TOUCANS Steel Drum Band

toucans@blarg.net

STEEL DRUMS VS. BREAKFAST CEREAL?

The band's name is a play on the words "two cans", referring to the large oil barrels from which their instruments are made. Although the band members bear only a slight resemblance to large-beaked tropical birds, the Toucans have made themselves known throughout the Northwest by their energetic performances at outdoor festivals and fairs over the last eight years. It was not until they attempted to register their name "TOUCANS" as a trademark that they encountered opposition from the Kellogg Company, claiming that the "...TOUCANS (name) is a simulation and colorable imitation..." of the TOUCAN SAM bird design.

Trademark law typically protects a name used in connection with a specific category of goods in order to prevent the buying public from being confused between two products. Anyone who has heard the Toucans play or owns a copy of their CD would not likely confuse a Toucans performance with a box of cereal. In fact, upon receiving the Toucans' trademark application, the US Patent & Trademark Office stated that "the mark appears to be entitled to registration".

In spite what seems to be a corporate attempt at intimidation, the Toucans have chosen to continue pursuing their interests in this matter. They have sought legal representation with Seattle music attorney, Neil Sussman, who points out that "it certainly can not be argued that the Kellogg Company has obtained the exclusive right to use the image of a toucan bird in all fields of commerce."

Indeed, colorful toucans are a popular decoration on everything from beach towels to refrigerator magnets. Found in the tropical rainforests of South America, the noisy, gregarious toucan is often thought to be the incarnation of a demon by the people who live there, and is usually associated with evil spirits. "Why the Kellogg Company should want to be promoting its products with a reputedly demonic creature is beyond me," says band member Pete Remine.

The Toucans have been commanded to testify in front of Kellogg's lawyers at a deposition beginning March 20, 1995. Ultimately, a decision will be made by the U.S. Patent and Trademark Office, hopefully one which will prevent corporations from holding monopolies on individual animal species.

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RECENT DEVELOPMENTS

- Individual members of the Toucans have been subpoenaed against their will to testify in depositions taken by the Kellogg Company! At 8 am, outside an elementary school where the Toucans were setting up for one of their musical education workshops, the band members were delivered subpoenas, each obscured by an attractive-looking check for $50.

How did Kellogg's know the band was going to be there? The Toucans were mystified until recalling that earlier in the week, a person posing as a reporter from San Jose (where the law offices of the attorneys handling Kellogg's opposition are located) called the Toucans under false pretenses. This "reporter" obtained the location of the performance and the band members' names from the band's manager, then apparently passed along the information to the law firm handling the case

Needless to say, the "reporter" never showed up for the interview.

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- One of the key trademark issues of this case was also clarified recently. The Kellogg Company claims that they have established trademark rights in the field of recorded material due to their usage of promotional recordings featuring Toucan Sam. After numerous requests, Kellogg's finally produced evidence of three promotional records, offered in 1983 and 1984 only.

Trademark rights are established by CONTINUING usage, not by previous and discontinued usage, and the Toucans have been offering their services and products continuously for the past 8 years. Kellogg's has no claim to trademark rights in Class 9 (recorded material) based on discontinued promotional recordings issued over a decade ago, whereas the Toucans have very clearly established a continuing usage in the field.

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- The Kellogg Company has also refused to produce documents related to the case. During the process of discovery, the Toucans produced all relevant information and documents requested by Kellogg's in a timely manner. The band submitted a similar set of Interrogatories and a Request for Production of Documents to Kellogg's, but Kellogg's refused to provide the requested information, claiming that our requests constituted harassment of their company!

Clearly, the Kellogg Company is not dealing with us in good faith, and is employing obstructive tactics. Since every lawyer we've talked to feels that we have a clear case for receiving our trademark, it seems apparent that Kellogg's is trying to prevent the case from getting to a hearing by prolonging the legal process until we can't afford to pursue it anymore. There's a good chance that their tactics may succeed, as they are a multi-national corporation, and we are not.

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