Is your breakfast cereal trade dress?

Many of us have fond memories of Saturday mornings watching cartoons on television while eating breakfast cereal. Perhaps that cereal was Fruity Pebbles, the colorful crispy cereal that itself is a spinoff of a cartoon, the 1960s series “The Flintstones.”

Named after Pebbles, the daughter of the titular Fred Flintstone, Pebbles cereal comes in fruity and chocolate varieties. A recent precedential decision by the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“USPTO”) delved into the past and present of Fruity Pebbles. The case illustrates some of the difficulties of registering trade dress.

A colorful prosecution history

In April 2020, Post Foods filed an application to register a mark described as “the product configuration of crisp cereal pieces in the colors of yellow, green, light blue, purple, orange, red and pink”:

The goods were identified as “breakfast cereals.” The application claimed a first use date in U.S. commerce as of November 30, 1973, and attached a declaration discussing the history, advertising, and sales of the products claimed by the mark.

Over the next two years, Post responded to four office actions. The USPTO refused registration on the basis that the applied-for mark failed to function as a trademark.

Post made a number of amendments to the application including:

• Drawing: The drawing was amended to:

Post stated that the dotted lines in the drawing indicate the placement of the claimed colors on its cereal. According to the Trademark Manual of Examining Procedure, for a color mark, “The broken or dotted lines inform the viewer where and how color is used on the product or product package, while at the same time making it clear that the shape of the product, or the shape of the product package, is not claimed as part of the mark.”

• Description: Post amended the description of the mark as follows:

The mark consists of the product configuration of crisp cereal pieces in 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.

That is, Post’s amendment deleted the term “product configuration” but kept the statement that the mark “consists of … colors.”

Throughout the course of the examination, Post also submitted hundreds of pages of evidence, including consumer surveys, licensing information, third-party media references, sales and advertising figures, and more.

No sugar coating on this dispute

Much of the dispute centered on whether the claimed mark consisted of colors or product configuration. The Examining Attorney took the position that the mark was simply the color combination, while Post argued that the mark was the configuration of the color combination on crisp cereal.

What is the difference and why does it matter?

Color marks and product configuration both fall within the category of trade dress. Trade dress is defined as the total image and overall appearance of the product. Trade dress may include product design, product packaging, color, flavor, and the like.

Within product configuration, you may hear the terms product design and product packaging. The design of a product can never be inherently distinctive. On the other hand, product packaging can be. Like product design, color also can never be inherently distinctive.

That is, whether Post’s application was for product design/configuration or color, it needed to prove acquired distinctiveness, also known as secondary meaning. A mark acquires distinctiveness when the public comes to associate it with the goods. It is often proven with evidence like extensive sales and advertising figures, continuous and exclusive use, and media coverage.

Post argued that the claimed mark was product design/configuration and not color. Its evidence related to the overall configuration. The Examining Attorney, on the other hand, argued that the claimed mark was color only and therefore, any evidence regarding the shape of the cereal or public recognition of crisp cereal or crisped rice cereal was not relevant to demonstrating public recognition of the claimed color configuration.

The Board takes a bite

The TTAB sided with the Examining Attorney, concluding that the mark was the color combination applied to “breakfast cereals.”

Because the application covered any breakfast cereal, rather than crisp cereal or crisped rice cereal, the Board found that Post’s evidence related to a specific type of cereal did not support acquired distinctiveness. The Board also noted the evidence of a number of breakfast cereals featuring rainbow colors, finding that Post was not the exclusive user of such a color combination for cereal.

Because the Board found that the application was for color rather than product configuration, there was a “disconnect” between the extensive evidence Post submitted for specific type of cereal. The TTAB affirmed the refusal of the registration.

Yabba-Dabba-Doos…and Don’ts

It’s easy to look at a case like this and Monday morning quarterback what the applicant could have done differently (over your favorite bowl of cartoon-themed breakfast cereal, of course). With its hundreds of pages of evidence – including two consumer surveys – Post didn’t lose for lack of trying.

There were points in the prosecution when perhaps a different tactic could have made a difference to the outcome, including when Post amended the description of the mark from “product configuration” to “colors” and when Post amended the drawing of the mark and included dotted lines, which by USPTO rules “mak[e] it clear that the shape of the product … is not claimed as part of the mark.”

While certainly it is important to consider the implications of any amendment during prosecution, it isn’t clear whether strategic maneuvering would have cleared the path to registration. The takeaway may simply be that for trade dress – especially color or product design – the bar is high and the prosecution may be quite time consuming and expensive.

Post had until early March to appeal the decision either to the US Court of Appeals for the Federal Circuit (CAFC) or file a civil action in US District Court, but the TTAB has terminated proceedings and returned the application to the examining attorney, suggesting they have not done so. We’ll keep an eye on this case to see whether it retains some of its crispiness…or just gets soggy in milk.

About the Author: Suzi Morales is a writer and editor specialising in IP. She previously practised IP law, including trade mark prosecution and all types of IP litigation, for 15 years. Learn more about Suzi’s work at www.suzimorales.com/intellectual-property-law-marketing