Today’s post is written by Katie Dishman, of the National Archives at Chicago.
Who knew oats could be so powerful? One Midwestern company knew their strength and did whatever it could to protect its interest in the grain and its products.
In civil action number 3478, a case held at the U.S. District Court of Northern Illinois, Eastern Division, in Chicago, the Quaker Oats Company sued General Mills, Inc. The documents related to that suit are part of Record Group 21 and are preserved at the National Archives at Chicago.
In 1939, the plaintiff, Quaker Oats, had filed an application with the Patent Office to register “Oaties” as a trademark. The defendant, General Mills, filed an opposition because that name “infringed its registered trade marks (sic) of ‘Wheaties,’ ‘Kornies,’ and ‘Mazies.’” After some appeals back and forth with the Patent Office, Quaker filed a complaint in the District Court. The Chicago-based company alleged that General Mills threatened to subject Quaker to “suits for infringement and unfair competition for using the trademarks ‘Oaties’ and ‘Quaker Oaties.’” Quaker wanted to dismiss GMI’s complaint that it was too “confusingly similar” to the latter’s brands.
In 1941, people representing Quaker Oats hired agencies to survey people in several states intending to get consumers’ reactions to the main cereals in the case: General Mills’ Wheaties (introduced in 1924) and Quaker’s Oaties (which came out in 1939). One question on the survey, which was repeated in court, was “Do you think that both of these products are put out by the same concern?” Many people who filled out the questionnaires were summoned to give depositions; they were grilled about the answers they had submitted. Moreover, some survey takers had to give depositions about their work, being asked about how many surveys they gave and the types of answers the respondents provided.
For instance, one lawyer asked survey taker Mrs. Clarke from Utica, NY:
Q: “Are you sure that no one said that they thought Oaties were made by General Mills, or are you a little shaky about that?”
A: “I am not shaky about it. I recorded the answer as given me…. I don’t remember every one of the eighty-six answers. However, I don’t remember anybody saying General Mills to me.”
Consumers today may be savvier than in the 1940s, especially with the inundation of advertising in all forms of media, but some of the witnesses were aware of the differences in products and corporations. Since General Mills does not brand all its products with its name on the front of the packaging, it is easy to understand why some of those questioned were unaware that Wheaties was a product of that company. At that time, it was still identified with a small logo as a General Mills “Gold Medal” [flour] Wheat Food.
One survey taker commented, “I was never so surprised in my life as when they [the surveyors] told me about that people were confusing them as buying Oaties in place of Wheaties, think (sic) they were getting Wheaties and they were certainly different names.”
Even grocery store owners, like Marlin Drawbaugh of Roberts’ Cut-Rate Grocery in Penbrook, Pennsylvania, gave testimony about his familiarity with another Quaker product, Puffed Rice Sparkies. Mr. Drawbaugh was asked, “How long have you been familiar with that color scheme of blue and red on the Quaker packages?” and “When you saw the name Quaker Oaties did you associate that name with the name Wheaties?” The latter answer was no, as was the case with most of the other witnesses. Furthermore, when asked if any customers had brought back a package of Oaties because they had mistaken it for Wheaties, he said no. As evidenced in the images, the packaging is different enough to distinguish.
Many of the depositions of witnesses were to determine if the consumers were aware of the manufacturers of the products they were buying. Commonly asked questions to homemakers were “Do you know who puts out Wheaties?” and “When you bought Quaker Oaties did you think they were made by the same company that makes Wheaties?” The number of questions asked to the witnesses about conversations they had related to cereal is astounding. The lawyers were determined to know if consumers could distinguish the cereal and the packaging.
In its defense, General Mills responded that the District Court erred when saying that Oaties, from 1939, was not a “colorable imitation” of its Kornies and Maizies, whose patents were filed in 1937. Further, GMI said the court should have stated Oaties is an infringement on the defendant’s trademarks.
The case seemed to be a draw. The final judgment, from June 1942, was that the products of the plaintiff, Quaker Oats Company, were not “confusingly similar” nor “colorable imitations” to the registered trademarks of General Mills’ Wheaties, Kornies, and Maizies. Moreover, the court said, the brands in question “neither look nor sound alike, with the exceptions that they are all plurals, ending in ‘s’, and all have the diminutive suffixes ‘ie,’ denoting endearment or playfulness.” In fact, the list of exhibit materials mentions three of Quaker’s other brands, Rice Krispies, Sparkies, and Quakies, along with Kellogg’s Rice Krispies, Shreddies, and Yeasties.
It was determined that Quaker was allowed to use “Oaties” as a cereal name but could not trademark it since it would violate the (Patent) Act of 1905 whose statutes provide that “no mark which consists merely in words which are descriptive of the goods with which they are used and of the character or quality of such goods shall be registered under the terms of this subdivision of this chapter.” Although Quaker got to use “Oaties,” it could not trademark the product and could not prove unfair competition. And General Mills did not stop Oaties from being produced and could not prove the name to be confusing from its cereal products, particularly Wheaties. There must have been no retroactive actions about getting rid of the Wheaties trademark since the concept of adding an “ies” to a grain would be the same.
In the end, General Mills may have had the last laugh. Although many of the people who gave testimony said they had tried Wheaties, their families did not care for the cereal and did not purchase it again. Yet Wheaties is still made today, while Oaties left the grocery scene many years ago. Another significant outcome that is not mentioned is that General Mills introduced Cheerioats in 1941, which was this same time the lawsuit began, so it was too new to the market to be a part of the case. But, most likely to avoid any more legal issues, General Mills changed the product name to “Cheerios” in 1942, which turned out well for the company. The power of marketing, and lawsuits, still prevail.