Earlier this year in September, fellow IP Blogger Seth Dennis commented on a lawsuit the Kellogg’s cereal company had threatened against the Maya Archaeology Initiative (“MAI”) for trademark infringement.  The threatening mark was a picture that included a side-view of a toucan placed in front of a Mayan temple.  Kellogg felt, at the time, that this mark was too closely related to their “famous” Toucan Sam, which adorns the front of Fruit Loops boxes worldwide.  In a letter dated July 19, Kellogg’s corporate counsel expressed the concern of “both consumer confusion and a dilution of (Kellogg’s) strong equity in these marks.  Kellogg is also concerned by the inclusion of the Mayan imagery in the mark, given that our character is frequently depicted in that setting.”

Kellogg seemed to not give a hoot when self-policing its “Toucan” trademark. If Kellogg had, the company likely chosen not to enforce its rights against MAI.  MAI is a project of the California-based World Free Press Institute (“WFPI”), a non-profit that defends free expression and challenges repression of cultural heritage issues.  If attacking a non-profit over the use of a not-really-similar mark is not enough – Kellogg argued that Toucan Sam is often seen in a Mayan environment.  This “environment” turned out to be an online video game in a Mayan setting where the only character of color was an evil witch doctor who steals.

Realizing that the two marks were not likely to be confused and that any confusion would be caused by a culturally insensitive depiction of the Mayans, MAI and the WFPI launched a public relations attack on Kellogg.  Backed with an extensive knowledge of the media and reporting, (WFPI’s co-founder Clay Haswell worked for the Associated Press for 18 years before helping to start the non-profit) MAI began to send out charged statements like this one: “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.” It was not long after the initial cease and desist letter from Kellogg that the large cereal corporation began to receive a great deal of press. To their credit, Kellogg immediately took down the offending online game and began settlement discussions with MAI once they realized their mistake.

Usually settlement agreements aim to reach a middle ground, but because of the lack of judgment Kellogg showed in self-policing (or bullying) its trademark, MAI has come out of this as the clear winner.  According to the Battle Creek Enquirer, discussions between Kellogg and MAI led Kellogg to be satisfied that their trademark is not in danger.  In the same report, MAI spokesperson Sam Haswell stated that in an act of good corporate citizenship, “Kellogg made it clear that they wanted to be part of the solution rather than part of the problem. When they understood some of the issues facing Mayan culture, they decided to come to the table and be part of the solution.” What exactly does coming to the table mean?  In this case, it means donating a lot of money.

In a joint statement released November 15, Kellogg has agreed to make a $100,000 contribution “to help launch one of the MAI’s priority projects to improve the lives of the Maya people in a region rich in cultural heritage but lacking in access to education and economic opportunities.”  The project referred to is a Mayan cultural center that will feature classrooms and storage areas to protect Mayan antiquities. Along with the generous donation, Kellogg will also feature “major Mayan accomplishments and a link to the MAI website on Kellogg’s Fruit Loops cereal boxes next year.”

My colleague Mr. Dennis was on point in analyzing that the move to threaten legal action may do more “damage to the brand’s goodwill than any (and extremely unlikely) confusion that may arise.”  Luckily for Kellogg, they realized their mistake early and have done their best to work with MAI and restore the corporation’s public image before it ran a-fowl.

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