Wednesday, July 25, 2012

"Lessons In Trademarks: Loss of Rights"

Shredded Wheat:  Protectable Trademark or Generic Term?   

Source: Kellogg v. National Biscuit Co.;  and

This question was resolved by the U.S. Supreme Court... in 1938 !  (Kellogg Co. v. National Biscuit Co., U.S. Supreme Court, 305 U.S. 111 (1938)) (hereinafter, Kellogg).  In Kellogg, the plaintiff National Biscuit Co. (NBC) claimed the exclusive right to the trade name "Shredded Wheat" for pillow shaped shredded wheat biscuits. 

The Supremes renounced this claim very clearly, however, when they stated:  "The plaintiff has no exclusive right to the use of the term "Shredded Wheat" as a trade name.  For that is the generic term of the article, which describes it with a fair degree of accuracy; and is the term by which the biscuit in pillow-shaped form is generally known by the public.  Since the term is generic, the original maker of the product acquired no exclusive right to use it.  As Kellogg Company had the right to make the article, it had, also, the right to use the term by which the public knows it."

In their notes on generic mark, the authors of the legal treatise, Trademarks, by Pattishall and Hilliard (Copyr. 1987), on page 115 state:  "(1) A term is generic when its principal significance to the public is to indicate the product or service itself, rather than its source."

Comment:  A brand name and trademark, while achieving name recognition and commercial success, must work diligently not to become the generic term for its product or service. For this reason, organizations such as the International Trademark Association (INTA), as well as many brand owners, are careful to use their marks as adjectives, rather than as nouns or verbs.  There are additional measures that a trademark owner can take to avoid the generic death sentence, including not limited to, using the ® registration symbol and distinctively highlighting the trademark using CAPITAL LETTERS or in Bold, etc.

Contemporary examples of competitive "Shredded Wheat" breakfast cereals:

(Source: Google image search)


For more information and articles about trademarks, the reader is invited to visit our website at:

Respectfully submitted,

William E. Maguire, Esq.
Los Angeles, Calif.

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