A trademark by any other colour: Cheerios™ and colour trademark requirements

Individual colours have been recognised as protectable trademarks by the Supreme Court since 1994. The first colour that the Supreme Court deemed to be capable of functioning as a trademark was a green-gold shade that Qualitex used on its dry cleaning press pads. When Qualitex's competitor started using the same shade, Qualitex sued.

Registrability
Qualitex was not the first to register a colour as a trademark successfully – that distinction is held by Owens Corning for the pink colour of its insulation products – but Qualitex's case made it to the Supreme Court, which definitively determined that a colour can be registrable as a trademark:

• if it has acquired distinctiveness as applied to the goods or services named by the applicant; and
• if it does not fall into either of two common traps for colour marks: functionality and ornamentality.

General Mills's recent failure to obtain registration for the yellow colour of their Cheerios™ boxes illustrates the high burden faced by applicants for federal registration of colour marks in the United States.

Acquired distinctiveness
The most burdensome showing for an applicant in attempting to register a colour mark in the United States is the requirement to demonstrate acquired distinctiveness. According to the Trademark Trial and Appeal Board (TTAB), this is where General Mills failed.

Ordinarily, acquired distinctiveness is shown by substantially exclusive and continuous commecial use of the mark. However, evidence that the subject colour is employed by the applicant's industry competitors detracts from the evidence required to make the showing, and instead provides evidence that the colour is mere ornamentation as applied to the subject goods or services, both for the applicant and its industry competitors.

Therefore, in an application for a colour mark, applicants are usually required to provide fairly voluminous evidence that they, and they alone, have consistently applied the colour to their products or services in a way that makes consumers recognise their product or service just by their presentation in the applied-for colour. Persuasive evidence includes the following:

• declarations;
• proof of extensive advertising or large advertising spend;
• surveys;
• press; and
• customer testimonials.

General Mills had plenty of evidence, including examples of consistent use of the applied-for yellow on boxes of Cheerios™ (and their predecessor, Cheerioats™) since the 1940s, articles linking General Mills's Cheerios™ product to the colour yellow from USA Today and others, a declaration attesting to the fact that General Mills had spent more than $1 billion in marketing yellow-boxed Cheerios™ over the proceeding decade ‒ including a 2014 Super Bowl commercial ‒ and a survey in which nearly 50% of the 419 respondents identified General Mills's Cheerios™ brand based solely on the image of an unmarked, yellow rectangular box.

However, there was also evidence that other cereal brands, including some of General Mills's competitors in the toroidal-shaped, oat-based breakfast cereal market, also used various shades of the colour yellow on their packaging. General Mills could not show that these other uses were either inconsequential or infringing.

The TTAB concluded that General Mills’s yellow was ornamental and therefore failed the test for acquired distinctiveness.

Service marks
If General Mills's application had been for a service mark (eg, United Parcel Service's brown colour for delivery services) and not a trademark, it would have required a description of which objects use the applied-for colour in order to create a connection between the colour and the services in question.

Functionality
Another trap that colour marks can fall into is functionality. If presenting a given item in the applied-for colour increases the item’s functionality (ie, by making it more aesthetically pleasing or more cost effective to manufacture or use), registration may be denied. For example, in a colour mark application by Pepto-Bismol™, the colour pink was found to be functional because it was more soothing to patients and made them more likely to take the medicine.

Comment
The relative dearth of colour trademarks and service marks on the Federal Register means that many other potential trademark owners in the United States could find it difficult to fulfil the application requirements for colour marks.