ALEXANDRIA, VA. — Despite being on the market for more than five years and generating nearly a billion dollars in sales, the Artesano trademark used by Bimbo Bakeries USA on its pre-packaged sliced bread is not protected. BBU’s parent, Grupo Bimbo SAB de CV, is trying to change that.
Grupo Bimbo on June 15 filed a lawsuit in the US District Court for the Eastern District of Virginia Alexandria Division appealing the US Patent & Trademark Office’s (PTO) decision denying registration of the Artesano trademark, which Bimbo has used since 2015.
The PTO has refused to register the Artesano trademark, contending that “while the Artesano trademark has acquired distinctiveness as a trademark, it is a generic term for pre-packaged sliced bread and thus barred from registration,” according to the complaint.
Grupo Bimbo, though, said the Artesano brand has been “an immediate success” since its debut in August 2015, with retailers selling approximately one billion dollars of Artesano brand pre-packaged sliced bread. Artesano, according to Grupo Bimbo, has been “one of the most successful bread brands during that time period.”
Grupo Bimbo said it has spent “tens of millions of dollars” to advertise and promote Artesano pre-packaged, sliced bread in the United States, with such advertisements and promotions generating “hundreds of millions” of consumer impressions. The company said its advertisements and promotions have appeared in print as well as on television, including such networks as ABC, CBS, E, HGTV, TBS and Bravo. The brand also is active on social and digital media, including on Facebook, Pinterest, Instagram and YouTube.
The company also commissioned the Berkeley Research Group to conduct a survey on the term Artesano “to determine whether consumers understand the term Artesano as functioning as a brand or as a generic term for the goods in question.” According to the survey, 55.2% of respondents identified Artesano as a brand name while 23.7% identified it as a common name, “a 2 to 1 difference,” Grupo Bimbo said.
“The results demonstrate that the primary significance respondents place on the Artesano mark is as a brand name, and not as a common name,” Grupo Bimbo said. “In short, the Artesano brand is a distinctive source identifier and functions as a strong trademark for consumers of pre-packaged sliced bread.”
Grupo Bimbo filed a federal trademark application for the Artesano mark on April 12, 2017, based on use-in-commerce since at least Aug. 31, 2015, according to the lawsuit. The PTO refused the application in June 2017, and has subsequently refused Grupo Bimbo’s application on several other occasions. On April 14, 2021, the Trademark Trial and Appeal Board affirmed the refusal to register the Artesano mark on the asserted ground that the mark is generic. The TTAB also ruled, though, that the Artesano mark “had acquired secondary meaning, and would therefore be entitled to registration if the Artesano mark were descriptive rather than generic.”
Grupo Bimbo noted in the lawsuit it owns approximately 18 foreign trademark registrations for Artesano for bread in different Spanish-speaking countries, including Mexico.
“The Artesano mark has been deemed a registrable trademark in these Spanish-speaking jurisdictions,” Grupo Bimbo said. “These registrations of Artesano in Spanish-speaking countries illustrates the brand significance of Artesano and undercuts the TTAB’s reliance on the doctrine of foreign equivalents as the basis for the position that the mark is generic.”