For the past couple years, General Mills has battled to register a yellow color mark in connection with its Cheerios® breakfast cereal.  More specifically, back in 2015, General Mills applied to register (Serial No. 86757390) the mark shown below, described as “the color yellow appearing as the predominant uniform background color on product packaging for the goods,” in connection with the goods “toroidal-shaped, oat-based breakfast cereal.”  (For those wondering, “toroidal-shaped” basically means doughnut-shaped.)  Below is the drawing of the mark:

The use of colors — even a single color alone — on a product or its packaging may be subject to trademark protection and federal registration. For example, in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the Court held that the greenish-gold color of dry cleaning press pads was protectable as a trademark. As another example, in Christian Louboutin, S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012), the Second Circuit recognized that the use of red lacquered outsoles on shoes is a protectable trademark (provided that such protection is limited to shoes in which there is contrast between the red outsole and the adjoining shoe, and does not extend to monochromatic red shoes).

However, there are relatively steep requirements to obtain a trademark registration for a color mark. To obtain a federal registration for a color mark on the Principal Register, it must be shown that the mark has acquired distinctiveness (also referred to as secondary meaning). This is so because the U.S. Supreme Court has held that color marks can never be inherently distinctive as a source indicator, and therefore the applicant must submit evidence establishing acquired distinctiveness. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-212 (2000) (citing Qualitex, 34 USPQ2d at 1162-63); see TMEP § 1202.05(a). Also, as with other types of marks, registration for a color mark will be refused if the mark is functional, such as where there is a utilitarian advantage (e.g., yellow or orange for safety signs), or where a certain color is more economical or competitively advantageous (e.g., where a certain color is a natural by-product of manufacturing, and using other colors would be more expensive). See TMEP § 1202.05(b).

A couple weeks ago, General Mills received some bad news from the Trademark Trial and Appeal Board (TTAB), which affirmed a refusal to register the applied-for yellow color mark, shown above. In re General Mills IP Holdings II, LLC, Serial No. 86757390 (TTAB Aug. 22, 2017) (precedential). The Board recognized the extensive body of evidence submitted by General Mills, showing the company’s longtime, expansive efforts to create an association between the yellow product packaging and the Cheerios® brand cereal. See id., slip op. at 5-9. For example, numerous print and television advertisements focused on the yellow product packaging, or specifically referred to the phrase the “yellow box” or the “big yellow box.” Id. at 7. However, the Board emphasized that “no matter how hard a company attempts to make an inherently nondistinctive word or symbol serve as a unique source identifier, it is proof of results—that consumers so perceive the purported mark—that is the touchstone of our inquiry into acquired distinctiveness.” Id. at 8.

In the end, the primary basis for the Examining Attorney’s refusal, and the TTAB’s affirmance of that refusal, was the lack of substantially exclusive use of the color yellow by General Mills. Id. at 11-21. The record established that several competitors offered the same goods–toroidal-shaped, oat-based cereals–in yellow, rectangular packaging of similar proportions, such as the brands Trader Joe’s, Meijer, Wegmans, Nature’s Path, One Degree, Ralston, and Barbara’s. See below the product packaging for those cereals:

The TTAB reasoned that “Applicant is not alone in offering oat-based cereal, or even toroidal-shaped, oat-based cereal, in a yellow package,” and that “[t]he presence of products of this type in the marketplace interferes with the development among relevant customers of a perception that the color yellow on packaging indicates that Applicant is the source of the goods (or that there is any single source of such goods).” Id. at 16. The TTAB also referred to numerous other yellow boxes for various types of oat-based cereals that, even if not “toroidal-shaped,” which further detracted from any public perception of yellow packaging as a source-indicator for Applicant, as cereal manufacturers commonly offer many different brands and varieties of cereals side-by-side in stores. Id. at 17-18.

Therefore, the TTAB concluded that “the number and nature of third-party cereal products in yellow packaging in the marketplace [is] sufficient to convince us that consumers do not perceive the color yellow as having source-indicating significance for [Applicant’s goods].” Id. at 19.

What do you think about this decision? Separate and apart from the name “CHEERIOS” itself, do you associate predominantly yellow product packaging with General Mills and its (doughnut-shaped, oat-based) cereal?

  • stevebaird

    Tucker, very nice post, thank you, this is a very interesting and important decision. At the outset, I must say, that I have complete confidence in and respect for the talented Pirkey Barber team that handled this case for General Mills, they are among the best of the best, so my questions here assume there are valid reasons for the various strategic and business decisions made along the way in this case. With that said, one question I’d ask: Would the TTAB result change if General Mills had sought a narrower trademark claim as opposed to describing the mark as “the color yellow appearing . . . .” Would that have helped differentiate from many of the other cereal products on the market? If so, what if a particular shade of yellow were claimed as General Mills’ trademark? For example, 3M owns a distinctive single color mark for “canary yellow” in connection with its Post-It note stationery note products. More to the point of a narrower claim and giving the would-be trademark color a distinctive name, the Prince Estate just announced a deal with Pantone for a Prince Purple Pantone, so if there isn’t a Cheerios Yellow Pantone, should there be? Would it have aided the Board in going the other way? There are over 1,400 live applications/registrations referring to a particular Pantone shade in the description of the mark field. When operating in the world of non-traditional trademarks, I continue to believe it’s helpful to give the non-verbal mark a name, I’d call it Cheerios Yellow, but the consequence of that approach is probably to live with a narrower set of rights. Yet, it might be a better place to start, after all, trademark rights are dynamic, they can shrink or grow over time, depending on market conditions. For what it’s worth, the word Pantone appears nowhere in the TTAB decision.

    • Tucker Chambers

      Thanks Steve! This decision does raise a number of interesting questions, both about approaches for prosecuting color-mark applications as well as the impact on other decisions.To follow up on your thoughts regarding Pantone colors, another interesting decision I came across is: T-Mobile US, Inc. v. AIO Wireless LLC, 991 F. Supp. 2d 888, 896, 932 (S.D. Tex. 2014), in which a district court found that Deutsche Telekom AG and T-Mobile US, Inc.’s (“T-Mobile’s”) magenta color (see Supp. Reg. Nos. 3263624, 3263625) had acquired distinctiveness in the wireless-telecommunications industry. T-Mobile’s application described the mark as “the color magenta alone, which is the approximate equivalent of Pantone Matching System, Rhodamine Red U, used on the background of product displays and advertisements found in a store.” The district court granted T-Mobile’s request for a preliminary injunction against defendant AIO Wireless LLC’s “use of large blocks or swaths of Pantone 676C and confusingly similar shades in its advertising, marketing, and store design.”

  • James Mahoney

    Ya learn something new every day from DuetsBlog. From now on, I’m going to order a jelly toroidal with my morning java.

    • Tucker Chambers

      Hah! Thanks for stopping by James, always glad to mix in some bits of non-IP trivia–that was a new one for me as well!

  • Dan Kelly

    But let’s be honest here: all of the other toroidal-shaped oat cereals use yellow on their packaging because it reminds consumers of Cheerios. If GM thought that the yellow box was their TM, should they not have chased this registration or sued these competitors long ago? GM’s complacency is the real killer here.

    • Tucker Chambers

      Dan, thanks for stopping by and leaving a comment. I’m also reminded of Cheerios when I see yellow packaging–in fact, when I’m looking to grab my box of Cheerios (still one of my favorites), I scan the aisle for a “big yellow box.” The decision does raise interesting questions about the careful balance between taking the time to execute a campaign to establish secondary meaning for a mark–which can take years, and is especially difficult for color marks–while also enforcing that mark against third parties as appropriate to maintain substantially exclusive use.