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!
After almost a year of expensive legal negotiations, the Toucans are now willing to make generous concessions to reach an out-of-court settlement. The main compromise of the proposed agreement, initially suggested by Kellogg's, is that the Toucans withdraw their trademark registration application from Class 9 (including sound recordings) upon registering the band's name in Class 41 (entertainment services). The Toucans are looking forward to a fair and equitable resolution of this trademark dispute, hopefully one which will not restrict the creative rights of the band.
Although the switch from Class 9 to Class 41 means that the Toucans won't be getting federal protection for their compact discs and cassettes, but instead for the service of the group's performances, the band's lawyer, Neil Sussman, believes that established common-law protection for band-related merchandise will protect the Toucans' good name.
In related trademark news, Hormel Foods Corp. recently sued Jim Henson Productions over the use of a large pig character named Spa'am, featured in an upcoming Muppet movie. Hormel claimed that the "fearsome boar" would tarnish the reputation of its canned food product. But U.S. District Judge Kimba Wood struck down the suit, saying that it was unlikely that anyone would confuse the two. "SPAM is a luncheon meat. SPA'AM is the character of a wild boar in a Muppet motion picture. One might think that more need not be said."
While they wait for a response from Kellogg's legal department, the Toucans are spending their time in the studio recording a new album of original music, in public schools teaching kids about the history of the Steel Drum, and traveling the Northwest promoting their tasty new Dinner Cereal.
©1996 Toucans - All Rights Reserved