The Trademark Trial and Appeal Board (TTAB) delivered a primer on demonstrating the acquired distinctiveness of product packaging or trade dress, including color marks, in refusing registration of a trademark application for the color yellow as applied to “toroidal-shaped, oat-based breakfast cereal.” In re General Mills IP Holdings II, LLC, Serial No. 86757390 (TTAB, Aug. 22, 2017) (Masiello, ATJ).

The US Trademark Act allows for the registration of a single color as applied to a product or its packaging. However, those marks are only registrable after having established secondary meaning or acquired distinctiveness, since precedent has established that a single color can never be inherently distinctive as a source indicator, and otherwise fails to function as a trademark. 

The issue of color marks came before the TTAB after breakfast cereal company General Mills filed a US trademark application to protect the color yellow as the “predominant background color” on the product packaging for its famed “regular” Cheerios, or “toroidal-shaped, oat-based breakfast cereal,” as defined in the application. After General Mills presented evidence that the color yellow as applied to its Cheerios box had acquired distinctiveness and functioned as a trademark, the examining attorney was unpersuaded and maintained her refusal of the application on the ground that a single color mark is not inherently distinctive. General Mills appealed to the TTAB.

To establish acquired distinctiveness, an applicant must show that in the minds of the public, the primary significance of a product feature is to identify the source of the product rather than the product itself. First noting that “color marks carry a difficult burden in demonstrating distinctiveness,” the TTAB explained that its task was to find whether General Mills’ evidence demonstrated that consumers recognize the “color yellow on a package of toroidal-shaped, oat-based breakfast cereal as an indicator that the cereal within comes from the maker of Cheerios.”

The TTAB noted that General Mills has “worked assiduously to create an association between the color yellow and its ‘regular’ CHEERIOS brand cereal,” and discussed the significant amount of evidence presented by the company showing consistent use of the color yellow for the Cheerios box since the 1940s. General Mills was able to show advertising, jingles and tag lines referring to the color yellow; unsolicited public recognition referring to “the signature” or “iconic yellow box”; and even survey results with more than 48 percent of respondents associating the yellow box with Cheerios cereal.

Despite that evidence, however, the TTAB agreed with the examining attorney, who argued that the color yellow fails to function as a trademark in this case because consumers are likely to perceive the color only as a decorative feature of the packaging, especially because consumers are accustomed to cereal boxes that come in a variety of colors, including yellow. The examining attorney found that General Mills did not have the requisite exclusive use of the color yellow on cereal boxes to properly demonstrate acquired distinctiveness.

The TTAB explained that non-exclusive use of a mark presents a “serious problem” for the mark owner trying to establish that its trademark serves as an indicator of a single source. Here, the examining attorney identified 23 cereal products (including other toroidal-shaped oat-based cereals) that she believed shared a similar yellow packaging color, including competing cereals from Kellogg, Post and Quaker. The TTAB opined that in such a crowded market, word marks and graphic images are more important in conveying to a customer each unique cereal brand.

Finally, the TTAB rejected General Mills’ survey evidence, because the questions as designed did not clearly demonstrate results associating the color yellow with one particular source of goods. Thus the TTAB found that the number and nature of third-party cereal products in yellow packaging were sufficient to show that consumers do not perceive the color yellow as a source indicator.

The TTAB sympathetically noted that General Mills had made it clear that relevant customers are familiar with the yellow color of the Cheerios box. However, given that customers have been exposed to directly competing and closely related products that come in predominantly yellow packages, the TTAB ultimately decided that the color yellow alone does not indicate the source of the goods, and affirmed the refusal to register the mark.