Issues with Description of Goods in Trademark Application

Fruity Pebbles failed to attain a trademark for the various colors of its cereal. Scott Hervey and Jessica Marlow discuss the TTAB’s decision to reject the trademark application on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

Show Notes:

Scott:
A trademark examiner refused to register a trademark for the various colors that make up the colors of Fruity Pebbles Cereal on the grounds that the proposed color mark fails to function as a trademark. The applicant, Post Foods, could not stomach the refusal, and it appealed it to the Trademark Trial and Appeal Board. On January 4, 2024, the TTAB upheld the examiner’s refusal. This case exemplifies the difficulty of securing a color trademark. And there’s some other takeaways, important takeaways, too.

We’re going to discuss this on this next installment of The Briefing by Weintraub Tobin. Welcome back to The Briefing. I’m Scott Hervey of Weintraub Tobin, and today, I’m joined by my law partner, Jessica Marlow. Jessica, welcome back to The Briefing.

Jessica:
Thank you. Happy to be back.

Scott:
So, Jessica, I know that you’re a fan of fruity pebbles, right?

Jessica:
I am.

Scott:
Okay.

Jessica:
At all ages.

Scott:
Yeah, this case is right up your alley. So Post Foods applied to register a trademark for the various colors that make up the colors of Fruity Pebble Cereal. Understanding just how difficult it would be to register the color mark, the application included a declaration from the applicant’s counsel supporting the two-f claim, which is a claim of acquired distinctiveness and allegations of long use, extensive advertising and, unsolicited media coverage and significant product sales. Supporting this claim of acquired distinctiveness. The examining attorney refused to register the mark because it consisted of a nondistinctive product design or nondistinctive features of a product design that are not registerable on the principal register without sufficient proof of acquired distinctiveness. And while the applicant’s two-f claim and all the evidence that the applicant submitted in support of the two-f claim was an attempt of establishing acquired distinctiveness, the trademark examiner said that the section two-f claim showing was insufficient to demonstrate acquired distinctiveness.

Jessica:
Right. And in response to the office actions, the applicant submitted additional evidence of the mark’s acquired distinctiveness, including the results of a consumer survey, long use of the mark, significant advertising expenditures and sales revenue, extensive media coverage, and customer statements. Despite all of this, the examiner found the additional evidence insufficient to show acquired distinctiveness and continued to refuse registration on the grounds that the mark failed to function as a trademark. Post appealed this refusal to the TTAB.

Scott:
Now, color marks are never inherently distinctive when used on products or on product designs. Where a color mark is not functional, it may be registered on the principal register if it is shown to have acquired distinctiveness. The TTAB noted that the burden of proving that a color mark has acquired distinctiveness is substantial there are six factors that are considered in determining whether a color mark has acquired distinctiveness, and those six factors are the association of the trade dress with a particular source by actual purchasers, and usually that’s measured by customer surveys, the length, degree, and exclusivity of use the amount and manner of advertising the amount of sales and the number of customers, intentional copying and unsolicited media coverage of the product embodying the mark. No single factor is determinative, and all six factors are to be weighed together in determining the existence of secondary meaning.

Jessica:
In response to the evidence submitted by the applicant, which included product history and length of use, product pictures, advertising samples, sales volume and revenues, advertising expenditures, unsolicited third-party references, and two consumer recognition surveys, the trademark examiner submitted examples of third-party multicolored cereals in the form of puff rice balls, ring shapes, and other shapes. Lexus Nexus printouts has seven articles discussing rainbow-colored cereals and various articles discussing the color evolution of fruity pebbles from three colors in 1973 to the seven colors that presently exist.

Scott:
That someone would write an article about the evolution of the colors of fruity pebbles is just a head-scratcher.

Jessica:
It must have been fun to write, though. From the TTAB opinion, it seems that the TTAB found extremely persuasive the pictures of cereal boxes that show similar multicolored cereal combinations, which were submitted as evidenced by the trademark examiner. This includes some of my personal favorites: Captain Crunch, All Berries, Fruit Loops, Trix, Fruity Shapes, Cascadian Farm Organic Fruitful O’s, Trader Joe’s, Fruity O’s Best Choice, Frosted Berry O’s Best Choice, Fruit Crisp Rice Cereal, Wegman’s Fruity Rice Crisps, and seven others. 15 in total, most of which I’ve tried.

Scott:
The review podcast of the multicolored cereals will be a later episode. I agree with you. I think this evidence was the key factor in Post’s loss. The TTAB said that this evidence contradicts applicants claim that its use of the claimed colors was substantially exclusive, and it significantly increased the applicant’s burden to establish that the claimed colors had acquired distinctiveness and identify a single source of breakfast cereal, and Post just wasn’t able to satisfy that.

Jessica:
Scott, there’s also a very technical aspect to Post’s inability to secure its registration, right?

Scott:
Yeah, that’s right. So, there was an issue related to exactly what Post claimed to be the mark. The Post argued that its application covered the combination of the colors as applied to crisp rice cereal pieces, thus making the shapes of the cereal part of the application. However, Post’s amended drawing had dotted lines showing the configuration of the cereal. When depicting a physical part of a mark, like, for example, part of a product packaging or part of a product design, like a Coke bottle, the portion of the physical thing that is intended to be part of the trademark must be displayed in solid lines, not broken lines, and the configuration of the product packaging or the product design intended to comprise part of the trademark must be identified and set forth in the description of the mark. Here, the applicant’s description of the mark explained that the quote broken lines depicting the shape of the crisp cereal pieces indicates placement of the mark on the crisp cereal pieces and are not parts of the mark. So essentially, they disclaimed or said that the shapes of the rice cereal pieces are not a part of the trademark, and thus the trademark trial Appeal Board was not able to consider any of the applicant’s evidence as it related to the shapes or the configuration of the cereal. They could only consider color.

Jessica:
Interesting. And I understand there was also an issue with the description of the goods the applicant applied for breakfast cereal, and that’s understandable since it’s always advisable to get the broadest possible coverage for a trademark. However, the evidence submitted by the applicant focused only on one type of cereal, specifically rice cereal. As a result, the TTAB found the applicant’s evidence flawed and held that it did not provide any evidence that the claimed colors have acquired distinctiveness for the identified goods. That is, all breakfast cereal, including other noncrisp rice cereals in other shapes. So, Scott, what’s the takeaway from this?

Scott:
Yeah, so there are a few. The first is that all trademark applicants should recognize that color marks are very tough to get. That’s not to say that it’s impossible, as we, our firm, have obtained color marks for clients as applied to their goods in the past. The second is that when applying for a color mark because a color mark is inherently non-distinctive, it’s probably a good idea to include the color claim as part of a mark that covers product packaging or product design, as well as the color. If Post included the configuration of its cereal pieces as part of the mark, and also limited its mark to cover rice breakfast cereal, it may have had a better chance of securing a registration.

Jessica:
Well, that’s really great advice, Scott. And now I’m also hungry. But thank you for having me today. Thank you for listening to this episode of The Briefing. We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment. Thanks for listening.