The maker of Splenda sweetener, Heartland Consumer Products, LLC, filed suit in 2017, in the U.S. District Court for the Southern District of Indiana, alleging trademark infringement, false designation of origin, unfair competition, and trademark dilution against DineEquity which owns and operates Applebee’s and IHOP restaurants. The lawsuit involved the use of yellow packets similar to those for packaging Splenda. The Complaint alleged that the sucralose packets provided at IHOP and Applebee’s contained lower-quality sucralose sweetener being passed off as Splenda. DineEquity moved to dismiss the Complaint, arguing that the color yellow was a functional feature signifying that it is a sucralose product. However, the Court ruled that there was enough alleged for the case to go forward and found that functionality of a trademark is a fact question that could not be resolved at the motion to dismiss stage. Heartland recently announced that the parties had reached an amicable resolution and reports indicate that the “real” Splenda will be used at Applebee’s and IHOP restaurant in the near future.
This case raised an interesting question about color as a trademark and part of an overall brand strategy. While color can be an element of your logo, mark, or trade dress, a color itself cannot be a trademark for a product unless it has become a source identifier through acquired distinctiveness. Indeed, General Mills tried recently to register the color yellow as applied to a toroidal-shaped box for its Cheerios cereal. The trademark office, however, refused registration for, among other reasons, several other yellow cereal boxes were on the market. And while General Mills certainly focused advertising on the color yellow over the years, it was not enough to show that the consuming public perceived the color as a source identifier, particularly given its non-exclusive use of the color for cereal. The lesson here is that while color may be difficult to protect as a trademark, it is still a part of your brand and trade dress and when used consistently can, over time, become source identifying.