SMITH BRAIN TRUST – You can recognize that iconic, bright yellow Cheerios box in an instant. But a U.S. trademark court says that's not reason enough to grant the cereal maker exclusive claims to the color.
The court, in its recent ruling, said all sorts of breakfast foods have adopted the use of the sunshiny color in their packaging. And Cheerios maker General Mills, furthermore, has done too little to stake its claim specifically on yellow.
"Over time, a yellow box has come to mean: It's cereal," says Henry C. Boyd III, clinical professor of marketing at the University of Maryland's Robert H. Smith School of Business. "From the consumer perspective, that's what the color yellow represents in the breakfast aisle."
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The case illustrates how tricky it is to trademark a color, though a number of firms have done it, and even more have tried and failed.
"If the industry has come to accept that this particular color defines the product category, then one can't allow a single company to come along and say, 'Well, we want that color. We want to lock it down now.' Because it's just too late," says Boyd, who is also a lawyer.
For example, Corn Pops, Honeycombs, Golden Grahams and Kix are some of the other cereals packaged in yellow. And there are circle-shaped oat cereals from Trader Joe's, Wegmans, Meijer and Ralston that come in yellow boxes.
Boyd offers up some lessons from companies that have successfully obtained color trademarks:
Owens Corning became one of the first companies to stake its claim on a color, obtaining in 1985 the right to register the use of pink in its building insulation products.
The company argued that it had used the color, not only across its product line, but also across its marketing activities. It also argued, successfully, that its choice of pink was uncharacteristic and distinctive for its industry.
It was not, in other words, the yellow of the breakfast cereal world.
"Owens Corning said, 'Look, we're in the construction trade – and we've always used pink in our advertising. We tout the message – Think Pink. Buy Pink. In fact, we routinely use the Pink Panther as a personality symbol to identify our products in the marketplace,'" Boyd says.
Owens Corning's case was a landmark ruling in color trademarking.
Prior to that time, the U.S. Patent & Trademark office was rather reluctant to grant single-color trademarks. The federal courts were of a like mind when litigants sought to enforce such IP rights. The prevalent thinking was, "a combination of colors, that's fine," says Boyd, describing the legal sentiment of the time.
And that sentiment explains why John Deere, maker of lawn, construction and forestry machines, was able to trademark its use of green and gold, but could not land a trademark for the color green alone.
"Of course, the executives at John Deere would have loved to monopolize the color green for its tractors and lawn mowers. But the clock had run out long ago when the industry assumed the color green," Boyd says.
Trademark judges use an aesthetic functionality test, he explains. It basically says that the courts will not grant trademark use of a color if by doing so it that trademark would undermine competition or put a competitor at a significant competitive disadvantage.
"This being so, the federal courts wouldn't allow a lawn-cutting equipment manufacturer to claim the color green as it's trademark," Boyd says. "But if a manufacturer wanted to market a different color – let's say crimson, burnt sienna, or teal – the federal courts might say that's OK, assuming said color took on secondary meaning in the marketplace."
And that could be good branding as well, says Boyd. A color that contrasts its rivals can help a product to stand out. And that's fundamental to a trademark – an element that differentiates a product, a brand or service.
Tiffany & Co.
Tiffany & Co.'s robin's-egg blue is instantly recognizable. The company has used the storied color, Pantone 1837, since its first Blue Book, published in 1845.
"Tiffany's chose a color that was not associated with the industry," says Boyd. And they made it ubiquitous across the company.
"And they weren't shy about it. They have focused, from very early on, on the little blue boxes and the little blue bags, and people have come to associate that blue with one thing and one thing only: Tiffany's."
Advertising has long referred to the "Tiffany Blue Box," even at times without revealing its glittery contents.
"They didn't have to," Boyd says. "People would say right away, 'I know what's in that box.'"
The United Parcel Service is another company that has used ad campaigns to reinforce its claim on a particular color, for example with its now-retired slogan "What can brown do for you?"
"They kept referring to themselves as brown. The parcels and envelopes came in brown. The trucks are brown. The uniforms are brown. And it's all the same color brown," says Boyd.
"So they are able to argue that, "Yes, this is our mark," he says.
Boyd says companies looking to trademark a color should be aggressive in their claim. "Say the color in your advertising, do it early and stay consistent throughout," he says.
It's a lesson Cheerios strayed from, introducing a wider color palette across its various Cheerio flavors. Honey Nut Cheerios come in a light brown box. Apple Cinnamon Cheerios come in a green box. Frosted Cheerios are in a blue box. Chocolate Cheerios are in dark brown. Pumpkin Spice Cheerios are in orange.
The trademark court, in its ruling, said Cheerios had failed to prove its loyalty to own yellow.
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