As you may have read in our last article, a color or a color scheme can sometimes fall under a company’s trademark if they can prove its distinctiveness. However, what isn’t enough to meet the trademark threshold?

General Mills sought registration of the predominant, yellow color of its well-known Cheerios boxes by attempting to prove the sunny yellow alone was distinctive to their brand. They argued that under Section 2(f) of the Lanham Act, the color yellow had acquired distinctiveness because consumers have come to identify the color yellow, when used in connection with toroidal, oat-based breakfast cereal, as coming specifically from the Cheerios brand, as evidenced through consumer surveys and expert reports. The United States Patent & Trademark Office (USPTO), however, refused registration of the color mark on the grounds that the General Mills had failed to demonstrate acquired distinctiveness.

Federal trademark law designates trademarks in categories along with a spectrum of distinctiveness. The USPTO will register “distinctive” trademarks and service marks that uniquely differentiate the products or services that the word or symbol appears on or in connection with. Once the USPTO approves the trademark, it is published on the Principal Register. If no other mark owner contests the mark, the mark will vest in its owner an exclusive property right to use that mark on packaging, advertisements, commercials, websites, and merchandise. One important aspect of trademark rights, is the ability to exclude others from using identical or confusingly similar marks.

General Mills appealed, and the Trademark Trial and Appeal Board (TTAB) affirmed the registration denial. To answer the question of whether the yellow color had achieved acquired distinctiveness in the relevant consumers’ minds, the TTAB considered the circumstances under which General Mills’ proposed mark was used, the number of product competitors, and customary marketing practices. Evidence of 23 cereal products offering their product in packaging similar to Cheerios’s yellow color was presented to General Mills. The TTAB found, “the presence of products of this type in the marketplace interferes with the development among relevant customers of a perception that the color yellow on packaging indicates that Applicant is the source of goods (or that there is any single source of such goods).”

General Mills tried to argue that third-party use was irrelevant because other cereal boxes implemented completely different marks and color schemes, but since General Mills only sought to trademark the yellow background color and not the multi-element trade dress of the cereal box in its entirety the TTAB rejected General Mills’ contentions. There was no evidence that purchasers selected their cereal based on the box’s color. The record showed how commonplace it was to incorporate bright colors into cereal box packaging, and “scores of competing products can be found in a single aisle of a supermarket.” With General Mills left unable to show the yellow background acquired distinctiveness under Section 2(f), the TTAB upheld the registration denial.

The law recognizes two types of distinctive marks—inherently distinguishing marks and marks that have acquired distinctiveness. Arbitrary, inherently distinguishing marks are completely unrelated to the good or service they are used in connection with such as Apple for computer products or Subway for a restaurant. “Coined” or “fanciful” inherently distinctive marks are words created for the sole purpose of differentiating a product or service and carry no additional meaning such as Exxon for gasoline and Clorox for bleach. The last category of inherently distinctive marks is “suggestive” marks which allude to but do not explicitly describe, an aspect of a good or service such as Mustang for a car and Coppertone for tanning lotion.

As such, an applicant seeking to register a “descriptive” mark that merely states the name, qualities, or geographic origin of a product or service will not be granted federal registration unless the mark has obtained “acquired distinctiveness.” Acquired distinctiveness is also referred to as secondary meaning. Thus, if a consumer has attached a new and additional meaning to a non-inherently distinctive word or symbol and uses that word or symbol to identify and distinguish a single commercial source, then that mark has acquired distinctiveness and can obtain federal registration. Section 2(f) of the Lanham Act accepts “proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made” as evidence of acquired distinctiveness of the mark in question. Examples of marks that have acquired distinctiveness include Sharp for televisions or Holiday Inn for hotel service providers. Lastly, generic marks that merely name the category of products or services they fall under are not likely candidates for federal trademark registration.

Sorry General Mills, but your yellow alone isn’t unique enough for the USPTO.