The Trademark Tale of the Original Raisin Bran

Strong Brand Equity

The Problem with Choosing Descriptive Trademarks

 On Monday, my wife, Victoria, wasn’t feeling well.  She wanted Raisin Bran. She craves Raisin Bran cereal when she isn’t feeling well.  So I went to the store and brought back Raisin Bran Crunch. It box of Raisin Bran Crunch cerealwas not what she requested, so I went back to the store. In my defense, I’ve never bought Raisin Bran, wouldn’t consider eating it, and the Raisin Bran Crunch was shelved far away from Raisin Bran cereal.

On the second trip, I found the Raisin Bran but there were two different kinds, Post Raisin Bran and Kellogg’s Raisin Bran. Now I had to call for clarification. Kellogg’s Raisin Bran was what she craved.

As an intellectual property attorney, I was surprised that both Kellogg and Post sold cereal called “Raisin Bran,” and it got my trademark antennae up. I just assumed Raisin Bran was a trademark, so I did some investigating.

I learned that Raisin Bran was once a registered trademark owned by Skinner Manufacturing Company of Omaha, Nebraska. They introduced the cereal in 1925 and registered the name with the USPTO in 1926. They marketed the product as “Raisin-BRAN” without competition, and spent large sums on advertising to create demand for the product, and built up a large and profitable business.

Kellogg and Post Introduce Raisin Bran

In 1942, both Kellogg and General Mills (Post) introduced their Raisin Bran cereal, and Skinner promptly sued them both for trademark infringement and unfair competition. The District Court sided against Skinner, and the Appeals Court agreed. The Appeals Court held that “Raisin Bran” was descriptive, and that the voluminous evidence that the public recognized Raisin Bran as being sold by only one source wasn’t enough. Raisin Bran couldn’t be a trademark because it merely described bran cereal with raisins in it. The Court went on to say that since Kellogg and Post prominently used their names on the cereal boxes, consumers would not be confused.

Kellogg owns Raisin Bran Crunch and All Bran?

Interestingly, Kellogg owns the registration to the words “Raisin Bran Crunch.” They registered that name with the USPTO on May 21, 2000. The USPTO didn’t think that it was descriptive, allowing it to be registered on the principal register which is for non-descriptive marks. This seems incongruous given that the cereal is raisin bran, and it’s crunchy. Kellogg also owns the registration to All-Bran, for cereal which is… bran cereal. 

Descriptive v. Non-descriptive Marks

The USPTO allows descriptive marks to be registered on the supplemental register. This is a listing of non-mark designations (such as descriptive words) that are “capable” of eventually becoming a “mark.”  That is, a designation on the Supplemental Register is not a “trademark” yet, however, it does provide the following advantages:

  • The registrant may use the registration symbol ® 
  • The registration is protected against registration of a confusingly similar mark
  • The registrant may bring suit for infringement in federal court, and
  • The use of the registration as a basis to obtain registration in foreign countries

The principal register provides more rights.

  • Presumed notice to the public of the registrant’s claim of ownership of the mark
  • A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark in commerce on or in connection with the goods/services listed in the registration (useful in court proceedings)
  • A date of constructive use of the mark as of the filing date of the application (also useful in court proceedings)
  • The ability to bring an action concerning the mark in federal court (considered an advantageous venue)
  • The ability to file the registration with the U.S. Customs and Border Protection to prevent importation of infringing foreign goods
  • The registrant’s exclusive right to use the mark in commerce on, or in connection with, the goods/services covered by the registration can become “incontestable,” subject to certain statutory defenses (also useful in court proceedings), and
  • The use of the registration as a basis to obtain registration in foreign countries.

The USPTO also allows descriptive marks to be moved to the principal register if they have become known by consumers through use, called secondary meaning. The owner of the mark must supply evidence to support that the mark has acquired distinctiveness. Use of the mark for 5 consecutive years, is considered prima facie evidence of acquired distinctiveness.  

The Takeaway

Descriptive trademarks can be great for marketing but can be a problem as trademarks. As this case shows, descriptive trademarks are at risk. The better choice is to pick a non-descriptive mark and register that with the USPTO. The value of a trademark increases over time and can become your company’s most valuable asset. It’s better to choose a strong trademark that will maintain its value over time, reflect your customer’s recognition of your products, and secure the marketing value you’ve invested over the years.

Invisible Assets book coverBill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the new book, Invisible Assets – How to Maximize the Hidden Value in Your Business.

To get answers to your questions you can email Bill@IPGuy.com, or call me at 248-433-7381.

 

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