Avoid False Hopes for True Colors

Avoid False Hopes for True Colors

Applying for a trademark is an important step towards protecting a company’s brand so it can gain and maintain market share and profitability. However, too many companies make the common mistake of believing that they have something protectable even though their competitors know – and the United States Patent and Trademark Office (USPTO) will find – otherwise. A case in point is In re General Mills IP Holdings II, LLC, which was recently decided by the USPTO’s Trademark Trial and Appeal Board (TTAB). The TTAB rejected General Mills’ application for a trademark on the color yellow in conjunction with Cheerios cereal boxes.

In its application, General Mills (also referred to as the Applicant) stated: “The mark consists of the color yellow appearing as the predominant uniform background color on product packaging for the goods” and further stated that “consumers have come to identify the color yellow, when used in connection with the goods…from not only a single source, but specifically the Cheerios brand.” Administrative Trademark Judge Anthony R. Masiello, who wrote the opinion for the TTAB, was not convinced and indicated that while it is “clear that Applicant has worked assiduously to create an association between the color yellow and its “regular” CHEERIOS brand cereal,” a review of competitors’ cereals demonstrated “that Applicant is not alone in offering oat-based cereal, or even toroidal-shaped, oat-based cereal, in a yellow package.” Id. at 8 and 16. The TTAB also noted that “[c]ereals of many different brands and varieties are offered side-by-side in stores and compete directly for the same customers…Such customers, accustomed to seeing numerous brands from different sources offered in yellow packaging, are unlikely to be conditioned to perceive yellow packaging as an indicator of a unique source. Rather, they are more likely to view yellow packaging simply as eye-catching ornamentation customarily used for the packaging of breakfast cereals generally.” Id. at 17. To illustrate its point, the TTAB posed the following hypothetical survey question using another context: “If you think you know, what university has TIGERS as its mascot?” Even if most respondents said LSU, that would not have proved that LSU had the exclusive right to TIGERS as a source indicator to the exclusion of Clemson, Auburn, Missouri, Princeton, Towson, Memphis, or many other schools.” In re General Mills IP Holdings II, LLC at 25.

The TTAB therefore decided: “Applicant has proven that relevant customers are familiar with the yellow color of the CHEERIOS box; but the record also indicates that the color yellow is only one aspect of a more complex trade dress that includes many other features that perform a distinguishing and source-indicating function. When we consider the industry practice of ornamenting breakfast cereal boxes with bright colors, bold graphic designs, and prominent word marks, 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. We find that Applicant has not demonstrated that its yellow background has acquired distinctiveness within the meaning of Section 2(f) and, accordingly, that Applicant has not shown that this device functions as a trademark.” Id. at 27-28.

What does this mean for our clients who want to protect something that they are sure is unique to them? Simply put, they and we need to take an objective look at whether a reasonable person would identify them as the single source of their proposed mark or instead view it as mere “ornamentation.” If it is the latter, it will not warrant trademark protection. The TTAB, citing the statement in In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985) that “[b]y their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character” (Id. at 1127) and reiterating that principle in its decision in In re General Mills IP Holdings II, LLC, has sent a clear notice to applicants that such a burden will continue to be an onerous one to carry for the foreseeable future. Owens-Corning was able to carry its burden since it was able to show “a syndetic relationship between the color “pink” and Owens-Corning Fiberglas in the minds of a significant part of the purchasing public.” Id. at 1127. Companies should be advised that such a “syndetic relationship” necessarily evolves over an extended period of time in a marketplace devoid of competitors who utilize the same or substantially similar design elements. Per Section 2(f) of the Lanham Act, the USPTO “may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.” 15 U.S. Code § 1052(f). We therefore encourage our clients to work with our firm’s team so we can advise you regarding the intellectual property aspects of creating elements that are unique to what you offer, continuously impress that upon your customers for several years, and consistently conduct market research that you can use as compelling evidence of acquired distinctiveness before the USPTO and/or the TTAB.

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