IP Law Daily, TRADEMARK—TTAB: Post’s effort to trademark cereal colors failed in absence of acquired distinctiveness, (Jan 9, 2024)

By Robert B. Barnett Jr., J.D.

Color marks are never inherently distinctive when used on products or product designs.

Post’s attempt to register “the colors of yellow, green, light blue, purple, orange, red, and pink applied to crisp cereal pieces” in its Fruity Pebbles cereal was rejected because the color mark failed to function as a trademark given that it was not inherently distinctive and had not been shown to have acquired distinctiveness, the Trademark Trial and Appeal Board has ruled in a precedential decisionupholding the examining attorney’s denial of the application. The mark had not acquired distinctiveness because many other cereal manufacturers sell cereals in multiple colors and consumers are accustomed to seeing multi-colored cereals. Also, Post may have erred in seeking registration for “breakfast cereals” rather than the more targeted “crisp rice breakfast cereals” (In re Post Foods, LLC, January 5, 2024, Shaw, T.).

Background. Post Foods, LLC, sought registration for a color mark under “breakfast cereals” that depicted “the colors of yellow, green, light blue, purple, orange, red, and pink applied to the entire surface of crisp cereal pieces.” The original application sought registration of trade dress comprising both the colors and the shape of the cereal. The drawing submitted with the application was a close-up picture of the Fruity Pebbles breakfast cereal depicting numerous colored cereal pieces. The examining attorney issued a requirement for a substitute drawing depicting a three-dimensional view of the goods.

Post responded by providing additional evidence of the mark’s acquired distinctiveness, including consumer surveys, advertising expenditures, sales revenue, and media coverage. It refused, however, to submit a substitute drawing.

The examining attorney then issued a requirement for a disclaimer of the depiction of the shape of the cereal flakes apart from the mark shown. In response, Post submitted an amended description that deleted any mention of a three-dimensional product configuration, and it disclaimed any rights in the cereal shape. The examining attorney then issued an interim ruling refusing registration on the ground that the proposed mark failed to function as a trademark because it was not inherently distinctive and had not been shown to have acquired distinctiveness.

Post responded by submitting further evidence of acquired distinctiveness, including a second survey. Post also submitted a new drawing that depicted a smaller collection of cereal flakes in the various colors. Unconvinced by the new evidence, the examining attorney issued a final refusal to register. After reconsideration was denied, Post appealed the decision to the Board.

Defining the mark. The Board began by defining what it believed that Post was intending to claim as a trademark. Although the examining attorney had interpreted it as a color-only mark, Post had contended that the mark depicted the color combination as applied to crisp rice cereal pieces.

“The crux of the matter,” the Board said, “is the interplay between the identified goods, the amended drawing, and the amended description of the mark.” As the Board noted, the description in the registration never made any mention of “crisp rice cereal pieces, although it did mention “crisp cereal pieces.” Even if it had, the Board concluded, the application is for a color-only mark, as the examining attorney said, because the mark does not include the shape of the cereal pieces. Thus, the Board ruled, when Post claims that its goods are limited to “crisp rice cereal pieces,” the claim is contradicted by the record because the application was not limited to “crisp rice cereal pieces.” Thus, the Board defined the mark as a color-only mark.

Functioning as a mark. The Board then noted that trade dress using colors is registrable as a trademark only if it serves the same source-identifying function as a trademark. Color marks are never inherently distinctive. Thus, it can be registrable only if it is shown that the colors have acquired distinctiveness. This burden of showing acquired distinctiveness, the Board added, “is substantial.”

The Board then undertook an analysis demonstrating that the colors had not acquired distinctiveness. Third-party multicolored cereals currently exist in the form of puffed rice, balls, and ring shapes, among others. The Board produced at least 15 examples, including Fruit Loops and Trix. Numerous business articles have discussed the prevalence of rainbow-colored cereals. Fruity Pebbles itself has moved from the original three colors in 1973 to the current seven colors. An application for a color mark cannot be successful, the Board concluded, when consumers are already confronted with so many multi-colored options.

In response, Post cited evidence of its long use of the colors in Fruity Pebbles crisp rice cereals. The Board at this point, however, noted that the application identified “breakfast cereals,” without limitation, as the scope of the mark. Thus, a mismatch exists between Post’s efforts to show distinctiveness for its “crisp rice breakfast cereals” and the actual application. To receive the registration, Post was required to show acquired distinctiveness across all breakfast cereals, which it could not do.

Furthermore, the two surveys that Post cited were unavailing to its cause. First, they were flawed because they did not focus on color alone. Second, the results were not always helpful, with one survey stating that 89.3% of the respondents correctly identified the multicolored, ring-like cereal as being from one of the 15 third-party cereals. Because Post’s application also encompasses ring-like cereal, consumers do not associate the colored cereals with Post. As a result, the Board concluded that the seven colors had not acquired distinctiveness.

The Board, therefore, affirmed the examining attorney’s rejection of the color mark.

The Case is Serial No. 88857834.

Attorneys: Matthew J. Himich (Thompson Coburn LLP) for Post Foods, LLC. Tasneem Hussain for the USPTO.

Companies: Post Foods, LLC

Cases: Trademark USPTO GCNNews