Could Pablo Picasso sue Claude Monet for using his signature melancholy blue color? Colors can make people think or feel in a certain way about a product. They can be associated with products in a literal or an abstract way to produce certain psychological effects. Most of us… (Featured image is for representational purpose and has been sourced from https://pixabay.com/p-497004/?no_redirect)
Could Pablo Picasso sue Claude Monet for using his signature melancholy blue color? Colors can make people think or feel in a certain way about a product. They can be associated with products in a literal or an abstract way to produce certain psychological effects. Most of us are aware that symbols can be trademarked, but are you aware that even colors can be trademarked? And to add to the list, one can trademark smell and sound too.
For almost two years, General Mills were trying to obtain a trademark in the US over the yellow color that it uses for its Cheerios cereal box. General Mills filed an application for this mark in September 2015 with the USPTO.
The application was filed in class 30 and 46 for “Toroidal-shaped, oat-based breakfast cereal” with a use claim since the year 1941. So the question now arises whether a color alone can be registered as a trademark. To be eligible for a trademark registration, a trademark has to be distinctive enough to distinguish the goods or services of the applicant from those of others. In India, Section 9 (1) (a) of The Trade Marks Act, 1999, emphasizes that trademarks devoid of any distinctive character will not be registered. Similarly, in the U.S., The Trade Mark Act of 1946 has an equivalent provision (§ 2 (15 U.S.C. § 1052) which only allows registration of distinctive trademarks. Further, a trademark cannot be refused registration if it has acquired a distinctive character as a result of the use made of it or if it is a well-known mark before the date of application for registration. So what exactly is this distinctiveness/acquired distinctiveness?
Distinctiveness is the capability of a trademark to distinguish goods or services of one entity from those of another entity. Usually trademarks are considered highly distinctive and easy to register. Examples of invented trademarks are Kodak for photographic films and Exxon for petrochemicals. These words have been invented by their respective proprietors and do not have a literal meaning. Therefore, they exclusively identify the proprietors’ products. On the other hand, terms such as computer and telephone are generic and lack distinctiveness. Such words are used in common parlance and cannot distinguish the goods/services of one person from those of others since they are not associated with just one product/service. However, most jurisdictions may still allow generic marks to be registered if the trademark owner can demonstrate, typically by reference to evidence of use, that consumers in the marketplace exclusively associate the mark with a particular commercial origin or source. This phenomenon is known as acquired distinctiveness. For e.g. the word Apple is registered for computers even though it is a generic word.
In a case similar to that of General Mills, can we extend the concept of a trademark having acquired distinctiveness by virtue of use – and can the same principal be applied to a color? The answer is yes; it can be. There are several instances in which a single shade of a color has been granted protection as a trademark by virtue of its extensive use and connect with the end consumer. A few examples are listed below:
However, it is to be kept in mind that trademark rights are not granted for the color as a whole but just for a shade of the color as mentioned above. Also, any enforcement of such shades can be done only against a direct competitor or where there is a very strong chance of confusion.
The Present Case
The General Mill application was refused by the USPTO on grounds that the said color had not acquired enough distinctiveness in the eyes of the consumers. General Mills appealed against this objection at the Trademark Trial and Appeal Board (TTAB). On August 23, 2017, the TTAB upheld the examiner’s objection while stating that there are several other cereal boxes being sold by other cereal companies and that it is highly unlikely that consumers will associate the color yellow only with General Mills and no one else.
Research shows that color increases brand recognition by up to 80%, and so, branding and design experts ensure that logos and products reflect the right message to their end consumer. Color is an integral element of brand recognition, and the use of similar colors can lead to confusion among brands competing in the same market space. What will happen if more brands acquire this secondary meaning of their trademarked colors? Will there be a monopoly of colors in the near future?