Serious Tony

Bloomberg News
April 18, 2000

CINCINNATI Tony the Tiger is entitled to his day in court, a panel of federal appeals court judges has ruled.

Kellogg, which makes seven of the world's ten favorite cereal brands, can ask a jury to decide if Exxon Mobil infringed on the trademark for the cartoon tiger, who has been pitching Frosted Flakes cereal for nearly half a century, the 6th Us Circuit Court of Appeals ruled.

The ruling, reversing the decision by a federal trial judge in Memphis, TN, lets the Battle Creek, Mich.-based cereal maker press its lawsuit over Exxon Mobil's use of a cartoon tiger in ads promoting consumer goods.

Kellogg contends Exxon Mobil encroached on the Tony the Tiger trademark when it began employing its "Whimsical Tiger" to tout the sales of foods and beverages, instead of just petroleum products.

The tigers got along fine for decades, in two of the US advertising industry's most successful, long-term marketing campaigns.

Irving, Texas-based Exxon Mobil, which unveiled its tiger in 1959, used the character in the popular 1960s commercials that urged motorists to "Put a tiger in your tank!".

Tony the Tiger -- a cuddly feline as familiar to US Saturday morning television viewers as Bugs Bunny and the Roadrunner -- has been telling consumers since 1952 that Kellogg's sugar-frosted corn flakes are "grrREAT!".

The trouble began when Exxon Mobil, the world's largest publicly traded oil company created last year with Exxon's $87 billion purchase of Mobil, began using its tiger in the 1990s to promote a wider range of products and its Tiger Mart convenience stores.

Kellogg sued, but US District Judge Julia S. Gibbons dismissed the case in 1998, ruling that Kellogg had forfeited its claim when it allowed Exxon Mobil's tiger to be registered with the US Patent and Trademark Office in 1965. The judge noted that Kellogg didn't object to Exxon's use of the character to promote gasoline sales.

In reversing the decision last week, the Cincinnati-based 6th US Circuit Court of Appeals concluded, "Kellogg did not acquiesce [however] in Exxon's use of its cartoon character in connection with the sale of nonpetroleum products."

Federal law allows a trademark owner to stop others from utilizing protected images if the use is likely to confuse consumers.

"The two marks peaceably co-existed, each catering to its own market," when Exxon Mobil used its tiger to sell gas and Kellogg used its tiger to sell cereal, the three-judge appellate panel ruled.

However, the court said, Kellogg never consented to Exxon Mobil's use of the tiger to promote sandwich and soda sales.

"[The trial court's] failure to distinguish between Exxon's sale of petroleum and nonpetroleum products resulted in the clearly erroneous conclusion that Kellogg acquiesced in Exxon's use of its cartoon tiger to promote and all of its products," the appeals court said.

The court concluded that Kellogg can ask a federal court to order Exxon Mobil to stop using its tiger to promote nonpetroleum products and to award damages and attorney's fees.

Exxon Mobil officials were not immediately available for comment.