## Facts

- Shredded wheat biscuits had long been made from shredded wheat and baked in a characteristic pillow-shaped form under patents issued to Henry Perky covering the product and machinery.
- After the Perky patents expired, competitors were legally free to manufacture the product.
- National Biscuit Company (as successor to the original manufacturer) claimed exclusive rights to (1) the term “shredded wheat” and (2) the pillow-shaped configuration, asserting that extensive advertising and exclusive use created protectable rights and that Kellogg’s use constituted unfair competition.
- Kellogg manufactured pillow-shaped shredded wheat biscuits and used the term “shredded wheat,” contending the term was generic and the shape was functional and therefore not protectable.
- National Biscuit sued in federal court seeking to enjoin Kellogg’s use of the name and the form; the district court dismissed, the court of appeals ultimately ordered an injunction, and the Supreme Court granted review.

## Issues

1. Whether “shredded wheat” is protectable as a trade name through secondary meaning or is an unprotectable generic designation.
2. Whether the pillow-shaped configuration of shredded wheat biscuits is protectable trade dress or is functional and dedicated to the public after patent expiration.
3. Whether Kellogg’s manufacture and marketing practices amounted to unfair competition by passing off its goods as those of National Biscuit.

## Decision

- The Supreme Court reversed the injunction and ruled for Kellogg.
- The Court held that “shredded wheat” is a generic term describing the product and cannot be exclusively appropriated.
- The Court held that, upon expiration of the Perky patents, the public acquired the right both to make the product as previously made and to use the name by which it had become known.
- The Court held that the pillow-shaped form, being the established form of the patented article and functional, was dedicated to the public and could not be monopolized through unfair-competition or trade-dress theory.
- The Court found no passing off or deception; Kellogg’s duty was to take reasonable steps to identify its own product and avoid consumer confusion, which the record supported.

## Legal Principles

- Generic terms are not protectable as trademarks or trade names; to prove secondary meaning, the claimant must show the term’s primary significance to consumers identifies the producer rather than the product.
- Expiration of a patent dedicates to the public the right to make the patented article and to use the generic or descriptive name by which it became known during the patent period.
- Functional product features, including configurations that are practically necessary to compete in the product, are not protectable as trade dress; unfair-competition law cannot be used to extend patent-like exclusivity beyond the patent term.
- A competitor may lawfully benefit from the goodwill associated with an unprotected product, provided it uses reasonable means to distinguish its goods and avoids deception or passing off.

## Conclusion

The Court held that National Biscuit could not exclude competitors from using the generic name “shredded wheat” or the functional pillow-shaped form after patent expiration, and that Kellogg committed no unfair competition where it reasonably identified its own product and did not deceive consumers as to source.


Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938)