United States: Can You Trademark the Color Yellow for Cheerios?

"There is no blue without yellow and without orange." — Vincent Van Gogh (June 1888).

It is extremely difficult to secure trademark rights to a single color. Success stories are few and far between. Recently, General Mills, maker of Cheerios, sought trademark protection for the color yellow "as the predominant uniform background color on product packaging" for its Cheerios products, described as "Toroidal-shaped, oat-based breakfast cereal." In re General Mills IP Holdings II, LLC, Serial No. 86757390 at 19 (TTAB Aug. 22, 2017).

In support of its application for a trademark registration, General Mills submitted an expert report, the results of a consumer survey and other "voluminous" evidence in support of its application.  Id. at 2.

The original Trademark Examining Attorney refused registration on the ground that the single yellow color is not inherently distinctive, and the color fails to function as a trademark.  Id. at 3.

General Mills appealed the decision to the Trademark Trial and Appeal Board (TTAB). On August 22, 2017, the TTAB agreed with the Examining Attorney and refused to grant a trademark registration to General Mills for the color yellow.

To trademark a color, the applicant must prove that in the mind of the public, the color used by the company is meant to identify the source of the product rather than the product itself. Id. at 4. For example, Owens-Corning has trademark protection for the pink color of its insulation. T-Mobile has trademark protection for the magenta color it uses. A dry cleaning press pad manufacturer obtained trademark rights for a shade of green-gold it used on its products.

General Mills argued that it began using the yellow color on its Cheerios as early as 1944, it has expended over $1 billion in marketing the yellow cereal box and has sold billions of dollars of Cheerios product in a yellow box. Id. at 5.

In its ruling, the TTAB pointed to evidence that General Mills offers Cheerios products in colors other than yellow, and noted that "non-exclusive use" of the claimed color "presents a serious problem for the merchant seeking to develop rights" in a color. Id. at 12.

The applicant must show "substantial exclusivity" in light of "all relevant market evidence, including evidence of an applicant's efforts to promote public perception of its mark as a source-indicator and evidence indicating whether such efforts have succeeded." Id. at 11.

The TTAB also pointed to evidence of 23 other cereal products with packaging similar in color to General Mills, including three examples below.

General Mills, therefore, "is not alone in offering oat-based cereal, or even toroidal-shaped, oat-based cereal, in a yellow package." Id. at 16. The "breakfast cereal marketplace is awash in brightly colored packages" and there is no evidence that General Mills would expect its customers to select their cereal "on the basis of the color of the box." Id. at 20-21. The TTAB found that "the number and nature of third-party cereal products in yellow packaging in the marketplace to be sufficient to convince us that consumers do not perceive the color yellow as having source-indicating significance for the goods." Id. at 19.

The TTAB also rejected the survey evidence submitted by General Mills, concluding that:  "[w]hen we consider the industry practice of ornamenting breakfast cereal boxes with bright colors, bold graphic designs, and prominent word marks, and the fact that customers have been exposed to directly competing products (toroidal oat cereals) and closely related products (other forms of breakfast cereal) in packages that are predominantly yellow, we are not persuaded that customers perceive Applicant's proposed mark, the color yellow alone, as indicating the source of Applicant's goods." Id. at 26-27. Thus, General Mills failed to show that the yellow background on its cereal box has acquired distinctiveness and has not shown it functions as a trademark. Id. at 28.

This recent TTAB decision further demonstrates how difficult it is to obtain a trademark registration for a single color.

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