Businesses rely on name and product recognition to develop customer loyalty and stand out in the marketplace. Products and services introduced into the market may have distinctive names, logos, or designs—known as trademarks or service marks—that help consumers identify them. Trademark law allows businesses to protect the value of these marks, such as by prohibiting their use by others. The extent of trademark protection is a matter of perpetual dispute. A truly distinctive name, such as Coca-Cola or Pepsi, is undoubtedly entitled to trademark protection, as are easily recognizable logos. When a particular color is intrinsically connected to a product design, it could be eligible for trademark registration, but the burden of proof is heavy. A cereal maker recently sought trademark protection for the color yellow, as used in its product packaging, but its application was denied. The Trademark Trial and Appeals Board (TTAB) affirmed this denial. In re General Mills IP Holdings II, LLC, Ser. No. 86757390, opinion (TTAB, Aug. 22, 2017).
The federal Lanham Act defines a trademark in part as “any word, name, symbol, or device, or any combination thereof” that a person uses “to identify and distinguish his or her goods.” 15 U.S.C. § 1127. A design, symbol, or name can be eligible for trademark registration under § 2(f) of the Lanham Act if it “has become distinctive of the applicant’s goods in commerce.” Id. at § 1052(f). The applicant can demonstrate this by showing “substantially exclusive and continuous use” of the mark for at least five years prior to the application date. Id.
Businesses have trademarked colors on multiple occasions. The trademark claim typically involves a distinct color used in a particular way. Five years ago, a federal appellate court held that a fashion designer could obtain trademark protection for a particular shade of red that it used on the soles of its shoes. Christian Louboutin v. Yves Saint Laurent America, 696 F. 3d 206 (2d Cir. 2012). Other recognizable color-based trademarks include the brown delivery vans used by United Parcel Service, the pink insulation produced by Owens-Corning, and the green and yellow color scheme used in the equipment manufactured by John Deere.
The applicant in the General Mills case sought trademark protection for “the color yellow appearing as the predominant uniform background color on product packaging” for the cereal known as Cheerios. General Mills, op. at 2. The applicant claimed eligibility for trademark registration under § 2(f), arguing that consumers associated the color yellow with the Cheerios brand. The U.S. Patent and Trademark Office disagreed and denied the application.
The TTAB affirmed the denial of the application, noting that the central question was “whether customers recognize the color yellow on a package of toroidal-shaped, oat-based breakfast cereal” as a Cheerios product. Id. at 6-7. It acknowledged that the applicant has “worked assiduously” to associate the color yellow with Cheerios, id. at 8, but it ultimately concluded that evidence of “non-exclusive use” by both the applicant and its competitors weighed against registration. Id. at 12. The TTAB found numerous examples of Cheerios packaging that did not use the color yellow and other breakfast cereals that used yellow in their packaging.
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