Trademark Trial and Appeal Board

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By James R. Sonny Chastain, Jr.

The Federal Circuit in Lyons v. American College of Veterinarian Sports Medicine, 859 F. 3d 1023 (Fed. Cir. 2017) addressed trademark ownership, distinguishing between an idea, concept, mere preparation to use and actual use.   Between 1999 and 2001 Sheila Lyons and other veterinarians formed an organizing committee and began using the mark “The American College of Veterinary Sports Medicine and Rehabilitation” as the name of its veterinary specialist organization.   In 2002, Lyons participated in drafting a letter of intent and working with the organization to create a petition to seek accreditation.  She drafted by-laws which she presented to the organizing committee.   Thereafter, she was dismissed from the organizing committee for reasons not at issue.

After her dismissal, Lyons sought registration of the mark for “veterinary education services.”  She obtained the registration on the Supplemental Register of the U.S. Patent and Trademark Office claiming she used it in commerce.   Thereafter, the organization was granted provisional recognition as “The American College of Veterinary Sports Medicine & Rehabilitation” as a Colorado non-profit organization.

The College petitioned to cancel Lyons’ registration on the grounds of priority of use and likelihood of confusion.  The Trademark Trial and Appeal Board (“TTAB”) concluded Lyons did not own the mark and that the application for registration was void ab initio. The Federal Circuit affirmed the decision of the TTAB stating that “the lion’s share of the evidence supports the Board’s decision”.  It noted that ownership of a mark is predicated on priority of use in commerce.  The Court noted that to meet the use requirement for a service mark, an applicant must use the mark in advertising or sale of a service and show that the service was rendered in interstate commerce. In considering the evidence, the Court agreed with the TTAB that the objectively manifested intent of the parties was the mark would be used to name the veterinary specialist organization which is what transpired.  Additionally, the relevant public associated the mark with the College and not Lyons because the College certified the veterinarians.   Finally, the public looked to the College to stand behind the quality of education associated with the mark.  The Court found that the mere preparation and publication of future plans did not constitute use.  While Lyons initiated efforts to form the organization and her involvement with it may have been the reason the mark was adopted, it was the College that used the mark.

By Sonny Chastain

General Mills filed an application to register the color yellow appearing as the uniform background on a box of Cheerios.   It contended that consumers have come to identify the color yellow specifically with Cheerios, when used in connection with the goods.  It submitted survey evidence and expert reports to support the claim of acquired distinctiveness.  However, the trademark examiner concluded that General Mills failed to prove acquired distinctiveness and that the mark fails to function as a mark.  An appeal was submitted to the Trademark Trial and Appeal Board (“TTAB”).

General Mills argued that the purchasing public recognizes the color yellow on a package of toroidal (ring or doughnut-shaped) oat-based breakfast cereal as an indicator that it is the source of the cereal.  The record showed that General Mills has sold Cheerios since 1945.  In the decade prior to 2015, General Mills spent over $1 billion in marketing yellow-box Cheerios with sales exceeding $4 billion.  However, the question was not whether consumers recognized the term Cheerios as a source indicator but whether the color yellow identifies origin.

The TTAB agreed with the examiner’s conclusion citing lack of exclusive use of the color yellow.  The Board noted that the examiner pointed to 23 cereal products that offered packaging in a similar color.  Several of the products are even offered by companies which are recognized as General Mills’ biggest competitors:  Kellogg, Post, and Quaker.  Some of General Mills’ survey subjects showed their awareness of several of the products, especially Honeycomb and Corn Pops.  Additional cereal boxes cited included Joe’s O’s, Honey O’s, Tasteeos, Honey Bunches of Oats, Crispix, and Life.  The Board concluded that General Mills is not alone in offering oat-based cereals or even toroidal shaped, oat-based cereal in a yellow package.  Thus, customers are unlikely to perceive yellow packaging as an indicator of a unique source.  While the color may be attractive and eye-catching ornamentation, it alone did not connect to a potential source.   The Board noted that while customers are familiar with the yellow color of the Cheerio’s box, the color yellow is only one aspect of the complex trade dress that includes many other features that perform as a distinguishing and source-indicating function.   It was not persuaded that customers perceive the proposed mark, the color yellow alone, as indicating the source these goods.  The Board found the yellow background did not acquire distinctiveness and does not function as a trademark.

The case teaches that it is important to recognize what mark or components thereof function to identify a source. A question to ponder is, with what features do consumers identify to connect a particular good or service with a source of origin? General Mills took an aggressive view of the source identifying capability of this color which the Board concluded was not correct.  It is possible that if additional features had been included in connection with the overall trade dress, that registration may have been possible.