Cereal is the type of food that can be eaten any time of day. Some people may enjoy a healthy portion of shredded wheat, a generally low in sugar wheat product usually baked into biscuit form. Others may want sugary cereals, such as Froot Loops or Frosted Flakes for dinner.
The deliciousness of shredded wheat may still be up for debate, but intellectual property questions relating to the ability to trademark the term have been answered by the Supreme Court.
Henry Perky and the Expired Shredded Wheat Patents
The initial IP issue arose out of a dispute between the National Biscuit Company and Kellogg’s Company. While the latter is now well known for producing several varieties of shredded wheat cereal, it did not develop the original version. This honor goes to Henry Perky, who created shredded whole wheat cereal in 1893. He obtained two patents on the product at that time. Unfortunately, Perky passed away in 1908, and his patents expired in 1912.
Kellogg’s first produced the product—using both the name and the pillow-shaped form—from 1912 until 1919, then again in 1922, and then temporarily ceased manufacturing. However, it resumed production in 1927.
Kellogg v. National: The Case Concerning Pillow-Shaped Cereal
In 1928, the National Biscuit Company, who succeeded Perky’s company, sued Kellogg for unfair competition, arguing the term “shredded wheat” was a tradename for their product and could not be adopted for a competitor’s product. They also argued the “pillow shape” was protected intellectual property. Kellogg’s countersued, with the argument that National Biscuit was seeking to monopolize the shredded wheat market. (Yes, there is an entire shredded wheat market!)
The case was originally heard in 1935 by the federal District Court in Delaware, which dismissed the suit, stating the term “shredded wheat” was the name of both Plaintiff’s and Defendant’s product. They further found that no “deception had been shown.” The Court’s opinion stated the patent had expired and the product, as well as the name, had passed into the public domain.
In 1936, the Circuit Court of Appeals affirmed the District Court’s decision. Upon a rehearing the following year, the same court ruled in favor of the Plaintiff, however, and issued a mandate indicating that Kellogg’s could neither use the name shredded wheat nor offer the product in its current form.
There may have been some confusion on the mandate because Kellogg’s seemed to believe it pertained only to using the name with an image that appeared in likeness to National Biscuit Company’s image of two biscuits in a bowl. This spurred the Circuit Court to clarify the mandate to reflect that Kellogg’s could not use the name “shredded wheat” at all, nor could they sell a product in the “pillow shape” used by National Biscuit.
An Unusual Ruling by the Supreme Court
In 1938, the issue made it to the Supreme Court where they, in part, sought to determine if the term “shredded wheat” and its pillow shape were protected intellectual property since generic terms are often not available for trademark. Ultimately, the decision was decided in favor of Kellogg’s: The term “shredded wheat” was considered a generic term, therefore not trademarkable.
Additionally, its pillow shape was functional, and, since the patents had expired, was able to be copied. In Kellogg Co v. National, the Court stated, “Inasmuch as the pillow-shaped biscuit was the form in which shredded wheat was made under the patents and in which the article became generally known, the form was dedicated to the public upon expiration of the patents.”
There are situations, however, in which a brand can acquire a “secondary meaning” and become synonymous with a generic word. For example, “Band-Aid” was initially a generic term but has become the term for an adhesive bandage, and as such, has acquired a secondary meaning, allowing it to be trademarkable. (Serial number 71199064).
Beyond cereal, Henry Perky’s creation and Kellogg Co. v. National Biscuit Co. underscore foundational lessons for inventors to understand. Had Perky’s patents not expired, the outcome of the case could have been vastly different. Most importantly, the court’s ruling in favor of Kellogg showcases how generic terms, which are not trademarkable, can still play an influential role in an invention’s reputation in the competitive marketplace.
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The Michelson Institute for Intellectual Property, an initiative of the Michelson 20MM Foundation, provides access to empowering IP education for budding inventors and entrepreneurs. Michelson 20MM was founded thanks to the generous support of renowned spinal surgeon Dr. Gary K. Michelson and Alya Michelson. To learn more, visit 20mm.org.