Toucans
Steel Drum Band Steel Drums vs. Breakfast Cereal? May 10, 1995 - Kellogg Company misleads the public again.
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 (which includes sound recordings) to protect their name. The band was stunned when opposition to their application was filed by the Kellogg Company, which claims infringement on their "Toucan Sam" trademark (in class 30, which includes cereal-derived food products), as well as damages caused by the band's name!
The Toucans have always been willing to make generous concessions
which protect the exclusivity and use of Kellogg's "Toucan
Sam" and toucan bird design trademarks. However,
the "settlement" proposals
that the Kellogg Company have offered involve severe restrictions
on the group and their use of the name, as well as demanding the
withdrawal of the Toucans' trademark application for the name
of their band!
Meanwhile, as the band's publicity efforts reach a national audience via public radio, news sources, and the internet, Kellogg's is responding with misleading statements and out-and-out lies. The following is the Toucans' response to the information put forth by Kellogg's Consumer Affairs Department.
(Kellogg's text blocked)
Thank you for your letter regarding an
administrative procedure before the U.S. Trademark Office between
Kellogg Company and a four-member band called Toucans Steel Drum Band.
Even the introductory sentence is inaccurate. As the Kellogg Company is already well aware, the band's name is and has always been "Toucans", not "Toucans Steel Drum Band", even though they are sometimes referred to by that name descriptively, just as the name of Kellogg's cereal is "Froot Loops", and not "Froot Loops Sweetened Multigrain Cereal".
Kellogg Company has never objected to the use of the group's name,
Toucans Steel Drum Band.
As stated, the group's name is "Toucans" (derived from a pun on the instruments they play, "two cans"). Furthermore, the Kellogg Company has very definitely objected to the band's name in their formal opposition, claiming damages and infringement.
However, Kellogg Company is trying to defend its registered
trademarks, Toucan Sam® and the design of a Toucan® bird.
The claim of defense is misleading as the Toucans have repeatedly stated that they will in no way challenge or oppose the use of Kellogg's registered marks in ANY form of commerce, including sound recordings. Moreover, the Kellogg Company incorrectly uses the registration symbol (®) on the word "toucan". To our knowledge, based on a search of the Patent & Trademark Office's records, the Kellogg Company does not own any trademarks for the word "toucan".
In addition, their use of the word and the registration symbol in this letter seems to indicate that Kellogg's believes that they invented the bird! This is obviously absurd, and only serves to underscore Kellogg's self-serving egotism.
Even though Kellogg's rights to the Toucan® name have long been
legally established, the band is attempting to gain rights for all
"phonographic records, pre-recorded cassette tapes, compact discs and
digital media featuring music" exclusively for the Toucans name by
filing its trademark application. This could prevent Kellogg from
using its own trademarks on musical recordings, such as the Toucan
Sam® records offered to consumers in 1984.
As previously stated, Kellogg's has no trademark registration
for the word
"toucan". This seems to be another lie designed to mislead
the public about this matter.
Although a registration of the name "Toucans" could
theoretically be used to prevent Kellogg's from marketing musical
recordings, the Toucans have already offered to agree never to
challenge or oppose Kellogg's registered marks or their use in
any class. The Kellogg Company again distorts the facts of the
matter to mislead public perception.
Although there is no lawsuit, we will continue to attempt to settle
this matter.
The Toucans have never mentioned a lawsuit in any of their
public news releases. Kellogg's lawyers have also indicated that,
should a decision be rendered by the Patent & Trademark Office
in favor of the Toucans, they would appeal the decision.
Given their overly restrictive settlement proposals, and their
hard-line position on the Toucans' withdrawal of their trademark
registration application, it seems as if the Kellogg Company has
confused "settlement" with "surrender".