Recent efforts by General Mills to assert rights in the color yellow in connection with its CHEERIOS® breakfast cereal boxes have brought the issue of how color can function as a trademark into focus once again.
Since at least as early as the 1980’s, U.S. trademark law has recognized that color can function as a trademark and is thus eligible for trademark protection. In its 1995 Qualitex decision, the Supreme Court definitively agreed, concluding that “sometimes, a color will meet ordinary legal trademark requirements. And, when it does so, no special legal rule prevents color alone from serving as a trademark.”
As with all legal statements, the key is in the word “sometimes.”
How Can Color Become a Trademark?
Acquiring trademark rights in a color is not an easy task. A company must show that the color has become distinctive of its goods in commerce, and that the color does not serve any other significant function.
Here are some well-known examples of companies who have successfully established trademark rights in a color:
Owens-Corning Pink, Qualitex green-gold, Tiffany Blue, Barbie Pink, Wiffle Ball Bat Yellow, UPS Brown, 3M Canary Yellow, Target Red, Coca Cola Red, Christian Louboutin (red outsoles on shoes), and The Home Depot Orange.
For a color to function as a trademark, customers must come to treat a particular color on a product or its packaging as signifying a brand.
Taking Owens-Corning Pink as an example, the pink coloring of its insulating material seems unusual in context, and the particular hue has no other significant function. That color has come to identify and distinguish the insulation products – to indicate their source. In this instance, the color has acquired “secondary meaning,” where, in the minds of the public, the primary significance of the color is to identify the source of the product rather than the product itself.
Limits to Color as a Trademark
Against this backdrop, General Mills recently attempted to register the color yellow on packages of “toroidal” (ring or doughnut-shaped) oat-based breakfast cereal, the company’s CHEERIOS® cereal. The trademark application looked like this:
General Mills described their trademark as consisting “of the color yellow appearing as the predominant uniform background color on product packaging for the goods. The dotted outline of the packaging shows the position of the mark and is not claimed as part of the mark.”
The U.S. Trademark Office refused the trademark application, and General Mills appealed to the Trademark Trial and Appeal Board (TTAB).
The TTAB agreed with the USPTO and rejected General Mills’ bid to register yellow for its CHEERIOS® cereal. In deciding the case, the Board conceded that “by their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character.”
The record showed that General Mills had begun using the color yellow on its CHEERIOS® cereal boxes at least as early as 1944. The company introduced evidence that it had expended over $1 billion in marketing in a single decade, and that sales of CHEERIOS® cereal exceeded $4 billion in that same period (1995 to 2015).
In looking at General Mills’ trademark application, the Board was influenced by the existence of several other companies who use yellow colored cereal packaging (boxes and bags) for similarly-shaped, oat-based cereals, including some of General Mills’ competitors. The Board concluded, “The presence of products of this type in the marketplace interferes with the development among relevant customers of a perception that the color yellow on packaging indicates that Applicant is the source of the goods (or that there is any single source of such goods)."
Think about the cereal aisle in your local grocery store. When you turn down this aisle, you are often confronted with a rainbow of brightly colored packaging, for a large number of different cereals. Several of these boxes are yellow. The Board found that customers are accustomed to seeing numerous brands from different sources offered in yellow packaging and are likely to view yellow packaging simply as eye-catching ornamentation customarily used for the packaging of breakfast cereals generally.
The Board also looked at the industry practice of ornamenting breakfast cereal boxes with bold graphic designs and prominent word marks (in addition to bright background colors). Looking at General Mills’ cereal packaging generally, the Board found that customers do not perceive the color yellow alone indicate the source of General Mills’ breakfast cereal.
The CHEERIOS® “yellow box” case demonstrates the difficulties in protecting trademark rights in a color per se. This case presents a refinement in color trademark law, as well as guidance for companies interested in non-traditional trademark protection for their valuable brands.
A patent is issued in the name of the United States under the seal of the United States Patent and Trademark Office (USPTO). A patent confers “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” and its territories and possessions for a period of time.
So, how long does a patent last?
On the date a patent issues, the “right to exclude” comes into force. So, how long can a patent owner exclude others from the above activities, or in patent parlance, what is the “patent term?”
To determine the “life” of a patent, you must start with the earliest filing date of the patent application in the United States. Generally speaking, a patent term is 20 years from that date. In order to keep that patent in force, the patent owner must pay maintenance fees at three specific time periods during the patent term.
Four important aspects of a patent term thus include: (1) what is the issue date of the patent, (2) when was the application first filed in the US, (3) has the USPTO adjusted the patent term, and (4) when are maintenance fees due?
It is best to consult a patent attorney or agent to determine the actual expiration date of a patent, but you can begin to calculate the expiration date by looking at the front page of the patent of interest. For example, in the patent below, you can see (A) the issue date of the patent (the date from which the patent is in force), (B) the earliest date the application was filed in the United States, and (C) the patent term adjustment:
In this Example, the patent rights are in force on October 31, 2017 (A). It was first filed in the United States on August 13, 2012 (B), and it did not receive any patent term adjustment (C).
Now to the calculation: 20 years from (B) is August 13, 2032 + zero (0) days of patent term adjustment = an expiration date of August 13, 2032. The patent owner can enforce the patent for the period of October 31, 2017 to August 13, 2032, so long as they pay maintenance fees.
Although it is best to verify items (B) and (C) through the USPTO Patent Application Information Retrieval (PAIR) system, this can give you a starting place for determining the patent term.
You can access Public PAIR here: https://portal.uspto.gov/pair/PublicPair
Maintaining the Patent
Once the patent is issued, it must be maintained by paying maintenance fees to the USPTO. The USPTO established three 6-month time periods during the patent term when maintenance fees are due: (1) at 3 to 3.5 years; (2) at 7 to 7.5 years; and (3) at 11 to 11.5 years. These dates are measured from the Date of Patent, (A) in the example above. If a maintenance fee is not paid by the due date, there is a grace period of 6 additional months after the deadline, during which the fee can be paid (with a surcharge).
Information about paying maintenance fees can be found at: https://www.uspto.gov/patents-maintaining-patent/maintain-your-patent. To see specific maintenance fee deadlines and whether a patent owner has paid them, select “View maintenance fee information” from this webpage.
After a patent expires, either by running through its 20-year term, or because the patent owner failed to pay a maintenance fee, the public is free to use the invention claimed in that patent. Note, however, that this right is subject to any other patents that may exist in the particular field.
Patent terms are as individual as the technology they describe. Although this article provides some guidelines for understanding how long a patent can be enforced, additional technical considerations such as terminal disclaimers, have not been covered. It is best to consult with a patent attorney or agent to determine the specific patent term and implications of a specific patent.
Questions? Feel free to contact me.
Why Trademarks are Important to Your Business and 5 Things You Can Do Right Now to Protect Your Trademarks
A trademark is your brand. It represents the source and quality of the goods or services you provide. A distinctive trademark allows your business to build public goodwill and brand reputation in the goods or services you sell.
Just some of reasons trademarks are important assets for any company include:
Trademarks distinguish you from your competitors.
Your trademarks provide one way you can stand out and apart from your competition. When consumers encounter your trademarks in the marketplace, they immediately know who they are purchasing from, and the quality of the goods/services.
Trademarks are tools to communicate with your consumers.
Brands influence purchasing decisions, and your marks make it easy for your consumers to find you. You can use marks to communicate effectively in media, including print and social media. For example, consumers looking for your goods/services may start by typing your brand name in an Internet search.
Trademarks are assets that can appreciate over time.
Trademarks can last for as long as you use them. Even better, the more you invest in developing goodwill behind your mark, the more valuable it becomes.
Consider your business. What words, symbols or designs identify your business and its product lines?
A trademark can be any word, symbol or phrase that identifies goods or services. Some examples include “SAMSUNG” for various electronics, “CARIBOU COFFEE” for restaurant services and retail store services in the field of coffee, and “BARNES & NOBLE” for book distributorship services and retail book store services.
Symbols that function as trademarks include the Target "bullseye" and the Nike "swoosh."
When you see these famous words and symbols, you immediately know the source and quality of the goods/services provided in connection with these marks.
Because trademarks distinguish you from other businesses, they are an important aspect of your business itself. What aspects of your business serve to distinguish your company from your competitors?
Your COMPANY NAME is the first - and likely the most important - trademark. This mark embodies the goodwill you have built up in your company.
PRODUCT OR SERVICE LINES can be important trademarks for your business. These marks distinguish your products/services from those of your competitors and identify you as the source of those products/services.
PHRASES OR TAGLINES can serve as source identifiers. For example, when you see the tagline, “Just Do It,” what company comes to mind?
Now that you have an idea of where you may have trademark rights, here are 5 things you can do right now to protect them:
1. Use “TM” or ® after your mark every time you use it in print or other media.
These designations put third parties on notice that you assert trademark rights in the mark.
Note: consult an attorney before using the ® symbol, since you can only use it if you have a federal registration.
2. Set your mark apart, literally.
Use your trademark in a distinctive way, so consumers recognize its importance as your brand. When using your mark in various media, set it apart from other text, and use your mark in all capital letters, a distinctive font, and/or a distinctive color scheme. Make it stand out.
3. If you haven’t already, register your trademark.
Registration is available at the state or federal level, and it provides you with the ability to prevent others from using marks that are confusingly similar to yours. Registration is relatively inexpensive and a good investment.
4. Use your trademark as a brand name.
In other words, use the mark as an adjective, followed by the generic name of the product (or services) you provide. For example, you have a “SAMSUNG phone.” Avoid using your mark as a verb or noun (for example, do not say you are “rollerblading”).
5. Use your mark in a consistent way.
This is particularly important for trademarks that include a design element. Choose one way to depict your mark, and stick with that format. Changing the mark in any way could change your trademark rights.
Trademarks are valuable assets of any company, regardless of size. With the proper attention, your trademarks can last indefinitely and continue to increase in value over time. For additional tips, see my website.
You have an invention, and you want to find a patent attorney to help you protect your ideas. How do you find the right patent attorney for your project?
Here are 8 tips to finding the right fit:
· Take some time to develop a summary of your invention, for example:
What technology does it involve? Who are your competitors, and how crowded is the field? What aspects of your invention need to be protected? What does your invention contribute to your field?
This will help you determine what type of attorney you will need. Intellectual property covers many areas, including patent, trademark, copyright and trade secret. You will want to find an attorney who can meet all of your needs.
· Ask for recommendations from other inventors or local inventor groups.
You can find local inventor organizations at the USPTO website here: Organizations for Inventors.
· Search the US Patent and Trademark Office (USPTO) records.
The USPTO maintains a roster of all registered patent attorneys and agents at: Persons Recognized to Practice in Patent Matters. You can search the roster by name or geographic location.
· Make sure your prospective attorney is in good standing at the USPTO by searching their disciplinary history at: The USPTO Office of Enrollment and Discipline or by calling (571) 272.4097.
· Make sure your prospective attorney is in good standing with their state bar. Patent attorneys have to maintain ethical and continuing education standards both before the USPTO and before the state bar in which they are licensed.
· Contact more than one attorney, so you can compare.
Once you have two or more attorneys on your list, you will want to make sure they are a good fit for your needs. Some initial questions to ask the attorney include:
· Do they have experience working in your technology area?
Patent attorneys often develop areas of expertise around their education backgrounds and client experience. Different technology areas have different considerations. Ask if they have drafted patent applications in your technology area, and what types of clients they currently serve.
· Do they have experience with inventors like you?
Are you a solo inventor? A start up technology company? An established company building your portfolio? Each of these scenarios provides its own unique considerations for patenting.
Finding the right patent attorney for your project can take some time, but it is well worth the investment. Do some investigation and trust your instincts when making a final decision. Your relationship with your patent attorney should be a long and fruitful one.
Two questions I often hear from inventors are: “Why should I hire a patent attorney? Can’t I just file a patent application myself?” While an inventor can file his or her own patent application with the United States Patent and Trademark Office (“USPTO”), there are many reasons it is in your best interest to hire a patent attorney. Filing and prosecuting a patent application within the USPTO is a complex legal process that requires knowledge of patent law and an understanding of the underlying technology.
But isn’t it expensive to involve attorneys? Many entrepreneurs and startups have a limited budget, so find a patent attorney who will work with your budget concerns. A company’s intellectual property can be critical to its success. Cutting corners early on can have significant and lasting impacts on the business.
In other words, the long-term cost can be much higher if you did not consult an attorney early in the inventive process.
The USPTO recognizes that individual inventors and small business may have questions about the patent process, and they have developed resources on their website to help. For example, the USPTO has a page for Inventor and Entrepreneur Resources, as well as an Inventors Assistance Center that can answer some general questions regarding the patent examining process. The USPTO also has a newsletter for the independent inventor community, the Inventors Eye.
However, the USPTO cannot help inventors prepare patent application papers, cannot give you an opinion as to whether your invention is patentable, cannot provide legal advice, cannot provide patent searches.
Here is where a patent attorney can help. Some reasons to hire a patent attorney include:
Filing strategy. There are different types of patent applications (provisional, nonprovisional, design). Within these types of applications, there are numerous requirements for disclosure. A patent attorney will discuss these options with you and determine the best filing strategy for your situation.
Describing the bounds of your invention in light of your current work, potential modifications that could be made to your ideas, and what others have done in your field. Your patent attorney can help explore the breadth of your contribution to your technical field and draft your application accordingly.
Deadlines, deadlines, deadlines. Once you place an application on file, deadlines will come up. Patent attorneys docket these deadlines so the required documents are timely filed and your application proceeds through the USPTO.
Disclosure limitations. Your patent application will set limits on what you disclose to third parties. After filing a patent application, you need to be mindful to only disclose information described in that application. If you have new improvements or developments, you should consult your attorney to see if an additional patent application should be filed to cover those improvements.
A patent attorney can help inventors protect their ideas so they can focus on taking those ideas to the next level. Ready to find the right patent attorney for your project?
My next post will discuss tips for hiring a patent attorney.
For many innovators starting up a venture or expanding their ideas into new areas, patents and trademarks are key to protecting their innovations. So, what’s the difference between a patent and a trademark?
Patents are granted by the U.S. Patent and Trademark Office (USPTO) for inventions that are new, useful and nonobvious. A patent thus protects your inventions, whether they relate to a new composition, a new way of making something, a new method of doing something, or the like. We have all heard about patents protecting pharmaceuticals, food products, medical devices, etc. A granted patent gives the patent owner the right to exclude others from making, using, selling, offering to sell, or importing their invention for a period of 20 years.
The purpose of patent law is to reward the investment to researchers and inventors for their innovations. Patent law is a give and take: the inventor must disclose how to make and use their invention in a patent, and in exchange for disclosing this information, they gain exclusivity for a defined period of time. The goal of the US patent system is to spur innovation by publishing patented technology so that others can use that technology to continue the innovative process.
A trademark is a distinctive word, name, symbol or phrase that is used in trade with goods to identify the source of the goods and distinguish them from the goods of others.
Think of some famous trademarks, such as Nike® and Target®, for example. When you see either the names of the companies, or even the “swoosh” or “bullseye” symbols associated with them, you immediately think of the particular goods provided by each company. A powerful brand tells the consuming public exactly who you are and the quality of the goods (or services) you provide.
Trademark laws help consumers identify and purchase a product based upon whether its specific quality meets their needs. From the trademark owner’s perspective, trademark protection ensures that you have the exclusive right to use that mark to identify your goods or services.
Unlike patents, trademarks can last forever, so long as the owner continues to use the mark in trade and files the required renewal documents every 10 years. In a broad sense, trademarks promote enterprise by rewarding owners with recognition for the quality of their goods or services. This quality is often referred to as “goodwill” that is created and cultivated by the trademark owner.
Patents and trademarks work hand in hand to protect your innovations, so that you can continue your creative work and reap the rewards. A good patent and trademark strategy takes time to develop, but the time is well worth it. Before hitting the market with that new innovation, be sure to consider how to best protect it through patents and trademarks.