Is Cheerios yellow a thing?

August 30, 2017, By

Is Cheerios yellow a thing? No, not according to the US trademark court office. General Mills, the manufacturer of the ‘Cheerios’ American cereal brand, had spent two years pursuing trade mark protection for the precise shade of sunshine yellow that it uses on its cereal boxes. The US trademark court office, however, denied the company’s trade mark application earlier this month.

The judge explained that Cheerios could not have the exclusive right to use that particular shade of yellow because all sorts of breakfast items also use it on their packaging. He also pointed to the broader industry practice of ornamenting breakfast cereal boxes with bright colours, bold graphic designs and prominent word marks.

Selection of cereals in yellow packagingBriffa comment

There are a couple of key points to take away from the Cheerios saga –

1. Understanding the function of a trade mark is essential.
The principal function of a trade mark is that it must convey information about the source (or origin) of the product to the consumer (the origin function). The strongest trade marks therefore tend to be highly distinctive (either because they are inherently distinctive or because they have acquired distinctiveness through use over time).

For Cheerios to have obtained trade mark protection for the colour yellow, it would have been necessary for it to demonstrate that consumers could identify the product from the colour alone, without the assistance of any other words, logos or other brand identifiers. The proliferation of yellow cereal boxes, therefore, was ultimately the reason for the company’s downfall, because the widespread use of the colour on cereal boxes rendered the ‘Cheerios yellow’ indistinguishable from all the ‘other yellows’.

2. Consider obtaining protection for less obvious brand identifiers.
Notwithstanding Cheerios lack of success in this case, it is possible to obtain trade mark protection for colours (e.g. Cadbury has trade mark protection for its specific royal purple, Coca-Cola has trade mark protection for its specific ‘Coke Red’ and T-Mobile has trade mark protection for its unique magenta). It is also possible to obtain trade mark protection for shapes in certain circumstances (e.g. the shape of the Toblerone chocolate bar is protected as a trade mark).

The key point, as above, is that the colour/shape must be something that customers use (to the exclusion of any/all other brand identifiers) to identify the source or origin of the product in question. Therefore, in addition to the headline brand name and/or logo, businesses should also consider any other brand identifiers that may be worth protecting (e.g. colours, shapes, taglines, sounds and other secondary brand identifiers), and ensure that those brand identifiers are as distinctive as possible (i.e. as different as possible for anything else on the market) and/or that those brand identifiers are used regularly and consistently (i.e. such that distinctiveness may be acquired through use over time).

A relatively recent UK example of a company securing trade mark protection for a secondary (somewhat less obvious) brand identifier is the registration by Specsavers of “SHOULD’VE” as a word mark in November last year. The tagline “SHOULD’VE GONE TO SPECSAVERS” was registered as a word mark 11 years earlier and during that period the word “SHOULD’VE” (in isolation) acquired distinctiveness because it was regularly and consistently used as part of the Specsavers brand.

Briffa advises on contentious and non-contentious trade mark matters, as well as all aspects of intellectual property law and practice. If you would like to discuss protection for your brand, or broader protection for your business’s intellectual property assets, please do not hesitate to drop into our offices in the Business Design Centre in Islington or contact us on [email protected]

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