Kellogg v. National Biscuit

Q: Why couldn't National Biscuit stop Kellogg from using 'shredded wheat'?

Because 'shredded wheat' is a generic term—the common name of the product, not a brand. The Court held that on expiration of the patents, both the right to make the article and the right to call it by its generic name passed to the public, so National Biscuit had no exclusive claim to the name.

How the Supreme Court let Kellogg use the generic name and functional pillow shape of shredded wheat, anchoring the rule that expired patents and generic terms pass into the public domain.

A breakfast-cereal fight produced one of the foundational decisions on the boundary between patents, trademarks, and the public domain. In Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (U.S. 1938), the Supreme Court, in an opinion by Justice Louis D. Brandeis, held that Kellogg was free to make pillow-shaped shredded-wheat biscuits and to call them “shredded wheat,” because both the generic name and the functional shape had passed into the public domain when the underlying patents expired. National Biscuit Company, successor to the invention’s originators, could not use unfair-competition law to recapture a monopoly the patent system had let lapse. The case remains a cornerstone of genericness and functionality doctrine.

At a glance

Case: Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (U.S. 1938).
Court: Supreme Court of the United States; opinion by Justice Louis D. Brandeis, with Justice McReynolds dissenting.
Posture: On certiorari in a suit for unfair competition; the Supreme Court largely ruled for Kellogg, denying broad relief to National Biscuit.
Holding: “Shredded wheat” is a generic term and the pillow shape is functional; both passed to the public on expiration of the patents, so Kellogg may use them subject only to a duty to avoid passing off.
Significance: Established that expired patents free both the article and its generic name for public use, and that functional features cannot be monopolized through trademark law.

From patent monopoly to public domain

Shredded wheat was developed in the 1890s, and the product and the machinery to make it were protected by patents that expired by the early twentieth century. While those patents were in force, the original maker enjoyed an exclusive right to produce the cereal. National Biscuit Company eventually succeeded to that business and sought to maintain control even after the patents lapsed, claiming exclusive rights both to the name “Shredded Wheat” and to the distinctive pillow-shaped biscuit.

Kellogg entered the market in the 1920s, manufacturing its own shredded wheat in the same pillow shape and selling it under the same descriptive name. National Biscuit sued for unfair competition, arguing that Kellogg was trading on goodwill that belonged to National Biscuit. The dispute thus asked whether unfair-competition law could preserve, indefinitely, advantages that the patent laws had granted only for a limited term.

”Shredded wheat” as a generic name

Justice Brandeis answered no. The term “shredded wheat,” he concluded, is generic: it is the common descriptive name of the product itself, not a designation of a single source. A generic name cannot function as a trademark, because it tells consumers what the thing is rather than who made it. Critically, the Court tied the genericness to the patent’s expiration. During the patent term, the public necessarily came to know the article by that name, and “upon expiration of the patents the name passed into the public domain” along with the right to make the article.

The Court squarely rejected the idea that long association could convert a generic term into an exclusive asset. National Biscuit had to show, at most, that the name had acquired a secondary meaning identifying it as the sole producer; it could not. To hold otherwise would let a former patentee extend its monopoly forever by controlling the only practical name for the product, defeating the public’s right, on a patent’s expiration, to make and freely identify the invention.

Functionality and the pillow shape

The same logic governed the biscuit’s shape. National Biscuit argued that the pillow form identified its product, but the Court found the shape functional. The evidence persuaded the Court that this form was the natural and efficient one: making the biscuit in some other shape would increase its cost and reduce its quality. A feature that is functional—essential to the article’s use or affecting its cost or quality—cannot be appropriated through trademark or unfair-competition law, because doing so would hinder competition in the article itself rather than merely protect a source identifier.

Because the shape had also been the subject of the expired patents, it too belonged to the public. Once a patent on a useful configuration expires, the right to copy that configuration is part of what the public receives in exchange for the temporary monopoly. Kellogg could therefore make biscuits in the pillow shape just as it could call them shredded wheat. This functionality principle would later be reaffirmed and elaborated in cases such as TrafFix Devices, Inc. v. Marketing Displays, Inc.

The limited duty that remained

The decision was not a complete defeat for National Biscuit. The Court recognized that even when a competitor may use a generic name and a functional shape, it must do so fairly. Kellogg had a duty to take reasonable steps to identify its own product and to prevent consumers from being deceived into thinking its biscuits came from National Biscuit. Kellogg satisfied that duty, the Court found, by prominently using its own well-known name and packaging so that purchasers could tell the two products apart.

The lesson is that genericness and functionality strip away the exclusive right to the name and shape, but they do not license outright deception. The residual protection unfair-competition law provides is against passing off—against confusing the public as to source—not against the use of the descriptive term or the useful form itself.

Open questions

How much labeling is enough to avoid passing off? Kellogg required reasonable steps to distinguish the source, but how prominent a competitor’s own branding must be is decided case by case.
When has a term truly become generic? The opinion ties genericness to patent-era public usage, yet courts still wrestle with proving that a once-distinctive term has crossed into common usage.
How far does functionality reach? The cost-and-quality rationale is clear here, but its application to aesthetic and design features remained contested for decades afterward.

Implications

Expired patents free the name and the design. When a patent lapses, the public gains the right both to make the invention and to call it by its common name.
Generic terms cannot be monopolized. A descriptive name for the product itself is unprotectable as a trademark absent strong secondary meaning, which generic terms cannot acquire.
Functional features stay open to competitors. A shape or feature that affects cost or quality cannot be locked up through trademark or unfair-competition claims.
The remedy is against passing off, not use. Competitors may use the generic name and functional form so long as they clearly identify their own source.
Trademark cannot extend a patent. Kellogg blocks the strategy of using unfair-competition law to prolong an expired patent monopoly indefinitely.

Frequently asked questions

Why couldn’t National Biscuit stop Kellogg from using ‘shredded wheat’? Because “shredded wheat” is a generic term—the common name of the product, not a brand. The Court held that on expiration of the patents, both the right to make the article and the right to call it by its generic name passed to the public, so National Biscuit had no exclusive claim to the name.

What did the case decide about the pillow shape? The Court found the pillow shape was functional—it affected the cost and quality of the biscuit—and had also been covered by patents that expired. A functional feature cannot be monopolized through trademark or unfair-competition law, so Kellogg was free to use the same shape.

Did Kellogg have any obligation at all? Yes. While Kellogg could use the generic name and functional shape, it had to take reasonable steps to identify its own product and avoid passing off, so consumers would not be misled into thinking Kellogg’s biscuits came from National Biscuit.