Securing exclusive use of a color is one of branding’s trickiest tasks, as General Mills learnt late last week when the US’s Trademark Trial and Appeal Board rejected its application to trademark the use of yellow on Cheerios boxes.
Simply arguing that a given color is an attribute of a brand is not enough. A company applying to the U.S. Patent and Trademark Office, for example, must prove that consumers visually equate a specific color with that brand. And trademark protection, when it is granted, doesn’t apply to all uses.
For example, the 3M corporation has successfully trademarked the color yellow, but only for its Post-it notes. UPS secured trademark No. 2,901,090 for its chocolate-brown color, but the protection is confined to uniforms and, of course, those big brown trucks.
The International Trademark Association explains the threshold in this way:
“The trademark owner must show that the consumer, upon seeing the color used in connection with the goods or services, views the color not as merely ornamental but, rather, as a means of indicating the origin of those goods or services.”
In other words, if the consumer immediately associates a color with a brand, a case can be made for trademarking. So it’s easy to see why Tiffany & Co. was able to secure a trademark for robin’s egg blue for its shopping bags and gift boxes. The luxury brand had been using that color since 1845, plenty of time for shoppers to associate color with brand.
Even if a brand does secure a trademark for a color, its problems are far from over.
Christian Louboutin, for example, had a tough time trademarking his red soles. Since 1992, the French shoe designer had applied a red finish to the soles of his high heels, but not until 2008 did he decide to trademark it. That presented problems for rival design house Yves Saint Laurent, which didn’t much care to be told that a color was suddenly off limits.
The dispute ran until 2012, when it wound up in a federal appeals court in Manhattan, where the judge ruled in favor of Louboutin, finding that “the contrast between the sole and the upper … causes the sole to ‘pop’ and to distinguish its creator.”
For Cheerios, the legal fight has been long, but the recent defeat is apparently still not the end of it. “We are working to protect the iconic yellow color for our Cheerios box,” a company spokesperson said in a written statement to Adweek. “We are evaluating our next steps.”