It’s bad enough for General Mills that Americans have been losing interest in breakfast cereal for the past decade or more, but the brand got more bad news last week when the Trademark Trial and Appeal Board rejected its application to trademark the use of yellow on Cheerios boxes.
The problem for the packaged-foods giant wasn’t so much that consumers didn’t recognize Cheerios’ famous yellow box; it was that too many other cereals were already using yellow on their boxes. Shoppers who are “accustomed to seeing numerous brands from different sources offered in yellow packaging are unlikely to be conditioned to perceive yellow packaging as an indicator of a unique source,” wrote Judge Anthony R. Masiello in his decision. “Rather, they are more likely to view yellow packaging simply as eye-catching ornamentation customarily used for the packaging of breakfast cereals generally.”
The lack of legal protection for a yellow box probably won’t rob Cheerios of sales it was going to make anyway, but the ruling did squash two long years of legal efforts by General Mills’ attorneys to secure the trademark. All of this begs some important questions: Why is securing exclusive use of a color so hard to do? And how did brands come to fighting over colors in the first place?
Trademarking a color is legally quite challenging, said John Welch, an intellectual property attorney with the Boston firm of Wolf, Greenfield and Sacks. That’s why only a relative handful of brands have succeeded. “It’s really difficult,” he said. “These nontraditional trademarks like product shape and color are just not seen by consumers as trademarks, so you have to go out and prove that the public has come to recognize these things as marks. It’s a high burden, so you start behind the eight ball.”
It’s not enough to simply argue that a given color is an attribute of a brand. A company applying to the U.S. Patent and Trademark Office must prove that consumers visually equate a specific color with that brand. And trademark protection, when it is granted, doesn’t apply to all uses. For example, the 3M corporation has successfully trademarked the color yellow, but only for its Post-it notes. UPS secured trademark No. 2,901,090 for its chocolate-brown color, but the protection is confined to uniforms and, of course, those big brown trucks.
How colors become trademarks
For decades, brands were only permitted to trademark color combinations, and only then when they were used as part of a distinctive design. That changed in 1985, when Owens Corning decided it would try to register the color pink, a recognizable feature of its fiberglass insulation. After the USPTO refused to issue the mark, the company appealed, kicking off a decade-long legal battle that wound up in the U.S. Supreme Court in 1995. The court ruled that a single color could be trademarked so long as it had “distinctiveness” in the marketplace.
Today, the International Trademark Association explains that threshold in this way: “The trademark owner must show that the consumer, upon seeing the color used in connection with the goods or services, views the color not as merely ornamental but, rather, as a means of indicating the origin of those goods or services.”
In other words, if the consumer immediately associates a color with a brand, a case can be made for trademarking. So it’s easy to see why Tiffany & Co. was able to secure a trademark for robin’s egg blue for its shopping bags and gift boxes. The luxury brand had been using that color since 1845, plenty of time for shoppers to associate color with brand.
Even so, a brand must present a strong argument that goes beyond historical usage. And this, in Welch’s view, is where Cheerios faltered. “You have to show what we call acquired distinctiveness, and you have to show exclusive use and extensive use—and they couldn’t show exclusive use,” he said. “That was the killer for them.”
A successful case is more likely to look like the one UPS presented for its color trademark. Even though the brand had used the chocolate-brown color since 1916, that fact alone wasn’t enough to secure the mark. UPS’s paperwork included examples of media coverage citing the distinctive brown, proof that brown had been part of its advertising to the tune of $100 million a year and no fewer than 109 statements from consumers who associated Pantone 462C with the UPS brand.
Get ready to fight
Even if a brand does secure a trademark for a color, its problems are far from over. Many have had to litigate, often for years, just to fend off challenges to trademarks. In 2015, AstraZeneca, which trademarked the color purple for its heartburn remedy Nexium, went to court to block Indian drugmaker Dr. Reddy’s Laboratories from using purple on its generic pills. AstraZeneca prevailed by successfully arguing that “the media and the public associate the color purple with AstraZeneca … and its Nexium products.” It probably didn’t hurt that Nexium has been famously advertised as “The Little Purple Pill” (also a trademark).
Christian Louboutin had a tougher time. Since 1992, the sassy French designer had applied a candy-apple red finish to the soles of his high heels, but not until 2008 did he decide to trademark it. That presented problems for rival design house Yves Saint Laurent, which didn’t much care to be told that a color was suddenly off limits. The dispute festered until 2012, when it wound up in a federal appeals court in Manhattan. Judge José A. Cabranes ruled in favor of Louboutin, finding that “the contrast between the sole and the upper … causes the sole to ‘pop’ and to distinguish its creator.” But the decision denied Louboutin in one respect: Its trademark of the red sole did not extend to shoes that were themselves red.
Even Owens Corning, which led the way for color trademarking, has had to defend its claim in court. When U.K. company Kingspan Insulation began selling pink-hued ductwork and roofing products in the U.S., Owens Corning’s lawyers essentially had to argue the brand’s claim to pink all over again. “As a result of its long usage and extensive sales, advertising and promotion,” they argued, “the pink color mark has become distinctive and famous, and Owens Corning Intellectual Capital LLC owns an extremely valuable goodwill which is symbolized by the pink color mark.”
For Cheerios, the legal fight has been long, but the recent defeat is apparently still not the end of it. “We are working to protect the iconic yellow color for our Cheerios box,” a company spokesperson said in a written statement to Adweek. “We are evaluating our next steps.”