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?

HefeWheaties Tableau

Yesterday General Mills announced that it had partnered with Fulton Brewery to create HefeWheaties: a limited edition brew. The beer is a Hefeweizen, which is traditionally a wheat-based beer, making it a perfect canvas for the Wheaties brand.

Normally when these situations arise, it is because one party is complaining (For example, Lucasfilms’ objection to STRIKES BOCK beer). Not this time. Instead, we have two companies that appear to be on the verge of launching a very successful co-branding venture (just check out the press already, here, herehere ).

Aside from the fact that I’m excited to try this beer, the news provides a number of insights into how to co-brand a product. The craft beer industry in particular lends itself to these experiments: craft breweries regularly create limited run products (aka seasonal beers). They also have a loyal fan base that is active on social media (free advertising!). Also, beer can tie in just about any product either through imitation of flavor, or finding a clever name and pairing it with eye-catching packaging. Yet the lessons that can be gleaned from the HefeWheaties announcement aren’t limited to breweries. Instead, the announcement provides insight for any business considering co-branding.

First, there should be a basis for the partnership. Fulton’s founder and a number of its employees are former General Mills employees. The companies have been connected long before this idea arose. As a result, there was a level of trust and collaboration that is difficult to create without a prior relationship. This doesn’t mean that you can only co-brand with current contacts; it just helps. If you don’t have an established relationship, build one! Collaborate on the co-branding idea rather than simply creating it yourself and then handing it off.

Second (or if you’ve failed lesson one above), the product should feel authentic. With HefeWheaties, consumers want to like the product: both companies are based out of Minneapolis; the wheat connection makes sense; and the past history between the employees and management all contribute to a feeling that the product is an idea, not a scheme. Plus, even though I never ate Wheaties as a kid, I feel some nostalgia for it (kudos to you, General Mills marketing team).

Third, make sure you consider the effect of the co-branding on your original market. We haven’t seen this play out yet with HefeWheaties, but there are appreciable (or at least vocal) numbers of people who don’t like seeing brands they purchase associated with alcohol. For example, Ben & Jerry’s announced earlier this year that it would be partnering with New Belgium Brewing to release a Salted Carmel Brownie Brown Ale. I can’t wait to try it when its released this fall. But Bruce Livingston, CEO of Alcohol Justice had a different view, calling it

[a] crass, corporate greedy move to put a brand name like Ben & Jerry’s on a beer. It’s bad for children — who will start looking at beer as the next step after ice cream.

For our purposes, the merits of the characterization of “ice cream” as a gateway drug are unimportant. A company that co-brands should be aware that its brand and company will be associated with the partnering company, its products, and its industry. Give some consideration as to whether there is any potential for the co-branding to impact your public image and, if so, think about how you’ll respond.

Fourth, and finally, get the legal side taken care of in advance. You’ll likely need a trademark license. Decide whether royalties should be involved and, if so, when and how much. Carefully define the time frame for the license and renewal (or termination) options for both parties. These types of arrangements don’t need to be complicated. However, they became much more complicated after you begin selling product.

Yes, I know, Lesson Number One is work with someone you trust and like. However, business can affect that relationship. The parties’ memories may be a bit fuzzy months or years after you agree to start working together. It is much easier to avoid a dispute if the terms are in writing.

Co-branding doesn’t work for everyone, but it seems like it may work for HefeWheaties. The beer is set to be released on August 26, so perhaps we won’t have to wait long to gauge its success. But what’s really on my mind now is which cereal is next? I think a Peanut Butter Crunch stout could be good. Or maybe a Frosted Flakes porter. If anyone out there can make either of those happen, get a hold of me and let’s figure this thing out.

– Jason Voiovich, Vice President, Marketing, Logic PD

 

It’s a classic of 1970s dystopian cinema. In “Soylent Green”, Charlton Heston (yep, the very same) struggles through a horrible vision of an overpopulated future where human beings are processed into “Soylent Green” to feed the populace. (The meme-line from this entire movie comes at 1:06 in the video above. Well worth it. Classic Heston.)

No one is suggesting that the meal replacement product Soylent is derived from human remains, but those of us of a certain age can’t help the association.

That’s the crux of the branding issue: Does the association make sense? Does it help or hurt the brand?

Let’s start with the facts. What is Soylent?

Many of you may be familiar with meal replacement “shakes” that became popular in the 1980s as the diet crazy really gained steam. In this case, everything old is new again. Now touted as an example of “Life Hacking” from our Silicon Valley meme experts, Soylent is a complete, balanced meal replacement product. Last year, it shipped its first 50,000 units after raising over $20 million in funding.

But how does it taste?

Says the New Yorker, tasters have compared Soylent to Cream of Wheat and “my grandpa’s Metamucil.”

I’m not sure if this is exactly a ringing endorsement, but it seems to me this is like “liquid tofu” – it doesn’t taste like much on its own, but with a few additions, it could be pretty good. I’m not sure it signals the “end of food”, but it certain fills a niche in the market. (Soylent and Jack at your local bar? It worked with Red Bull!)

Soylent is cost-effective, shelf stable, and reasonably nutritionally balanced.

But that’s really not the point we’re trying to get at. Is “Soylent” the right naming strategy?

Let’s look at it from a few angles: Legal, marketing, and exit strategy.

I don’t mean to step on the toes of the far-smarter folks on this blog, but when I learned trademark law, possible confusion was the standard. It’s what allows Delta faucets and Delta Airlines to exist in the same marketplace. A reasonable person would be unlikely to confuse the two. In this case, the question seems to be this: Would that same reasonable person confuse the food product Soylent with the concept in the 1973 movie of a similar name?

Frankly, I can’t see that happening. It seems highly unreasonable that the average buyer would actually think we are now entering a period in our history where human beings are processed into foodstuffs.

(A different question for the lawyers: Because “Soylent Green” was probably never trademarked, how does Copyright law apply? But that’s a different question. I’ll invite Winthrop & Weinstine to comment on this angle more broadly.)

So if we can move past the legal issues, we can explore the next question: Does “Soylent” support or distract from the company’s marketing strategy?

Here’s where is gets “sticky”. On one hand, “Soylent” is the classic “Madonna Strategy”. In other words, any publicity is good publicity. The rationale is pretty simple: Awareness is difficult to come by. Consumers are so inundated by messaging today that anything that improves retention of a concept is a good idea. What’s more, research seems to suggest that consumers will disassociate the negative initial impression over time. And because familiarity is generally positive, the net effect is positive.

I’m really not so sure in this case. What Soylent risks is their brand becoming a running joke. For some brands (those in the entertainment sector for example), that can work to your advantage. Comedians such as Jason Alexander (“George” from Seinfeld) have built a career on that less-than-flattering persona. Food products – especially foundational food product like this one – don’t fit that mold. If you want broad adoption (as I can only expect Soylent to desire), you need to convince the average head of family to feed this product to her children. In Soylent’s case, good luck with that.

So far, we’re probably okay on the legal front, marketing might be a wash, so what about the end game for Soylent?

Here’s where I think they can win.

Venture Capital money never flows to those companies without a clear exist strategy: Either an acquisition or an Initial Public Offering. In this case, the buzz generated from this naming strategy will likely help the company position itself for acquisition by a major food ingredient conglomerate. At which time, said acquirer will simply strip out the branding strategy, incorporate the product into its line, and reap the benefits of an early adopter population to “Cross the Chasm” to broader adoption. I’m not sure if that will be a General Mills, a Michael Foods, or a Unilever, but I give Soylent another 18-24 months on its own before it’s snapped up…or goes under.

In the meantime, if you want some, you can order it here. And remember, Soylent is definitely *not* people. Definitely.

Brace yourselves everybody, I have some bad news: Hamburger Helper is no more. But wait! Don’t jump yet, friend. Thanks to the General Mills marketing department, and fueled by a loss of market share to new competition from Kraft, Hamburger Helper has been reborn. Let me introduce to the new and improved brand: Helper. General Mills, owner of the Betty Crocker brand Hamburger Helper line, feels that the Hamburger Helper brand just wasn’t modern enough. If you want to compare advertisements, watch and compare these rival commercials from the old Hamburger Helper with the new Kraft Cheesy Skillets:

Personally, I’m not sure Hamburger Helper needs a rebranding. Kids today still like leather jackets, right?

Regardless of my opinion, General Mills has decided to relaunch the brand with a major makeover: new(ish) name, new boxes, and sauce pouches rather than dry seasoning mixes. General Mills is hoping  the rebrand will address more than just sales. The company sees Americans on the whole  moving away from hamburger in favor of chicken or other meat. The company also hopes to “reintroduce” the brand to a younger generation that may not have been exposed to all that Helper has to offer. Helper is now on Facebook and Twitter.  Apparently, the company sees a lot of growth potential for young men in the 18-30 bracket. And obviously, the only way to reach young people these days is through the internet (I wish I were only joking, but it is at least partially true).

Thankfully, America’s favorite talking, anthropomorphic hand survived the cut (and, no, that isn’t a diss to Thing T. Thing, I said “talking.” I know better than to wade into that controversy publicly). Lefty will continue to be the mascot for Helper, following a trend referenced recently  on this blog of company’s embracing their brand’s past, but infusing them with some modernity. The re-branding isn’t terribly significant, but it does provide a good excuse for a media blitz. Maybe that’s really all Helper needed. Although to be fair, given the consumer to shift away from hamburger (and the poor press given to beef and hamburger in recent years), it is likely a good move to switch to a brand that isn’t specific to one meat, particularly hamburger. While I continue to have my doubts about the effectiveness of Twitter and social media for certain products, I think the rebrand will likely gain some of the market share back from Kraft’s cheesy skillets. However I would imagine that Helper’s days of dominating the area are over, if only due to the increasingly crowded marketplace for quick meals.

But hey, I’m just happy I didn’t have to wave a four-finger good bye to my old pal Lefty. His entry into the Twitterverse may be the final push I needed to join myself.

 

–Catlan McCurdy, Attorney

Driving down the highway the other day, I spotted a new billboard. There were no brand names associated with the ad, and the entire sign consisted of only a single word: Love. And yet, I instantly understood the connection: Cheerios.

Thanks to blog.livlane.com for capturing General Mills’ newest creation.

With its bright yellow background and black characteristic font, the billboard looks like a box of Cheerios made for Godzilla. And I loved it. This billboard instantly hit me with a wave of nostalgia, even stronger than the Minnesota heat wave we have been experiencing. Like most children, I was raised on Cheerios and learned to recognize the yellow box at a very young age. Those boxes contained my favorite breakfast food, and if I was lucky, a maze or word scramble on the back that I could solve while spooning down the crunchy o’s. Later, I would use those same boxes to create a fort, surrounding myself with a yellow wall at the breakfast table to fend off my younger brother seated across from me.

Now, as an attorney, I laugh to no one in particular when I realize that instead of a ® next to “Love,” the word is accompanied by a small Cheerio. Touché, General Mills, touché.

—Brent Carlson-Lee, Founder & Owner of Eli’s Donut Burgers

I have to admit Beef Products Inc.’s “lean, finely textured beef” sounds pretty good. But call it “pink slime” (its recently popularized nickname) and I find it much less appetizing. In their defense, pink slime is 100% beef…except for the ammonia. And beef without ammonia is like, God forbid, lutefisk without lye.

While many find its wool-over-the-consumers’-eyes product naming reprehensible, the company clearly had a solid understanding it was in the Spin, Baby, Spin quadrant of the framework below. FDA guidelines require ingredients to be disclosed; however, a food additive consisting of heated and processed beef waste treated with ammonia to kill bacteria clearly doesn’t elicit a positive consumer reaction. As such, Beef Products Inc. took artistic license in crafting the terminology used to describe its ingredients.

Beef Products Inc. isn’t alone in the Spin, Baby Spin quadrant – the Corn Refiners Association aspires to re-badge “high-fructose corn syrup” as “corn sugar,” and P&G has struggled with how to talk about its olestra ingredient (aka Olean) for two decades. You may recall Dan Kelly’s prior posts on the high-fructose corn syrup/corn sugar flap here and here.

Some brands Shout it from the Mountain Top – think Fiber One. While it is required to disclose the fiber content in the nutrition facts panel, General Mills went as far as incorporating “fiber” into the brand name, given its overwhelmingly positive consumer perception.

Go ahead, Puff(ery) Away. As Steve Baird blogged last November, artisan puffery is in full force. Obviously, there is no requirement to communicate the artisan nature of a product (nor to drive the term into a meaningless oblivion); however, it seems to evoke a positive consumer perception.

Shhhh. This often relates to how products are processed or prepared. Generally, consumers don’t care, or even want to know, how products are made (baked vs. fried is a notable exception). For example, you don’t hear McDonald’s talk about how its burgers are fried to perfection by a machine that requires minimal human intervention.

While this newly-penned framework may never make its way into mainstream marketing textbooks, deciding whether and how to communicate ingredient and how-its-made information to consumers is undoubtedly an important issue.

–Susan Perera, Attorney

As you likely know, many of the Duets Blog bloggers were involved in a full day trademark CLE last week. One of the sessions focused on the issues facing private label brands and the line between identifying your competitor by using similar packaging and infringing on their trademark or trade dress.

Along those lines, a friend recently sent me the picture below and asked my opinion of this packaging.   In the interest of continuing the conversation, I thought I would post the picture here and see what our viewing audience thinks.

Is it reasonable for the private label brand to use both the main color (purple) and the secondary color (yellow) as well as a highly similar font, font color, and outline color?

Or maybe you think everyone has the right to use purple with raisin filled cereals? Even General Mills uses purple with its raisin filled Total Cereal (credit to the Big G for calling its something other than “raisin bran”).

What about the use of “Raisin Bran”? Kellogg’s owns a trademark registration for Kellogg’s Raisin Bran and the Sun Design.  However, like all registered marks containing “raisin bran,” the term has been disclaimed. Does the similar font, color, and outline cross the line?

Please share your thoughts on private label brand and this example!

         

They say that the best defense is a good offense. It appears that General Mills has adopted this strategy in a recent trademark dispute over the term LOADED in connection with instant potatoes.

Just yesterday, the Minneapolis St. Paul Business Journal reported the filing of a federal district court lawsuit by General Mills against Idahoan Foods, in which it apparently requests cancellation of Idahoan Foods’ federal trademark registration for LOADED BAKED, and further requests that General Mills be able to continue using the term LOADED in connection with instant potato products, including Betty Crocker’s Loaded Mashed:

 Here is Idahoan’s Loaded Baked —>

Apparently Idahoan Foods sent to General Mills a June 25, 2010 cease and desist letter, asserting infringement of its federally registered trademark LOADED BAKED for "dehydrated potatoes and mashed potato mix."

Trademark types will appreciate that since the LOADED BAKED trademark registration issued on July 19, 2005, it is quite curious that Idahoan Foods didn’t wait a few more weeks to play hot potato with or otherwise attempt mashing General Mills, i.e., until the fifth anniversary of its federal registration, when it promptly could have and should have submitted its combined Section 8 & 15 Declaration, in order to not only maintain, but achieve incontestable status for the LOADED BAKED trademark registration.

Timing can be everything in trademark litigation, and while I should reserve final judgment until obtaining, reviewing, and sharing with you a copy of the federal district court complaint, it appears to me — at least from U.S. Trademark Office records — that General Mills acted so promptly, in part, to prevent the LOADED BAKED trademark registration from becoming incontestable. Having done so, now General Mills is free to challenge the trademark on far easier descriptiveness grounds.

In other words, had Idahoan Foods filed the necessary papers to obtain incontestable status for the LOADED BAKED registration before complaining to General Mills, and before General Mills formally challenged the validity of the federal trademark registration, there would have been no ability by General Mills to invalidate it on descriptiveness grounds, a much easier challenge than proving genericness.

Now that the federal district court lawsuit has been filed, and now that General Mills also has filed a Petition to Cancel the LOADED BAKED trademark registration, with the U.S. Trademark Office, Idahoan Foods is precluded from making the necessary Section 15 Declaration filing that would have rendered the registration incontestable and left General Mills with the more difficult task of proving LOADED BAKED generic for "dehydrated potatoes and mashed potato mix."

So, stay tuned for more developments and additional thoughts after I’m able to obtain and share with you a copy of the complaint.

Hat tip to Barry Johnson for knowing I’d be interested in writing about this one.

John Reinan provided yesterday a marketer’s perspective that questioned the value of coined trademarks. In my experience, as a trademark type, one place on the spectrum of distinctiveness where both trademark and marketing types can have their cake and eat it too, is the delicious category of suggestive trademarks.

From the legal side of the coin, suggestive marks are immediately protectable and generally enjoy the additional benefit of their inherent strength. On the marketing side of the coin, suggestive marks communicate something about the goods (but not as directly or immediately as descriptive marks do), so the marketer need not start from scratch in educating the consumer, as one must do with coined marks.

For some additional posts discussing the spectrum of distinctiveness, the important line between descriptive and suggestive trademarks, and related issues, see here, here, here, and here.

What is often forgotten about the fine line in differentiating between descriptive and suggestive marks is the subjectivity of making the determination. In practice, this can be a rather fuzzy sort of bright line. What is also frequently forgotten is how narrow the rights can be with some suggestive marks — those said to be highly suggestive or very close to the merely descriptive border.

A stroll down the baking aisle in your local grocery store provides a nice place to illustrate both points. For example, when shopping for cake mix it is hard to miss the apparent importance of "moist" plus a superlative as key selling points — "moist" being a merely descriptive term that immediately and directly describes a desirable characteristic of a finished cake. Indeed, Betty Crocker has Super Moist, Pillsbury has Moist Supreme, and Duncan Hines has Moist Deluxe:

    

These three different brands compete with one another on the very same store shelves and the fact that they peacefully coexist and compete directly without any apparent consumer confusion (despite their similar names) helps illustrate the point of how narrow in scope some suggestive trademark rights can be.

On the point about subjectivity, as the links above demonstrate, you might be surprised to learn that the Super Moist mark was permitted registration by the U.S. Trademark Office as a suggestive and inherently distinctive trademark. Whereas, the Moist Supreme and Moist Deluxe marks were considered merely descriptive, and the U.S. Trademark Office required evidence of acquired distinctiveness (a/k/a secondary meaning) before registration was permitted on the Principal Register.

So, where descriptiveness ends and suggestiveness begins can often depend on who is asked to apply the legal test. Perhaps that is why the U.S. Trademark Office is supposed to approve marks as suggestive, when in doubt. Can someone explain the doubt in favor of Super Moist, and the lack of doubt with Moist Supreme and Moist Deluxe? Because I’m not feeling the need to exercise much imagination, thought or perception to appreciate that each brand communicates a really, really moist cake.