 7. We would point out
that the putter involved is not a TOUCAN GOLD putter;
rather, it is sold under a different trademark of applicant.
Opposer does not further discuss how confusion is likely to
result even if applicant were to apply other companies’
logos to its TOUCAN GOLD golf clubs and putters, and we
think it inappropriate to try to devise speculative
scenarios which could possibly lead to confusion. What we
must determine in this proceeding is likelihoood of
confusion, not vague possibilities of confusion. Based on
the record before us, with the very limited information
about how promotional or incentive items are distributed, it
appears that any golf clubs and putters emanating from
applicant and bearing another company’s logo would be
distributed only to those who are sophisticated and
knowledgeable about such promotions. Such persons would not
only be very aware that primary marks are featured on a
collateral product, but would realize that TOUCAN GOLD
appears on applicant’s clubs and putters as a manufacturer’s
Opposition No. 102,734
26
mark, and that the manufacturer is not connected with the
company using the club or putter as an incentive item.
Opposer also suggests that applicant may have adopted
the mark TOUCAN GOLD in bad faith. Applicant’s CEO admitted
that he had seen opposer’s toucan design on cereal boxes,
and had probably seen opposer’s FROOT LOOPS cereal at both
opposer’s headquarters, which he had visited in an attempt
to sell opposer promotional merchandise, and on store
shelves. Applicant also uses the design of a toucan on his
stationery. The fact that applicant’s CEO knew of opposer’s
toucan design mark for cereal does not prove that applicant
adopted the mark TOUCAN GOLD for golf clubs and golf putters
as an attempt to trade on opposer’s famous mark.
Applicant’s CEO has explained that he chose the mark TOUCAN
GOLD because bird terms are used in the sport of golf, e.g.,
a "birdie" and an "eagle." In view of the differences in
the marks, and the differences in the goods, we simply
cannot regard applicant as having adopted TOUCAN GOLD in bad
faith.13

13 Opposer also points to applicant’s use of a fanciful colorized
toucan bird in its promotional documents. Applicant does use
such a design in a promotional brochure, but this brochure is for
products sold under the mark TOUCAN GOLF. As opposer has noted,
applicant does not have any promotional materials for its TOUCAN
GOLD products. We make no comment on whether applicant’s use of
TOUCAN GOLF and the toucan design is likely to cause confusion or
whether, if applicant were to use the fanciful toucan design with
TOUCAN GOLD, confusion could result. Our determination must be
based on the mark for which registration is sought, considering
any evidence as to how that mark is used. See Saks & Company v.
Snack Food Association, 12 USPQ2d 1833 (TTAB 1989) (opposer’s
Opposition No. 102,734
27
Upon careful consideration of all the relevant duPont
factors we find that opposer has failed to prove, by a
preponderance of the evidence, that applicant’s use of
TOUCAN GOLD for golf clubs and golf putters is likely to
cause confusion with opposer’s marks TOUCAN SAM and various
Toucan designs, used for cereal, clothing and various
collateral items of merchandise.
Decision: The opposition is dismissed.
R. L. Simms
E. J. Seeherman
H. R. Wendel
Administrative Trademark Judges
Trademark Trial and Appeal Board

argument that mark for association services might be likely to
cause confusion if members were to use mark on goods to indicate
membership in applicant is irrelevant; determination in
opposition proceedings must be based on a consideration of the
identified services, and not whether confusion is likely in
connection with activities for which no application has been
made.) Further, we cannot speculate on the commercial impression
conveyed by applicant’s mark if it were used with a particular
trade dress, when there is no evidence that the mark is, in fact,
used with such trade dress. Cf. Specialty Brands, Inc. v. Coffee
Bean Distribs., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984).