Tuesday, January 09, 2024

Precedential No. 2: TTAB Affirms Refusal to Register Proposed Multi-Color Mark for Breakfast Cereals

Color me unsurprised. The Board upheld a refusal to register the proposed color mark shown below, consisting of the colors "yellow, green, light blue, purple, orange, red and pink" for "breakfast cereals," under Trademark Act Sections 1, 2, and 45, on the ground that the color mark is not inherently distinctive, lacks acquired distinctiveness, and therefore fails to function as a source indicator. Evidence of third-party multi-colored cereals and Internet references to "rainbow-colored" cereals undermined Post's claim of acquired distinctiveness. In re Post Foods, LLC, 2024 USPQ2d 25 (TTAB 2024) [precedential] (Opinion by Judge Thomas V. Shaw).

Defining the Mark at Issue: Post stated in its application that "[t]he mark consists of the colors of yellow, green, light blue, purple, orange, red and pink applied to the entire surface of crisp cereal pieces. The broken lines depicting the shape of the crisp cereal pieces indicate placement of the mark on the crisp cereal pieces and are not part of the mark."

Post nonetheless argued that its mark comprises the color combination applied to "crisp rice cereal pieces," as depicted in the application drawing (shown above). The Board pointed out that the application drawing "depicts the mark to be registered." Trademark Rule 2.52. Here, the goods are identified as "breakfast cereals," not "crisp rice breakfast cereals."

The description of the mark makes no mention of “crisp rice cereal pieces,” but even if it did, we look to the identification of the goods, not the mark description, to define the scope of the goods for which registration is sought. When we consider the identification of goods, i.e., “breakfast cereals” generally, and the mark, which does not include the shape of the cereal pieces because they are shown in broken lines, we find that the proposed mark is a color-only mark applied to any breakfast cereal—not, as Applicant claims, a combination of the listed colors as applied solely to crisp rice cereal pieces.

The Board noted that "[i]f Applicant wanted to limit its mark to use on 'crisp rice breakfast cereals,' it should have amended its identification of goods."

Distinctiveness: Color marks are never inherently distinctive when applied to product configurations. Wal-Mart Stores, 54 USPQ2d 1068. Since there was no evidence that the subject color mark is functional, it may be registered if acquired distinctiveness is established. However, the burden of proof in that regard is "substantial" for a color mark. See In re Owens-Corning, 227 USPQ 417, 424 (Fed. Cir.1985).

Examining Attorney Tasneem Hussain introduced examples of 15 third-party multi-colored cereals in the form of puffed rice, ball, ring shapes, etc., and seven articles discussing rainbow-colored cereals. Post submitted two declarations regarding product history (Fruity Pebbles), long use of the mark (since 1973), pictures of the product and its packaging, advertising samples, sales volume and revenues figures, advertising expenditures, unsolicited third-party references, and the results of two consumer surveys.

The Board found that the USPTO's evidence "establishes that consumers encounter numerous examples of multicolored breakfast cereals in a variety of shapes, including crisp rice cereal pieces such as Applicant’s." This evidence, contradicting Post's assertion that its use of the claimed colors was substantially exclusive, "increases Applicant’s burden to establish that the claimed colors have acquired distinctiveness and identify a single source of breakfast cereals."

With regard to Post's evidence, the Board found a "mismatch" with Post's claim of acquired distinctiveness because the evidence related only to Fruity Pebbles crisp rice cereal, whereas the application at issue identified the goods broadly as "breakfast cereals."

Simply put, Applicant’s extensive evidentiary showing relating to consumer recognition of its cereal’s color, shape, and texture misses the mark. We agree with the Examining Attorney that "[m]uch of applicant’s arguments rely upon evidence that hinges on both configuration and color but this application is only for a color mark. Applicant cannot rely upon evidence that conflates color and configuration to support its Section 2(f) claim."

Post's two surveys measured "a much narrower mark - the colors in Applicant's mark as applied to only one type of breakfast cereal—than the actual mark, which is a color mark applied to all types of breakfast cereals." The survey evidence was also flawed because it "does not focus on the color alone." 

The first survey "was limited to consumer perception of the color mark applied to the configuration of crisp rice cereal pieces." That survey did not provide proof that "the claimed colors have acquired distinctiveness for the identified goods, that is, all breakfast cereals, including other non-crisp rice cereals in other shapes." The second survey included an improper control - multicolored toroidal or ring-like cereal pieces that were encompassed within applicant's identified "breakfast cereals." Moreover, nearly 90% of respondents correctly identified the multicolored, ring-like cereal as being one of the third-party cereals relied upon by the USPTO.

The Board therefore affirmed the refusal to register on the ground that the proposed color mark is not inherently distinctive, has not acquired distinctiveness under Section 2(f), and, therefore, does not function as a trademark.

Read comments and post your comment here.

TTABlogger comment: "I hate summer, winter, fall and spring. Red and yellow, purple, blue and green. I hate everything." George Strait. 

So, will Post file a new application with a narrower identification of goods?

Text Copyright John L. Welch 2024.


At 10:57 AM, Anonymous Alex Butterman said...

If acquired distinctiveness were the only issue, the Supplemental Register should have been available. The summary does not explain whether the Board concluded if the mark can function as a mark. Maybe applicant already owns an SR registration for this mark?

At 12:41 PM, Blogger Daniel Douglas said...

For what it's worth, when I saw the picture, I immediately thought, "Those are Fruity Pebbles," not, "Those are multicolored crisped rice." It's too bad they didn't amend the application to limit it to rice or to particular shapes, because I think the survey evidence could show they had a strong case on acquired distinctiveness if not relying on color and "cereal" alone.

At 12:51 PM, Blogger John L. Welch said...

Post did not seek registration on the Supplemental Register. The Board did not say the proposed mark could never function as a mark. The Board said no acquired distinctiveness, AND THEREFORE it does not function as a mark.


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