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The Supreme Court speaks about the impact of a patent on later claiming trademark infringement Cases of Interest >  IP >  Trademark
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Kellogg Inc v National Biscuit Co

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Kellogg Inc. v. National Biscuit Co.

305 U.S. 111
Lexis: 305 U.S. 111

Facts: Shredded wheat is a commercial breakfast product composed of that has been boiled, partially dried, then put into thin shreds and baked. It was introduced in 1891, its commercial success recognized in 1901 and the business rights to it were acquired by National Biscuit Co. in 1930. The product was patent protected for some time. In 1927 however it was no longer under patent and Kellogg was producing it and began to compete with National Biscuit Co.

Procedural Posture: In 1928 National Biscuit Co. sued Kelllogg for unfair competition. That suit was discontinued by stipulation in 1930. In 1932 another suit was brought. In 1935 the suit was dismissed by the district court stating no ‘passing off’ or deception had been shown and that the product had passed into public domain upon the expiration of its patent. This decision was appealed and reversed by the District Court with a decree that enjoined Kellogg from advertising its product as shredded wheat as well as producing it in the same ‘pillow shaped’ form as well as apportioned damages. Cert was denied. In 1938 National Biscuit Co. requested clarification of the injunction because Kellogg insisted that it was only forbid from using the term ‘shredded wheat’ in conjunction with the “pillow-shaped’ product and not otherwise. Circuit court granted appeal for interpretation and amended it to forbidding use of both the term and the shape independently of one another as well as together. Supreme Court granted cert this time to both.

Holding: Supreme Court reversed with directions to dismiss the bill.
Critical Analysis: The court uses the doctrine of genericide to explain that the term “shredded wheat” is now generic and therefore secondary meaning is irrelevant. Further the court explains that the term brings to mind in the public the product more so than the product’s origin. Then the court explained that with regards to the trademark rights associated with the pillow shape it was not protected because the goodwill created by such a form had been established due to its monopoly that had been allowed for by the patent it had obtained that has since expired. To hold that it is protectable would fly in the face of the entire purpose of patent law, it is now allowed as part of the public domain. Finally, the court alludes to what would later be termed as trade dress in regards to the packaging of the product, and explains that Kellogg’s packaging and marketing was substantially unique so as not to create confusion as to the source or to trade off the goodwill of National Biscuit’s trade dress. For all these reasons, the Supreme Court reversed with directions to dismiss.
Imact of Case: this case helps to establish the doctrine of genericide and probably lays the groundwork to future cases with regards to trade dress and how it is to be treated. Most importantly however it indicates the significance of trying to take a product previously protected by patent and later using another form of intellectual property protection to protect it going forward and how in most instances this is not going to stand.

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Page last modified on Saturday 20 of November, 2010 20:16:15 GMT by bbauer04.
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