The Trademark Trial and Appeal Board’s (Board) precedential decision to uphold a refusal to register a proposed color mark in In re Post Foods, LLC[1] highlights the strategic and technical aspects involved in registering a color trademark as applied to a product.
Color marks are considered inherently nondistinctive for the purpose of eligibility for federal trademark registration. In April 2020, Post Foods LLC (Post) applied to register a trademark for the various colors of its Fruity Pebbles cereal in International Class 30 for “breakfast cereals.” On Jan. 4, 2024, the Board upheld a refusal to register Post’s proposed mark on the ground that it fails to function as a trademark given that it is not inherently distinctive and has not acquired distinctiveness under Section 2(f) of the Trademark Act.[2] The Board found Post’s evidence insufficient to show the mark has acquired distinctiveness. Post’s evidence of distinctiveness was further contradicted by the examiner’s evidence, which demonstrated that Post’s claimed colors were not substantially exclusive to its cereal. Ultimately, the Board concluded that Post’s “extensive evidentiary showing relating to consumer recognition of its cereal’s color, shape, and texture misses the mark.”
Post’s lack of evidence of distinctiveness in light of its overly broad description of goods was a key factor in Post’s loss. Post originally sought registration of trade dress comprising both the shape and colors of its Fruity Pebbles cereal. The examining attorney refused Post’s application on the ground that its evidence was insufficient proof of acquired distinctiveness (or secondary meaning), and thus its proposed color failed to function as a trademark. In response to various office actions, Post limited its claim to simply the colors of the cereal and submitted additional evidence of the mark’s acquired distinctiveness, including the long use of the mark, results of a consumer survey, advertising expenditures, sales revenue, extensive media coverage, and customer statements. Despite all the detailed evidence, the examiner continued to refuse to register the mark because it consisted of a nondistinctive product design. Post then appealed the examiner’s refusal to the Board.
In its decision, the Board focused on two main issues: (1) the evidence submitted to prove acquired distinctiveness and (2) the broad description of goods in Post’s trademark application. Although Post’s evidence was extensive – including product pictures, advertising samples, sales volume and revenues, advertising expenditures, unsolicited third-party references, and two consumer recognition surveys – it was contradicted by the examiner’s evidence of third-party multicolored cereals in different forms (e.g., puff rice balls and other shapes). The examiner submitted images of cereal boxes of various brands, such as Cap’n Crunch, All Berries and Trix, which revealed that consumers are accustomed to seeing multicolored breakfast cereal offered by different sources. The Board found the examiner’s evidence persuasive because it indicates that consumers do not attribute the applied-for rainbow colors on breakfast cereals to solely a single source, such as Post’s Fruity Pebbles product. Post argued that its application covered the combination of colors as applied to “crisp rice cereal pieces,” thus making the shapes of the cereal part of the application; however, when depicting a physical aspect of a trademark or product packaging, the portion that is intended to be a part of the trademark must be displayed in solid lines rather than broken lines – here, Post used broken lines in its final amended drawing.
In addition, the Board asserted that the configuration of the product packaging or design must be identified in the description of the mark. The evidence submitted by Post focused specifically on rice cereal; however, given that Post’s description of goods broadly indicated “breakfast cereals” and not “crisp rice breakfast cereals,” the examiner could only consider the color portion of the application. The Board noted that “[i]f [Post] wanted to limit its mark to use on ‘crisp rice breakfast cereals,’ it should have amended its identification of goods.”
The Board’s decision underscores the importance of strategically planning for and recognizing the interplay among mark description, goods identification, mark drawings and robust evidence of distinctiveness when seeking trademark registration for a product design that involves color. The Board’s reasoning emphasizes how applicants should critically consider the various aspects of their product that aid consumers in specifically identifying their source. Although it is advisable to apply for the broadest possible coverage of goods for a trademark, this decision pinpoints that a trademark application must precisely delineate the color mark’s application scope, as the Board reasoned that Post’s description of goods was too broad when compared to its specific evidence of acquired distinctiveness. The applicant also has the burden of demonstrating that the color has developed secondary meaning in the marketplace, which should include promotional materials, surveys and other documentation that directly highlight the color as an emblem of the brand. In this way, an applicant’s advertising history will inform how the scope of the mark should be defined in the application. In balancing these technical criteria when applying for a color mark, an applicant can ensure that their color mark application is consistent with the available evidence.
[1] In re Post Foods, LLC, Serial No. 88857834 (TTAB Jan. 4, 2024) (precedential).
[2] 15 U.S.C. § 1052(f).
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