FINDLAW / CASELAW / UNITED STATES / US SUPREME COURT / KELLOGG CO. V. NATIONAL BISCUIT CO. KELLOGG CO. v. NATIONAL BISCUIT CO. Print Font size: A A Reset United States Supreme Court KELLOGG CO. v. NATIONAL BISCUIT CO.(1938) No. 548 Argued: October 10, 1938Decided: November 14, 1938 Rehearing Denied Dec. 12, 1938 See 305 U.S. 674 , 59 S.Ct. 246, 83 L.Ed. --.[ Kellogg Co. v. National Biscuit Co. 305 U.S. 111 (1938) ] (305 U.S. 111, 113] Messrs. Thomas D. Thacher and W. H. Crichton Clarke, both of New York City, for petitioner. Mr. David A. Reed, of Pittsburgh, Pa., for respondent. Mr. Justice BRANDEIS delivered the opinion of the Court. This suit was brought in the federal court for Delaware1 by National Biscuit Company against Kellogg Company to enjoin alleged unfair competition by the manufacture and sale of the breakfast food commonly known as shredded wheat. The competition was alleged to be unfair mainly because Kellogg Company uses, like the plaintiff, the name shredded wheat and, like the plaintiff, produces its biscuit in pillow-shaped form.[305 us. 111, 113] Messrs. Thomas D. Thacher and W. H. Crichton Clarke, both of New York City, for petitioner. Mr. David A. Reed, of Pittsburgh, Pa, for respondent. Mr. Justice BRANDEIS delivered the opinion of the Court. This suit was brought in the federal court for Delaware1 by National Biscuit Company against Kellogg Company to enjoin alleged unfair competition by the manufacture and sale of the breakfast food commonly known as shredded wheat. The competition was alleged to be unfair mainly because Kellogg Company uses. like the plaintiff, the name shredded wheat and, like the plaintiff, produces its biscuit in pillow-shaped form. Shredded wheat is a product composed of whole wheat which has been boiled, partially dried, then drawn or pressed out into thin shreds and baked. The shredded wheat biscuit generally known is pillow-shaped inform. It was introduced in 1093 by Henry D. Perky, of Colo- 1305 us. 111.114] rado; and he was connected until his death in 1903 with companies formed to make and market the article. Commercial success was not attained until the Natural Food Company built, in 1901, a large factory at Niagara Falls, New York. In 1908. its corporate name was changed to 'The Shredded Wheat Company'; and in 1930 its business and goodwill were acquired by National Biscuit Company. Kellogg Company has been in the business of manufacturing breakfast food cereals since its organization in 1905. For a period commencing in 1912 and ending in 1919 it made a product whose form was somewhat like the product in question, but whose manufacture was different, the wheat being reduced to a dough before being pressed into shreds. Fora short period in 1922 it manufactured the article in question. In 1927, it resumed manufacturing the product. In 1923, the plaintiff sued for alleged unfair competition two dealers in Kellogg shredded wheat biscuits. That suit was discontinued by stipulation in 1930. On June 11, 1932, the present suit was brought. Much evidence was introduced; but the determinative facts are relatively few; and as to most of these there is no conict. In 1935, the District Court dismissed the bill. It found that the name 'Shredded Wheat' is a term describing alike the product of the plaintiff and of the defendant; and that no passing off or deception had been shown. It held that upon the In 1935, the District Court dismissed the bill. It found that the name 'Shredded Wheat' is a term describing alike the product of the plaintiff and of the defendant; and that no passing off or deception had been shown. It held that upon the expiration of the Perky patent No. 543, I335 issued October 15, 1395, the name of the patented article passed into the public domain. In 1935, the Circuit Court of Appeals afmted that decree. Upon rehearing, it vacated, in 193?, its own decree and reversed that of the District Court, with direction 'to enter a decree enjoining the defendant from the use of the name 'Shredded I-.-'ulheat' as its trade-name and from advertising or offering for sale its product in the form [305 115.111. 115] and shape of plaintiff's biscuit in violation of its trade-mark; and with further directions to order an accounting for damages and profits) In its opinion the court described the trade-mark as 'consisting of a dish, containing two biscuits submerged in milk'. 3 Cir., 91 F.2d 150, 152,155. We denied Kellogg Company's petition for a writ of certiorari, 302 US. 7'33 , 53 S.Ct, 120, and denied rehearing 302 US. 777 . 53 S. Ct. 139. On January 5, 1933, the District Court entered its mandate in the exact language of the order of the Circuit Court of Appeals, and issued a permanent injunction Shortly thereafter National Biscuit Company petitioned the Circuit Court of Appeals to recall its mandate 'for purposes of clarication.' It alleged that Kellogg Company was insisting, contrary to the court's intention, that the effect to the mandate and writ of injunction was to forbid it from selling its product only when the trade name 'Shredded Wheat' is applied to a biscuit in the form and shape of the plaintiff's biscuit and is accompanied by a representation of a dish with biscuits in in; and that it was not enjoined from making its biscuit in the form and shape of the plaintiff's biscuit, nor from calling it 'Shredded Wheat,' unless at the same time it uses upon its cartons plaintiff's trade-mark consisting of a dish with two biscuits in it. On May 5, 1933, the Circuit Court of Appeals granted the petition for clarication and directed the District Court to enter a decree enjoining Kellogg Company (3 Cir., 96 F.2d 873}: '{1} from the use of the name 'Shredded Wheat' as its trade name, (2) from advertising or offering for sale its product in the form and shape of plaintiff's biscuit, and (3) from doing either.' Kellogg Company then led a petition for a writ of certiorari to review the decree as so claried, and also sought reconsideration of our denial of its petition for certiorari to review the decree as entered in its original fon'n. In support of these petitions it called to our attention the [305 u_s_111.11s] decision of the British Privy Council in Canadian Shredded 1Wheat Co., Ltd., v, Kellogg Company of Canada, Ltd, 55 RFC. 125, rendered after our denial of the petition for certiorari