When I think of the color yellow, it is generally in reference to the color of the sun. When I walk in the cereal aisle of a grocery store and I see the color yellow, do I think of Cheerios? Personally, I don't. But, do you?
In 2015, General Mills applied for a federal trademark (serial number 86757390, link to TSDR) to register "the color yellow as the predominant uniform background color on product packaging" for "toroidal-shaped, oat-based breakfast cereal". Toroidal? For everyone who forgot their geometry, toroid basically means donut shaped. Through this application, General Mills was trying to obtain a form of trade dress protection, which is a form of trademark protection.0
The examining trademark attorney refused the application by starting with the principle that "color marks are never inherently distinctive and can only be registered on the Supplemental Register or on the Principal Register with sufficient proof of acquired distinctiveness" and that the General Mills's evidence of acquired distinctiveness was insufficient because it did not demonstrate "that the color mark has acquired source-indicating significance in the minds of consumers". Nov 19, 2015 Office Action. General Mills attempted to overcome the refusal by submitting reams of "evidence" of acquired distinctiveness, but the examining attorney maintained its refusal that General Mills failed to demonstrate "that the color mark has acquired source-indicating significance in the minds of consumers". June 2, 2016 Office Action.
In response to the final refusal, General Mills appealed to the Trademark Trial and Appeal Board (TTAB) (proceeding 86757390, link to TTABVUE). Three days ago, TTAB issued a precedential opinion affirming the examining attorney (Opinion).
TTAB started with the principles that a single color applied to a product or its packaging may function as a trademark but can never be inherently distinctive as a source indicator. And that "by their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character". Opinion at 3-4. And, ultimately summarized the question as "whether customers 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." Opinion at 6-7.
An essential element of a trademark claim is having "substantially exclusive" use of the asserted trademark. The examining attorney argued that General Mills did not have such use of the color yellow on toroidal-shaped, oat-based breakfast cereal boxes. TTAB concurred stating that
we find that the presence in the market of yellow-packaged cereals from various sources – even cereals that are not made of oats or are not toroidal in shape – would tend to detract from any public perception of the predominantly yellow background as a source-indicator pointing solely to Applicant.... 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.
Opinion at 18. And that
When customers see a color appearing on products from many different sources, they are less likely to expect the color to point to a single source of goods. Instead, customers are likely to perceive the color on packages as a device designed to make the packages attractive and eye-catching. This is especially true of a primary color, like yellow, which is used by many merchants and is not “a color that in context seems unusual.”
Opinion at 21. Thus, TTAB found that General Mills failed to demonstrate "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." Opinion at 28.