Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about:
Fruity Pebbles Colors Ruled Not Distinctive
Post Foods lost its appeal for a color mark for its Fruity Pebbles breakfast cereal in a ruling that illustrates why distinctiveness is a critical hurdle to clear when seeking a trademark registration on a color.
In its application, Post submitted a mark that “consists of the colors of yellow, green, light blue, purple, orange, red and pink applied to the entire surface of crisp cereal pieces” but didn’t convince the TTAB with its evidence. The USPTO’s Trademark Trial and Appeal Board ruled the proposed mark isn’t inherently distinctive and hasn’t shown to have acquired distinctiveness, the latter of which the TTAB called a “substantial” burden.
The Trademark Examining Attorney argued that Post’s “use of all the colors on ‘breakfast cereals’ is not ‘substantially exclusive’ or consistent which is fatal to applicant’s claim [of acquired distinctiveness]. Consumers would not view multicolored cereals as pointing to applicant alone when so many other cereal manufacturers sell cereals in multiple colors.”
Evidence introduced by the Examining Attorney in support of that claim: Pictures of 15 cereal boxes, including Froot Loops, Trader Joe’s Fruity O’s, Trix Fruity Shapes, and a variety of store brand “Fruity Rice Crisp” cereals, and printouts of articles and recipes that mention “rainbow” colored cereals “in a manner which further supports the finding that consumers are used to seeing multicolored breakfast cereal offered by different sources and do not attribute multicolored cereal to one source.”
Captain Cannabis Cancellation Marked Precedential
The TTAB’s 2022 cancellation of a “Captain Cannabis” trademark based on evidence of prior use that was “analogous to trademark use” was designated as the first precedential ruling of 2024.
Laverne John Andrusiek petitioned the TTAB to cancel the 2014 registration by Cosmic Crusaders LLC, arguing that he “created a costumed superhero character and comic book titled CAPTAIN CANNABIS” during the 1970s and obtained a Canadian copyright in 1977 for the “unpublished Literary and Artistic (comic book) titled CAPTAIN CANNABIS.” Andrusiek also presented as evidence before the TTAB that he registered the domain name captaincannabis.com in 1999, used the name Captain Cannabis as a character in a 2006 comic book titled “420,” and sold that book continuously since 2006 to the present, including during 2013-14.
The TTAB found this evidence sufficient to establish that Andrusiek used his mark prior to 2014, first in a manner analogous to actual trademark use, then as an actual trademark.
“Petitioner may establish his priority by showing that he has used the CAPTAIN CANNABIS mark in the United States in a manner analogous to trademark use sufficient to create an association in the mind of the relevant consumers between the mark and the goods, followed by actual trademark use of the mark within a “commercially reasonable time.”
Trader Joe’s Union Can Use Store Logo
Trader Joe’s employee union can use the store’s logos on union merchandise, a Los Angeles federal court ruled last month, dismissing the company’s lawsuit against the union entirely.
The grocery chain sued the union, Trader Joe’s United, for trademark infringement last year, according to Reuters, arguing that the store’s logos and name on union merchandise like tote bags and mugs was likely to confuse customers into thinking the company made or endorsed it.
In his ruling, U.S. District Court Judge Hernán D. Vera of the Central District of California wrote that Trader Joe’s lawsuit “is undoubtedly related to an existing labor dispute, and it strains credulity to believe that the present lawsuit—which itself comes dangerously close to the line of Rule 11—would have been filed absent the ongoing organizing efforts that Trader Joe’s employees have mounted (successfully) in multiple locations across the country. …
“There is no likelihood of confusion posed by the Union’s campaign-related products. … the logos used by the Union are in a different font, do not utilize the distinctive fruit basket design, apply concentric rings of different proportions, and are applied to products that no reasonable consumer could confuse as coming from Trader Joe’s itself.”
Other Marks in the News
