26 October, 2013

Retrospective - Genericization of Trademarks

The name of a product can often be an incredibly strong identifier of a certain type of goods. Think of Aspirin, Cellophane, Yo-Yo, Escalator or even Heroin, and you automatically associate them with a particular type of good as opposed to a particular brand of goods. This is called the genericization of a trademark; where the trademark has become so ubiquitous of a type of good it loses its distinctiveness towards a particular brand of goods.

A pillow you can sleep on AND eat
A case which illustrated the genericization of a trademark was the case of Kellogg Co v National Biscuit Company. The case dealt with the sale of a product many are even familiar with today called 'Shredded  Wheat' For the uninitiated, this product is a breakfast cereal consisting of pillow-shaped wheat shreds, which was made by both companies. The product was initially made by a company called the Natural Food Company (which underwent a name change to the Shredded Wheat Company later on) since the early 1900s, which was subsequently bought by National Biscuit Company in 1930. The Kellogg's Company had made their own variant of Shredded Wheat since the late 1920s, although they had a similar product produced before that time. The National Biscuit Company subsequently sued Kellogg's for unfair competition for the use of the name 'Shredded Wheat' due to them producing a similar product and using the same name for that product.

In the case there were two considerations that the Federal Court of Delware had to decide on; one relating to the patent of the manufacture of the products, and the aspect of the use of the name. For our consideration the latter part is of more interest, however the patent does affect this particular point to an extent.

In the Court's decision they saw that the National Biscuit Company had no exclusive right to use the term 'Shredded Wheat' in selling their product. According to the Court the term is merely a descriptive one of a pillow-shaped wheat cereal, and the public recognize the name as an identifier of such products, due to Kellogg's ability to make the product (as the patent for the manufacturing method had expired in late 1912). The product had been sold since the late 1890s under the name of 'Shredded Wheat', and the term had not been trademarked until it was attempted to be trademarked by the Natural Food Company in 1905 - which was subsequently refused.

What makes this case peculiar is the inclusion of the name 'Shredded Wheat' as part and parcel of the patent for its manufacture. As the patent for the product's manufacture had gone into the public domain upon its expiry, so had the term which had been used to identify products which were manufactured in that particular way. According to the Court:
"It equally follows from the cessation of the monopoly and the falling of the patented device into the domain of things public that along with the public ownership of the device there must also necessarily pass to the public the generic designation of the thing which has arisen during the monopoly... To say otherwise would be to hold that, although the public had acquired the device covered by the patent, yet the owner of the patent or the manufacturer of the patented thing had retained the designated name which was essentially necessary to vest the public with the full enjoyment of that which had become theirs by the disappearance of the monopoly."
Eating breakfast can be complicated
In other words, the term 'Shredded Wheat' had become generic in the description of pillow-shaped wheat cereal products, and therefore could be used by anyone wishing to make and sell those products. Kellogg's had to merely distinguish its products from the plaintiffs so as to avoid any confusion, and through which a potential action in passing off. This was done through a distinctive look of the Kellogg's box, which did not resemble the one used by the National Biscuit Company, and the actual product differed both in size and appearance slightly from those made by the plaintiff.

The genericization of trademarks is a complex analysis of both the goodwill of the product in question (its reputation and imagine in the mind of the consumer) and other potential factors. It can be argued that even though the Court saw that the patent contained the use of the term 'Shredded Wheat', this would not be the case today. Arguably the use of the same term by Kellogg's could be an act of passing off the product, regardless of the manufacturing methods employed, as the plaintiff had been selling the product for over 20 years prior to Kellogg's adopting the name for its product. The plaintiff's inability to register the trademark would go against their action; however the motives of Kellogg's in the use of the name can be questioned.

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