IP Law Daily Yellow background for Cheerios box not distinctive; color mark properly refused
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Thursday, August 24, 2017

Yellow background for Cheerios box not distinctive; color mark properly refused

By Mark Engstrom, J.D.

General Mills could not register the color yellow as a trademark for toroidal-shaped, oat-based breakfast cereal packaging because the color lacked acquired distinctiveness when used with the company’s "regular" CHEERIOS cereal, the Trademark Trial and Appeal Board has ruled in a precedential decision. Because General Mills failed to show that, in the minds of the public, the primary significance of the color yellow was its function as a source identifier, the Board affirmed a trademark examining attorney’s refusal to register the proposed color mark (In re General Mills IP Holdings II, LLC, August 22, 2017, Masiello, A.).

Proposed mark, record evidence. Trademark applicant General Mills IP Holdings II, LLC, filed an application to register the color yellow as a trademark for toroidal-shaped, oat-based breakfast cereal in International Class 30. The mark consisted of the color yellow, which was the predominant and uniform background color on cereal boxes for the identified goods. When used with those goods, General Mills argued, consumers identified the color yellow with the Cheerios brand. Moreover, the purchasing public recognized that color on packages of toroidal (doughnut-shaped) oat-based breakfast cereal as an indication that General Mills was the source of that cereal.

General Mills had filed "voluminous evidence"—including a consumer survey and an expert report—to support its claim of acquired distinctiveness, but the examining attorney refused registration on the ground that: (1) a single color mark was not inherently distinctive and (2) General Mills failed to demonstrate acquired distinctiveness in this case. The examiner thus concluded that the proposed trademark did not function as a mark.

The record showed that the applicant had continuously sold oat-based breakfast cereal under the brand name CHEERIOS since 1945. In the decade preceding 2015, the applicant spent more than a billion dollars to market its "regular" or "Yellow Box" Cheerios. Sales during that period exceeded $4 billion. However, the question before the Board was not whether customers recognized the term CHEERIOS as a source indicator; the relevant question was whether customers recognized the color yellow—when it appeared on packages of toroidal-shaped, oat-based breakfast cereal—as an indicator that the cereal originated from the maker of CHEERIOS.

The Board acknowledged that General Mills had "worked assiduously" to create an association between the color yellow and its "regular" CHEERIOS cereal. The company, for example, submitted several news clippings that characterized its Cheerios boxes as "distinctive," "iconic," "signature," "easy to find," and "instantly recognizable" with a "positive emotional association." In addition, the company proffered a consumer survey that showed that 48.3 percent of respondents associated the image of an unmarked yellow box with the Cheerios brand.

Nevertheless, the Board could not conclude that, when considered as a whole, the evidence was sufficient to show that the company had succeeded in causing relevant consumers to recognize the color yellow as a source indicator when used on packaging for oat-based breakfast cereal in toroidal form.

Distinctiveness. The evidence showed that the applicant was not alone in offering oat-based cereal—or even toroidal-shaped oat-based cereal—in a yellow package. The applicant failed to proffer any evidence to show that the use of yellow boxes by other cereal manufacturers was either inconsequential or infringing. According to the Board, the marketplace presence of yellow boxes "interfered with the development among relevant customers of a perception that the color yellow on packaging indicates that Applicant is the source of the goods …."

The Board acknowledged that General Mills had limited the relevant goods to toroidal-shaped oat-based cereals, and further acknowledged that any resulting registration would be limited to the applicant’s exclusive right to use the color yellow on packages for that type of cereal. Nevertheless, the Board concluded that the market presence of yellow-boxed cereals from multiple sources would "tend to detract from any public perception" that a predominantly yellow background on a cereal box was an indicator that General Mills was the source of the cereal, even though: (1) many of the cereals that were proffered as evidence were either not made of oats or not toroidal in shape and (2) the competitors’ boxes did not use the same shade of yellow that "regular" Cheerios used.

Consumers were more likely to view yellow packaging as "eye-catching ornamentation" that was "customarily used for the packaging of breakfast cereals generally," the Board explained. And the particular shades of yellow that were used on the competitors’ boxes were "sufficiently close in hue to reduce the distinctiveness in the marketplace" of the applicant’s use of yellow. Significantly, the applicant used the proposed mark on rectangular boxes, and competitors used the color yellow on "similar rectangular boxes." According to the Board, that simultaneous use reduced both the impact of the applicant’s uses on customer perceptions and the likelihood that customers would perceive the color yellow as the indicator of a single source (General Mills).

In the Board’s view, the substantial number and similar nature of other cereals that were packaged in yellow boxes was sufficient to show that consumers did not perceive the color yellow as having a source-indicating significance for the applied-for goods.

Survey evidence. The Board acknowledged that consumers had a "high level of awareness" that CHEERIOS was sold in a yellow box. However, when the applicant’s survey was considered in the relevant commercial context, the Board concluded that the color yellow, by itself, did not distinguish the applicant’s goods from the goods of others. According to the Board, the survey should have considered the possibility that respondents would be able to recite multiple breakfast cereals that were sold in a yellow box (and thus "persuasively" test whether the respondents were acquainted with goods that originated from other sources). In light of the survey’s limited design, the Board concluded that the results did not "clearly demonstrate" the association of yellow with a single source for the identified goods.

The applicant proved that the relevant customers were familiar with the yellow color of the applicant’s CHEERIOS box, the Board explained, but the record showed that the color yellow was "only one aspect of a more complex trade dress that includes many other features that perform a distinguishing and source-indicating function." When the Board considered the industry practice of "ornamenting" cereal boxes with bright colors, bold graphic designs, and prominent word marks, and also considered the fact that customers had been exposed to directly competing products (toroidal oat cereals) and closely related products (other forms of breakfast cereals) in boxes that were predominantly yellow, it could not conclude that customers perceived the proposed mark—the color yellow alone—as a source indicator for the applicant’s goods. Because the applicant did not show that its yellow background for "regular" Cheerios had acquired distinctiveness, it failed to show that the color yellow "function[ed] as a trademark."

The case is Serial No. 86757390.

Attorneys: William G. Barber, Christopher M. Kindel and Steven M. Espenshade (Pirkey Barber PLLC) for General Mills IP Holdings II, LLC. Tasneem Hussain, Trademark Examining Attorney.

Companies: General Mills IP Holdings II, LLC

MainStory: TopStory Trademark USPTO

 

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