Kellogg’s Toucan Sam Asserted Against Archaeology Initiative

As I perused some press releases earlier today looking for something interesting to write about I stumbled across one put out by the Maya Archaeology Initiative, which claims that the Kellogg Company is threatening it with some unspecified legal action if it does not cease and desist using a logo that incorporates a toucan.  Although the press release is anything but clear as to the genesis of the dispute or the asserted wrongdoing made by Kellogg’s, it does seem relatively clear that Kellogg’s is saying that the familiar, perhaps famous, Toucan Sam cartoon character (see left) is being infringed by use of a toucan in the Maya Archaeology Initiative logo.

Threatening trademark letters are a dime a dozen in our industry. Frankly, most people and businesses don’t know what rights they have with respect to using a name, design or slogan in their business, so when they get a threatening letter that promises to destroy them and their business they simply capitulate. Scare tactics are nothing new in the trademark world, and much has been written about over zealous attorneys making statements in such threatening letters that simply aren’t true and clearly mischaracterize the law. In fact, the United States Patent and Trademark Office commenced a study earlier this year on abusive trademark litigation tactics. See Request for Comments: PTO Trademark Litigation Tactics Study.  But is this an abusive assertion by a rights owner or is the Maya Archaeology Initiative just trying to play the role of victim to gain public favor?

“This is a bit like the Washington Redskins claiming trademark infringement against the National Congress of American Indians,” said Dr. Francisco Estrada-Belli, president of the Maya Archaeology Initiative (MAI) and a globally recognized expert on Maya archaeology and culture.

Really?  Is this a case of gross over-reaching and unjustified coercive activity by a trademark owner, as the Maya Archaeology Initiative would like everyone to believe?  Is Kellogg’s asserting rights relative to a cartoon toucan used to sell Froot Loops® at all like the Washington Redskins of the National Football League claiming trademark infringement against an American Indian organization?  For that comparison to be at all legitimate it would seem that a toucan would have to be synonymous with either Mayans or Archaeology, which seems an extraordinary stretch if you ask me.

MAI's logo

According to the Maya Archaeology Initiative press release, a detailed response was sent by their legal representative to Kellogg’s, which among other things asserted that the toucan in MAI’s logo looks nothing like Kellogg’s cartoon character and said the two entities are not in competition. The press release goes on to say that the MAI’s logo is based upon a realistic toucan native to Mesoamerica, while Kellogg’s Toucan Sam is a cartoon character with colors that represent the Froot Loops® food coloring.

Really?  Wow!  Let’s take those one at a time.

First, do the toucan’s in question look anything alike?  I suppose there are differences and I suspect many will say that they are not all that similar in appearance, so even if I am not willing to side with MAI on the totality of their position I will concede that this assertion has at least some basis in reality.

Second, Kellogg’s and MAI are not in competition?  You might be tempted to want to side with MAI on this front, after all they are an organization that seeks to preserve the integrity of the Maya Biosphere Reserve as a cultural and natural landscape for the benefit of the local communities. But what if I told you that they filed a trademark application on June 15, 2010 to obtain rights for use relating to clothing products, such as t-shirts and hats? See Serial No. 85062781.   What if I further told you that their trademark was published for opposition on March 15, 2011 and has yet to be granted?  Doesn’t Kellogg’s Company put Toucan Sam on clothing products? So the “we don’t compete with you” argument seems specious given the classification under which MAI, by and through their partner (i.e., benefactor) World Free Press Institute, seeks protection for their mark.

Third, is the MAI toucan realistic and the Kellogg’s toucan merely a cartoon character? How could anyone actually make such an absurd argument? Clearly, the MAI toucan is also a cartoon-like character and not at all a realistic toucan. For the life of me I just don’t understand why attorneys make specious arguments like that, but I know that they do. Does a clearly specious argument ever help? As a rule of thumb if what you are arguing could be converted directly into a legalesque Monty Python skit the argument won’t work and it will only hurt!

The MAI press release also contained this call for Kellogg’s to stop attempts to enforce its rights, made by Estrada-Belli, a Guatemalan national whose organization promotes education opportunities for Maya children, archaeological work and defense of the rainforest:

Kellogg’s products are a staple of many Guatemalan households. We expect a brand that is so familiar to children to play a role in supporting cultural and racial understanding around the world, rather than undercutting it by promoting demeaning racial stereotypes.

We expect better from the Kellogg Company? So because they sell products in Guatemala that means that the Kellogg Company shouldn’t seek to protect and enforce rights they have lawfully and legitimately obtained when they believe someone is infringing, even if the infringer is a non-profit and/or do-good organization?  I’m not sure a “we should be able to trample your rights because of the children” argument is a defense to trademark infringement.

Who knows what will transpire moving forward.  Nevertheless, attempts by the Maya Archaeology Initiative to play the role of victim at the hands of an abusive international corporation seems greatly exaggerated if you ask me.