Cheerios’ Failed Case for Yellow Shows Why It’s So Hard for Brands to Trademark Colors

General Mills' defeat illustrates one of branding's trickiest tasks

It turns out a lot of cereal brands use yellow on their boxes.

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.”

Photo: Nick Ferrari

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.”

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