In a precedential decision on August 22 2017, the Trademark Trial and Appeal Board (TTAB) in In re General Mills IP Holdings II, LLC (Serial 86757390) held that the applicant did not provide sufficient evidence to support the claim that its iconic yellow box in which Cheerios cereal is packaged had acquired sufficient distinctiveness to allow registration. The TTAB ruled that consumers do not perceive the colour yellow to be a source indicator due to the substantial number of other cereal products in the marketplace which use yellow packaging.

Pursuant to Qualitex Co v Jacobson Prods Co (514 US 159, 34 USPQ2d 1161 (1995)), a single colour may be entitled to trademark protection but it can never be inherently distinctive as a source indicator. To be eligible for trademark registration, a colour must have acquired secondary meaning and must not be functional. Examples of colours that have registered trademark protection in the United States are brown for UPS and pink for Owens-Corning’s fibreglass insulation.

General Mills has sold oat-based breakfast cereal under the brand ‘Cheerios’ since 1945, and as early as 1941 under the name ‘Cheerioats’. From 1944 ‘Cheerios’ boxes have contained yellow features on the back and other panels. Despite changes to the artwork over the years and the availability of multiple varieties of the cereal in slightly different packaging, the overall trade dress of the standard ‘Cheerios’ box, particularly in relation to its use of the yellow background, has been relatively consistent since the 1940s.

General Mills requested registration for its yellow trade dress in relation to “toroidal-shaped, oat-based breakfast cereal” in International Class 30 with a claim of acquired distinctiveness, stating that “consumers have come to identify the color yellow, when used in connection with the goods, comes [sic] from not only a single source, but specifically the Cheerios brand”. In addition to its longstanding history, General Mills submitted evidence including so-called ‘look-for’ advertising directing consumers to identify the cereal based on its yellow box, and a survey in which consumers were shown an image of a yellow cereal box, informed that all text and graphics had been removed and asked to identify the brand of cereal in the box.

The examining attorney refused registration of the application for the yellow box due to a lack of exclusive use of the colour yellow in the marketplace. She determined that in the absence of General Mills’ exclusive use, its evidence did not establish that it had acquired distinctiveness.

On appeal, the TTAB noted the longstanding use of the colour yellow and the extensive advertising efforts to train consumers to associate the colour with General Mills as the source of the cereal, but held that these efforts had not succeeded because of the use of the colour yellow in many other cereal boxes in the marketplace. The TTAB stated that the extensive use of yellow on other cereal boxes made it more likely that consumers would view those boxes as “eye-catching ornamentation customarily used for the packaging of breakfast cereals generally” rather than as a source indicator of Cheerios. The TTAB emphasised that competitors’ use of yellow on similarly shaped packages reduced the impact of General Mills’ claims of consumer perception and therefore the likelihood that consumers would perceive the colour as indicating General Mills as the single source. The TTAB also questioned General Mills’ survey evidence, which did not take into account the possibility that consumers may associate the yellow box with more than one brand of cereal, including those of competitors.

The TTAB distinguished General Mills’ application for the yellow box from single colour trademarks that have been successfully registered. For example, in Qualitex the goods at issue were normally not given an artificial colour, and so the competition for such colours was relatively low. By contrast, the TTAB stated that it is commonplace to use bright colours, notably yellow, on cereal boxes.

It is interesting to note, considering the longstanding and continuous use by General Mills of its yellow trade dress in association with the ‘Cheerios’ brand, that it apparently never sought to register the yellow colour in combination with other elements, such as the ‘Cheerios’ logo. The TTAB decision suggests that inclusion of another element beyond the yellow box might have fared better. However, efforts to enforce such a registration against other parties not using a name similar to ‘Cheerios’ may still be challenging, especially in light of this decision.

The article was originally published on September 22nd, 2017 in the World Trademark Review (WTR).