'Tony the Tiger' v. 'Cartoon/Whimsical Tiger' Trademark Suit Reinstated

Supreme Court renews dispute between cereal maker and petroleum giant over their tiger trademarks.

By Larry Berglas
USLaw.com Columnist

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Can you tell the difference between the tiger on the cereal box from the one in your tank? The makers of Frosted Flakes say no, that you're probably confused by the different, striped cartoon felines that both the Kellogg Co. and the Exxon Corp. claim as their trademarked mascots.

Last week, the U.S. Supreme Court breathed new life into the lawsuit Kellogg filed several years ago against petroleum giant Exxon in an attempt to resolve that issue. In the lawsuit, Kellogg alleged that the gas cat symbol infringes on its "Tony the Tiger" mark. The high court refused to hear Exxon's appeal of a lower court holding that overturned an earlier trial court ruling to dismiss the case.

In October 1996, Kellogg sued Exxon in federal court in Tennessee, claiming trademark infringement in violation of Section 1114 of the Lanham Act-the key federal trademark law. Kellogg's claims against Exxon arose after Exxon let the cat out of the tank. Kellogg claimed the Exxon's expanded use of its "Cartoon Tiger/Whimsical Tiger" figure to sell food products infringed its "Tony the Tiger" trademark and caused consumer confusion.

The trial court originally dismissed the lawsuit, granting Exxon's motions based in part upon Exxon's affirmative defense of "acquiescence." Exxon had successfully argued that Kellogg knew for a long time that it was using a tiger logo and accepted it by not previously challenging it.

Appeals Court Ruled Suit Should Go Forward

However, on April 6, the U.S. Court of Appeals for the 6th Circuit ruled that Kellogg may go forward with its trademark suit against Exxon. Exxon took the position that too much time had elapsed since the tiger characters first appeared on the public scene some 30 years ago and sought to have the matter heard by the Supreme Court.

But the Supreme Court declined, clearing the way for a trial, slated for early next year in the original Tennessee federal court.

According to the 6th Circuit's decision, both parties had employed their tiger characters in the past without opposition from each another. Exxon obtained a trademark for its cartoon tiger with no opposition from Kellogg. Kellogg apparently knew of the Exxon tiger when it registered the "Tony the Tiger" trademark overseas at one point. Both parties acknowledged the existence of the tiger characters in the marketplace for several decades.

Exxon's Use of Tiger to Sell Food

So what brought the parties to court so much later? The focus by Kellogg is Exxon's use of the tiger character to promote convenience stores attached to Exxon's gas stations. The court of appeals noted that "it was not until the early 1990s that Exxon began to use its cartoon tiger to promote the sale in those stores of certain foods and beverages, such as Domino's Pizza, Coca Cola, Pepsi Cola, Lay's Potato Chips, and Dunkin Donuts. Exxon also began using its cartoon tiger to promote its own private label beverage, "Wild Tiger," and its own private-label coffee, "Bengal Traders."

Kellogg's "Tony the Tiger" has been used to promote Kellogg's Frosted Flakes since the 1950s.

The legal question ultimately to be decided by the courts is whether Exxon's use of its tiger character causes confusion in the marketplace with Kellogg's tiger character.

Will the average consumer be confused as to where certain products come from or who makes the products due to the use of both tiger characters in the marketplace?

Eight Factors in Lanham Act Violation

The 6th Circuit in Kellogg Company v. Exxon Corporation noted in its decision that the court must look at eight factors in determining whether the Lanham Act was violated: "1. strength of the senior mark; 2. relatedness of the goods or services; 3. similarity of the marks; 4. evidence of actual confusion; 5. marketing channels used; 6. likely degree of purchaser care; 7. the intent of defendant in selecting the mark; and 8. likelihood of expansion of the product lines."

If Exxon's cartoon tiger helps to sell food products, does Exxon's cartoon tiger compromise the value of Kellogg's "Tony the Tiger?" Despite the intricacies of the analysis, judgment still boils down to the question of confusion and public perception. And consider the substantial economic investment both Kellogg and Exxon have applied to their respective tiger characters. For the companies involved, the stakes are high.

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