By James Juo.

Bimbo Bakeries USA, owner of Sara Lee's North American Fresh Bakery business, has been using ARTESANO as a trademark for pre-packaged sliced bread since August 31, 2015. In 2017, its parent, Grupo Bimbo SAB de CV, filed a U.S. trademark application to register the ARTESANO mark with the U.S. Patent and Trademark Office (“USPTO”), but the application to register the ARTESANO mark was refused because “artesano” is Spanish for “artisan,” and “artisan” is a generic term for handcrafted bread, thus barred from registration. The examining attorney also held that even if the ARTESANO mark was merely descriptive of bread instead of generic, the mark had not acquired distinctiveness.

Bimbo appealed to the Trademark Trial and Appeal Board (“TTAB” or “Board”), arguing that “artesano” actually translated as “craftsman,” and submitting a consumer survey. On April 14, 2021, the TTAB affirmed that “artesano” is the foreign equivalent of “artisan,” and that artisan bread is a type of bread.  In re Grupo Bimbo, S.A.B. de C.V., Serial No. 87408465. The TTAB held that if a baker makes any type of bread by hand, then “it may be an artisan bread.”

Considering a “Teflon”-type survey submitted by Bimbo, the TTAB acknowledged the survey showed that “55.2% of respondents identified ARTESANO as a brand name for the relevant goods (with a 5.7% margin of error), whereas only 23.7% identified it as a common name (with a 4% margin of error).” For comparison, 94.6% and 95.7% identified “Wonder” and “Sunbeam” as brand names, while 91.0% and 91.6% identified “Pumpernickel” and “Honey Wheat” as common names. And  72.6% found “Butternut” to be a common name, while 21.7% found it to be a brand name.

The TTAB noted that Teflon surveys are ineffective at determining the true weight of public perception for terms that are not coined or arbitrary because the survey results may reflect “de facto secondary meaning” for an existing term where the commercial strength from marketing bread with the ARTESANO mark may have affected the survey results. Quoting In re E. I. Kane, Inc., 221 USPQ 1203, 1204 (TTAB 1984), the Board explained:

No matter how much money and effort the user of the term has spent promoting the sale of its products and no matter how much the public has come to recognize the term as an indicator that the products come from the user of the term, the secondary meaning of the term is said to be de facto, and cannot be the basis for registration of a term that is so highly descriptive of the product that it is legally incapable of distinguishing the product from other similar products.

The TTAB, however, did find that Bimbo submitted sufficient evidence to prove that the ARTESANO mark had acquired distinctiveness. But while a merely descriptive mark may be registered if it has acquired distinctiveness, that is not applicable for a mark that is generic.

So if Bimbo could establish that “artisan” is not a generic term for bread, then a trademark registration could be obtained under Section 2(f) based on the acquired distinctiveness of the ARTESANO mark.

On June 15, 2021, Bimbo appealed the TTAB decision to the U.S. District Court for the Eastern District of Virginia. Civil Action No. 21-CV-00721. One reason for appealing a Board decision to the district court rather than straight to the U.S. Court of Appeals for the Federal Circuit (which is the more typical route), is that additional evidence may be introduced into the record that “artisan” is merely descriptive of bread, and not generic. Perhaps Bimbo will introduce another survey focusing on “artisan” instead of the ARTESANO mark.

The trademark attorneys at Thomas P. Howard, LLC are experienced in prosecuting trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.