The burden of proving that a color mark has acquired distinctiveness is substantial. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 424 (Fed. Cir. 1985) (“By their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character.”).

As explained by the Federal Circuit:

[T]he considerations to be assessed in determining whether a mark has acquired secondary meaning29 can be described by the following six factors: (1) association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.

Converse, Inc. v. Int'l Trade Comm'n, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018).

No single factor is determinative and “[a]ll six factors are to be weighed together in determining the existence of secondary meaning.” In re Guaranteed Rate, Inc., 2020 USPQ2d 10869, at *3 (TTAB 2020) (quoting Converse, 128 USPQ2d at 1546).

FRUITY PEBBLES

Post filed a trademark application for its “rainbow-colored” Fruity Pebbles crispy breakfast cereal, stating 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.” In re Post Foods, LLC, 2024 USPQ2d 25 (TTAB 2024).

The application identified the goods as “breakfast cereals.”

In response a refusal to registration, Post argued that its mark comprises the color combination applied to “crispy rice cereal pieces.”

The TTAB, however, 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.”

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.

Thus, the TTAB found that the proposed mark comprised “a combination of colors that may be applied to any crisp breakfast cereal, regardless of the shape of the cereal pieces,” so the TTAB considered the evidence of record, which included Trix's round rainbow-colored cereal pieces (that are not just for kids), “as it relates to the identified colors only, without regard to the shape of the cereal.”

Because the TTAB found that the mark applied to any breakfast cereal shape, Post's survey evidence regarding consumer perception of the color mark applied to the configuration of crisp rice cereal pieces failed to establish acquired distinctiveness under Section 2(f) for the applied-for mark that compassed “all breakfast cereal shapes.”

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.