Affirming a refusal to register the color yellow appearing on packaging for "toroidal-shaped, oat-based breakfast cereal," the TTAB found that the alleged mark lacks acquired distinctiveness and therefore fails to function as a trademark. Although Applicant General Mills submitted voluminous evidence to support its claim of acquired distinctiveness, the Board was convinced by proof of third-party use of yellow packaging for cereal products, that consumers "do not perceive the color yellow as having source significance for the goods." In re General Mills IP Holdings II, LLC, Serial No. 86757390 (August 22, 2017) [precedential] (Opinon by Judge Anthony R. Masiello).
Of course, a single color can never be inherently distinctive as a source indicator. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Prods. Co., 34 USPQ2d 1161, 1162-3 (1995). Moreover, "[b[y their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character." In re Owens-Corning Fiberglas Corp., 227 USPQ 417, 424 (Fed. Cir. 1985)
In light of the evidence of staggering promotional and sales revenues, the Board recognized that General Mills "has worked assiduously to create an association between the color yellow and its 'regular' CHEERIOS brand cereal." The Board observed, however, that "no matter how hard a company attempts to make an inherently nondistinctive word or symbol serve as a unique source identifier, it is proof of results—that consumers so perceive the purported mark—that is the touchstone of our inquiry into acquired distinctiveness. E.g., Plastilite Corp. v. Kassnar Imps., 508 F.2d 824, 184 USPQ 348, 350 (CCPA 1975)."
Examining Attorney Tasneem Hussain based the refusal to register primarily on a lack of substantially exclusive use of the color yellow by General Mills. The evidence showed that General Mills "is not alone in offering oat-based cereal, or even toroidal-shaped, oat-based cereal, in a yellow package." Moreover, 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 – further undermined any possible source significance for the color yellow.
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.' Qualitex, 34 USPQ2d at 1162-63.
General Mills pointed to its survey evidence purporting to show that 48.3% of respondents associated the yellow box with the CHEERIOS brand. The Board, however, saw a hole in the survey, namely that the wording of the survey questions suggested that the respondents could name only one brand: after being shown a drawing of the applied-for mark, the respondents were asked, "If you think you know, what brand of cereal comes in this box?"
Because General Mills failed to demonstrate that the yellow background has acquired distinctiveness under Section 2(f), the Board found that the applied-for mark fails to function as a trademark for applicant's cereal.