Close your eyes and transport yourself to the cereal aisle of your grocery store: can you picture the design of a box of original Cheerios™, color and all? General Mills recently tried, and failed, to obtain a federal trademark registration for the yellow color of their Cheerios™ boxes that they hope you’re picturing right now, and their struggle illustrates the high burden faced by applicants for federal registration of color marks in the United States.
Individual colors have been recognized as protectable trademarks by the United States Supreme Court (SCOTUS) since 1994. The first color that SCOTUS deemed to be capable of functioning as a trademark was a “green-gold” shade that Qualitex Company used on the dry cleaning press pads that it manufactured. When Qualitex’s competitor starting using the same shade, Qualitex sued. Qualitex was not the first to successfully register a color as a trademark – that distinction is held by Owens Corning for the pink color of its insulation products – but Qualitex’s case made it to the Supreme Court, which definitively determined that a color could be registrable as a trademark if it has “acquired distinctiveness” as applied to the goods or services named by the applicant, and it does not fall into either of two main traps for color marks: functionality or ornamentality.
The most burdensome task for an applicant to show in attempting to register a color mark is that they are required to demonstrate acquired distinctiveness. This is where General Mills failed, according to the Trademark Trial and Appeal Board (TTAB). Ordinarily, acquired distinctiveness is shown by substantially exclusive and continuous use of the mark in commerce. On the other hand, evidence that the subject color is employed by others in the applicant’s same industry detracts from the evidence required to make the showing, and instead provides evidence that the color is “mere ornamentation” as applied to the subject goods or services, both for applicant and its competitors in the industry. In an application for a color mark, then, applicants are usually required to provide fairly voluminous evidence that they, and they alone, have consistently applied the color to their products or services in a way that now makes consumers recognize their product or service just by their presentation in the applied-for color. Persuasive evidence can take the form of declarations, proof of extensive advertising and/or large advertising spend, surveys, press, or customer testimonials.
General Mills had plenty of this, including examples of consistent use of the applied-for yellow on boxes of Cheerios™ (and their predecessor, Cheerioats™) since the 1940s, articles linking General Mills’ Cheerios™ product to the color yellow from USA Today and others, a declaration attesting to the fact that General Mills had spent more than $1 billion in marketing “yellow box” Cheerios™ over the proceeding decade, including a 2014 Super Bowl commercial, and a survey of 419 subjects in which nearly 50 percent of respondents identified General Mills’ Cheerios™ brand based solely upon the image of an unmarked, yellow rectangular box. However, there was also evidence that other cereal brands, including some of General Mills’ competitors in the “toroidal-shaped, oat-based breakfast cereal” market, also used various shades of the color yellow on their packaging, and General Mills couldn’t show that these other uses were either “inconsequential or infringing.” This was enough for the TTAB to conclude that General Mills’ yellow was ornamental, and therefore failed the test for acquired distinctiveness necessary to obtain registration as a trademark in the United States.
If General Mills’ application had been not for a trademark, but for a service mark (for example, UPS’s brown color for delivery services), an application for a color mark would have had to include a description of which objects the applied-for color is used on in order to create a connection between the color and the services in question.
Another trap that color marks can fall into is functionality. If presenting a given item in the applied-for color increases the item’s functionality, by making it more aesthetically pleasing, making it more cost-effective to manufacture or use, or the like, registration may be denied. This was the case with another application for the color pink, this time by Pepto-Bismol™, in which the color pink was found to be functional in that it is more soothing to patients, making them more likely to take the medicine.
For now, General Mills will take the medicine for their failed attempt to register Cheerios™ yellow. The relative dearth of color trademarks and service marks on the U.S. federal register means that many other potential trademark owners will as well.
