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?