Lessons from General Mills’ Color Trademark Registration Fail
December 14, 2017
What Can We Learn From General Mills’ Color Trademark Registration Fail?
The Trademark Trial and Appeal Board recently rejected General Mills’ application to register the use of the color yellow on Cheerios’ cereal boxes. The denial highlights the difficulty in obtaining federal trademark protection for the use of a specific color.
History of Color Trademark
In Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the U.S. Supreme Court held that the Lanham Act permits the registration of a trademark that consists, purely and simply, of a color. “We conclude that, sometimes, a color will meet ordinary legal trademark requirements,” the Court held. “And, when it does so, no special legal rule prevents color alone from serving as a trademark.” As the Court further explained:
[A] product’s color is unlike “fanciful,” “arbitrary,” or “suggestive” words or designs, which almost automatically tell a customer that they refer to a brand. … But, over time, customers may come to treat a particular color on a product or its packaging (say, a color that in context seems unusual, such as pink on a firm’s insulating material or red on the head of a large industrial bolt) as signifying a brand. And, if so, that color would have come to identify and distinguish the goods, i.e., “to “indicate” their “source…”.
Just like other trademarks, the color must identify and distinguish the applicant’s goods from those manufactured or sold by others and indicate their source. It must also not be merely functional. The International Trademark Association describes the test as follows: “The trademark owner must show that the consumer, upon seeing the color used in connection with the goods or services, views the color not as merely ornamental but, rather, as a means of indicating the origin of those goods or services.”
In the wake of the Supreme Court’s decision, several high-profile brands have been able to successfully register color trademarks. Tiffany holds a trademark for the color “Tiffany Blue,” which is used on its signature jewelry boxes. UPS registered a trademark for the brown color on its delivery trucks and drivers’ uniforms, while 3M trademarked the yellow used in its Post-It notes.
Once registered, companies can file infringement suits to protect their trademarks. In 2015, AstraZeneca, which trademarked the color purple for its heartburn drug Nexium, successfully stopped drug manufacturer Dr. Reddy’s Laboratories from making its generic version of the purple pill. Citing that Nexium is widely known as the “little purple pill,” AstraZeneca successfully proved that “the media and the public associate the color purple with AstraZeneca … and its Nexium products.”
Yellow Cheerios Box Not Distinctive
General Mills has used the yellow color on its Cheerios cereal boxes since the 1940s. In 2015, the company sought trademark protection for the color yellow “as the predominant uniform background color on product packaging” for its Cheerios oat-based breakfast cereal. The Trademark Examining Attorney refused registration, and General Mills appealed the decision to the Trademark Trial and Appeal Board (TTAB).
In August, the TTAB also refused registration, citing that General Mills failed to demonstrate acquired distinctiveness. As the TTAB decision reasoned:
When we consider the industry practice of ornamenting breakfast cereal boxes with bright colors, bold graphic designs, and prominent wordmarks, and the fact that customers have been exposed to directly competing products (toroidal oat cereals) and closely related products (other forms of breakfast cereal) in packages that are predominantly yellow, we are not persuaded that customers perceive Applicant’s proposed mark, the color yellow alone, as indicating the source of Applicant’s goods.
The TTAB also emphasized General Mills’ lack of exclusive use of the color yellow on its Cheerios boxes. As explained by the TTAB, “non-exclusive use presents a serious problem for the merchant seeking to develop trademark rights in a word, symbol, or device that is not inherently distinctive, because it interferes with the public perception that it serves as an indicator of a single source.”
The TTAB further noted that 23 other cereal products feature similar packaging. It concluded that “the number and nature of third-party cereal products in yellow packaging in the marketplace to be sufficient to convince us that consumers do not perceive the color yellow as having source-indicating significance for the goods.”
The TTAB decision confirms how challenging it is to obtain a trademark registration for a single color. As highlighted by General Mills’ rejection, the most significant hurdles are demonstrating that the proposed mark has acquired distinctiveness and is not merely ornamental. In order to determine the best strategies for protecting colors, designs and other descriptive aspects of product packaging, it is recommended to consult with an experienced intellectual property attorney.
Do you have any questions? Would you like to discuss the matter further? If so, please contact me, David Einhorn, at 201-806-3364.