Contribution to Book
Kellogg Co. v. National Biscuit Co. may be the Supreme Court's most versatile and influential trademark decision. Justice Brandeis' opinion contained language that is now at the core of the statutory test for whether a term should be unprotected because consumers understand the term as the generic name for the product on which it is used. That same language guides courts seeking to determine whether a mark has acquired the degree of secondary meaning necessary to support trademark protection. Plaintiffs seeking to establish trademark rights in a product shape must demonstrate that the shape in question is not "functional" according to a standard that has its roots in Kellogg. And defendants seeking to parry claims that the design of their product is confusingly similar to the design of a once-patented product habitually invoke Kellogg to support a competitor's right to copy the subject matter of an expired patent. The scope of Kellogg's influence might, at first blush, seem surprising. The Court was confronted by a relatively narrow issue of trademark and unfair competition law, and to a large extent was revisiting an issue it had decided forty years earlier. The Court's opinion was also quite short. To understand its significance, one must be aware of the full range of philosophical reasons that motivated Justice Brandeis, including opposition for broad intellectual property rights, a concern for competition, and support for a misrepresentation-based model of unfair competition law. And one must also delve into the intense commercial rivalry in the cereal industry - a rivalry conducted by an odd mix of evangelists armed with even odder theories about nutrition and health. Ultimately, because a variety of rationales were offered by the Court for a conclusion upon which most would agree, the precise scope of the opinion has never been fully clear. These (perhaps purposeful) ambiguities might have prevented the opinion contributing to the clear development of areas of law that were directly addressed by the Kellogg Court. This partially explains the irony that the current Supreme Court has cited Kellogg in a number of trademark cases for a series of different propositions, but did not cite the case in the most recent effort to tackle the very question at issue in Kellogg (the scope of trademark protection for a product covered by an expired patent). By the same token, however, Justice Brandeis' quiet efforts to supply a more fundamental (and long-term) statement about the philosophy of trademark and unfair competition law may have allowed the opinion to achieve significance, both judicially and legislatively, well beyond the narrow context of the type of case the Court was deciding. And those efforts to articulate a philosophy for trademark and unfair competition law, which do not spring as obviously from the text of the Kellogg opinion, but instead are more readily apparent from historical context, may also be important in the years ahead as scholars and policymakers consider whether trademark law has inappropriately become a law against misappropriation.
The Story of Kellogg Co. v. National Biscuit Co: Breakfast with Brandeis, in Intellectual Property Stories (R. Dreyfuss & J. Ginsburg eds., 2005).