Don’t Get Boxed In By a Consumer Survey: T.T.A.B. Refuses Trade Dress Protection for Cheerios Yellow

Order Affirming Refusal of Registration, In re General Mills IP Holdings II, LLC, T.T.A.B. (August 22, 2017)

Trademark portfolio owners have long known the pitfalls in securing trade dress protection for a single color. The Trademark Trial and Appeal Board recently underscored those difficulties in affirming the Trademark Office’s refusal to register the color yellow as trade dress in connection with General Mills’ Cheerios cereal.

Back in September 2015, General Mills sought trade dress protection for “the color yellow appearing as the predominant uniform background color on product packaging for [Toroidal-shaped, oat-based breakfast cereal].” General Mills has been using yellow in connection with Cheerios since 1945 (and since 1941 under the name “Cheerioats”).  In its application, General Mills indicated that “consumers have come to identify the color yellow, when used in connection with [breakfast cereal], comes from not only a single source, but specifically the Cheerios brand.”  In support of consumer’s association between yellow on cereal boxes and Cheerios, General Mills submitted “voluminous evidence,” including a consumer survey, expert report, and evidence of over $4 billion in sales and $1 billion in marketing of the yellow Cheerios box.

The Examining Attorney for the Trademark Office, however, found that General Mills did not sufficiently demonstrate that consumers had come to associate Cheerios with yellow cereal boxes. The Board agreed, noting that General Mills offers Cheerios in other colors and other companies offer cereal products with similar yellow packaging.  The Board also found fault with the survey design and concluded that it demonstrates consumers’ familiarity with the yellow Cheerios box but does not establish that consumers viewed the color alone as indicating the source of the goods.  In particular, the Board found that the question “What brand of cereal comes in this [solid-yellow pictured] box?”—because of the singular “brand”—likely led respondents to believe that only a single brand should be named but did not establish that consumers distinctively associate yellow cereal boxes with only the Cheerios brand.  As a result, the Board concluded that General Mills hadn’t shown that “Cheerios yellow” functions as a trademark.

Based on this precedential decision, brand owners looking to add a color to their trademark portfolio should employ extra caution (think of a yellow traffic light) when designing evidentiary surveys to develop questions that, among other things, don’t force or encourage consumers to identify only one brand.