Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1140503
`
`Filing date:
`
`06/16/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`87408465
`
`Grupo Bimbo, S.A.B. de C.V.
`
`Applied for Mark
`
`ARTESANO
`
`Correspondence
`Address
`
`ANDREW J AVSEC
`BRINKS GILSON & LIONE
`PO BOX 10395
`CHICAGO, IL 60610
`UNITED STATES
`Primary Email: officeactions@brinksgilson.com
`Secondary Email(s): aavsec@brinksgilson.com, jhandelman@brinksgilson.com,
`vmarino@brinksgilson.com
`312-321-4200
`
`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's email
`
`Copy of appeal to district court
`
`Notice of Civil Action.pdf(861791 bytes )
`
`Emily T. Kappers
`
`officeactions@brinksgilson.com, jhandelman@brinksgilson.com,
`aavsec@brinksgilson.com, vmarino@brinksgilson.com,
`ekappers@brinksgilson.com, emann@brinksgilson.com
`
`Signature
`
`Date
`
`/Emily T. Kappers/
`
`06/16/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re ARTESANO, U.S. Trademark Application Serial No. 87/408,465
`Filed by Grupo Bimbo S.A.B. de C.V. on April 12, 2017
`Examining Attorney: Tamara Hudson, Law Office 104
`
`NOTICE OF CIVIL ACTION
`
`Pursuant to 37 C.F.R. §2.145(c)(4) and Trademark Trial and Appeal Board Manual of
`
`Procedure §903.01, Applicant hereby notifies the Trademark Trial and Appeal Board that on
`
`June 15, 2021, Applicant filed a complaint in the United States District Court for the Eastern
`
`District of Virginia, Grupo Bimbo S.A.B. de C.V. v. Drew Hirshfeld, in his official capacity
`
`performing the functions and duties of the Under Secretary of Commerce for Intellectual
`
`Property and Director of the United States Patent and Trademark Office, and The United
`
`States Patent and Trademark Office, 1:21-CV-00721, which is attached hereto as Exhibit A,
`
`seeking judicial review of the Board’s decision rendered on April 14, 2021 in the above-
`
`captioned proceeding. The action, filed pursuant to 15 U.S.C. §1071(b), is Civil Action No.
`
`1:21-CV-00721.
`
`DATED:
`
`June 16, 2021
`
`Respectfully submitted,
`
`GRUPO BIMBO S.A.B. de C.V.
`
`By:
`
`
`
`__/Emily T. Kappers/_____
`Jeffrey Handelman
`jhandelman@brinksgilson.com
`Andrew Avsec
`aavsec@brinksgilson.com
`Virginia W. Marino
`vmarino@brinksgilson.com
`Emily T. Kappers
`ekappers@brinksgilson.com
`BRINKS GILSON & LIONE
`
`1
`
`

`

`NBC Tower, Suite 3600
`455 N. Cityfront Plaza Drive
`Chicago, IL 60611
`Telephone: (312) 321-4200
`
`Attorneys for Plaintiff
`Grupo Bimbo S.A.B. de C.V.
`
`2
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 1:21-cv-00721 Document 1-1 Filed 06/15/21 Page 1 of 1 PageID# 15
`JS44 (Rev.o4l2r)
`cIvL covER SHEET
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
`providedbylocalrulesofcourt. Thisform,approvedbytheJudicial ConferenceoftheUnitedStatesinSeptemberlgT4,isrequiredfortheuseoftheClerkofCourtforthe
`purpose of initiating the civil docket sheet. (sEIi INST'RUCTIONS oN Nrtxt ?AGD ot;I'HIS t;oRM.)
`(a) PLAINTIFFS
`
`GRUPO BIMBO S.A.B. de C.V.
`
`(b) County of Residence of First Listed Plaintiff MeXiCO
`(DXC Ii p7' I N U. S. p LA I NI't I,'t; CASIiS)
`
`DREW HIRSHFELD and The United States Patent and
`Trademark Office
`
`County ofResidence ofFirst Listed Defendant FaiffaX
`(tN u.s. Pt.AIN'.t'IFI; CAStiS ONt.y)
`NOTE: IN LAND CONDEMNATIONCASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`(C) Attomeys (l;irm Nome, Atldress, andT'elephone Number)
`
`Attomeys (lf Known)
`
`Connell Mullins, Jr., Spotts Fain, 4'11 E. Franklin Street,
`Suite 600, Richmond, VA23219, (804)697-2069
`
`II. BASIS OF JURISDICTION (ptace an "x" in one Rox onty)
`
`!
`
`t U.S. Govemment
`Plaintiff
`
`lz U.S. Govemment
`
`Defendant
`
`[3
`
`!4
`
`Federal Question
`(U.5. Government Not q Pqrty)
`
`. CITIZENSHIP OF PRINCIPAL PARTIES 1rro," on "x" inc)ne Boxfor I'taintiff
`(l;or l)iversity Cases Only)
`and One Box for l)efendant)
`PTF DEF
`PTF DEF
`CitizenofThisState nl
`I
`lncorporatedorPrincipalPlace !+
`n
`[+
`ofBusiness In This State
`
`oiversity
`(lndicate Citizenship of Parties in Item III)
`
`CitizenofAnotherstate !Z
`
`I Z IncorporatedardPrincipalPlace
`ofBusiness ln Another State
`
`! s
`
`!S
`
`CitizenorSubjectofa !:
`
`!
`
`: ForeignNation
`
`I o
`
`!o
`
`{)THI"N I
`
`375 False Claims Act
`3?6 Qui Tam (3 I USC
`372e(a))
`400 Stat€ Reapportionment
`
`410 Antitrust
`430 Banks and Banking
`450 Commerce
`460 Deportation
`470 Racketeer [nfluenced and
`Compt Orgmizations
`480 Consumer Credit
`(15 USC l68l or 1692)
`485 Telephone Consumer
`Protection Act
`490 Cable/Sat TV
`850 Securities/Commodities/
`Exchange
`890 Other Statutory Actions
`891 Agricultural Acts
`893 Enyironmental Matters
`895 Freedom of lnfomation
`Act
`896 Arbitration
`899 Adrninistrative Procedure
`Act/Review or Appeal of
`Agency Decision
`950 Constitutionality of
`State Statutes
`
`Click here for:
`BANI(RI]PTCY
`
`422 Appeal 28 USC 158
`423 Withdrawal
`28 USC 157
`INTELLNCTUAL
`PROPERTYRIGATS
`
`820 Copyrights
`
`830 Patent
`835 Patent - Abbreviated
`New Drug Application
`840 Tradernark
`
`880 Defend Trade Secrets
`Act of20l6
`
`1
`
`ll
`
`!f
`
`861 HrA (1395f0
`862 Black Lung (923)
`863 DIwc/DIWW (40s(g))
`864 SSID TitIC XVI
`86s RSI (a0s(g))
`
`I
`
`870 Taxes (U.S. Plaintiff
`or Defendant)
`] srt Ins-rnitdlarty
`26 USC 7609
`
`F'ORF'E ITIJRI ,/PNNA I,TY
`] 625 Drug Related Seizure
`of Property 2 I USC 88 I
`] e eo o*rer
`
`710 Fair Labor Standards
`Act
`720 Labor/N4anagement
`
`Relations
`740 Railway Labor Act
`I Family and Medical
`Leave Act
`Other Labor Litigation
`Employee Retirement
`Income Security Act
`
`IIAlvItGKA'I IUN
`__l 462 Naturalization Application
`__l +e s Other Immigration
`Actions
`
`IV. NATURE OF SUIT
`ACT
`
`qn "X" in One Box
`TORTS
`
`PERSONAL INJURY
`! 365 Personal tnjury -
`Product Liabilitv
`fl 362 Health Care/
`Phamaceutical
`Personal Injury
`Product Liabilitv
`[ 368 Asbestos Personal
`Injury Product
`Liability
`PERSONAL PROPERTY
`370 Other Fraud
`371 Truth in Lending
`
`380 Other Personal
`
`Property Damage
`n 385 Property Dmage
`Product Liability
`
`PERSONAL INJURY
`310 Airplane
`315 Airplane Product
`Liability
`] 320 Assault, Libel &
`Slander
`I 330 nederal Employers'
`Liability
`340 Marine
`345 Marine Product
`Liability
`350 Motor Vehicle
`355 Motor Vehicle
`Product Liability
`] 360 Other Personal
`Injury
`I 362 Personal Injury -
`Medical Malpractice
`
`l lI
`
`441 Voting
`442 Employment
`443 Housing/
`Accommodations
`445 Amer. w/Disabilities
`Employment
`446 Amer. w/Disabilities
`Other
`448 Education
`
`Habeas Corpus:
`463 Alien Detainee
`510 Motions to Vacate
`Sentence
`530 General
`
`535 Death Penalty
`Other:
`540 Mandmus & Other
`550 Civil Rights
`555 Prison Condition
`560 Civil Detainee -
`Conditions of
`Confinement
`
`I I 0 Insurance
`120 Marine
`130 Miller Act
`140 Negotiable [nstrument
`I 50 Recovery of Overpayment
`& Enforcement of
`l5l Medicare Act
`I 52 Recovery ofDefaulted
`Student Loms
`(Excludes Veterms)
`153 R""otery ofOverpayment
`ofVeteran's Benefits
`t60 Stockholders' Suits
`
`I 90 Other Contract
`195 Contract Product Liability
`196 Franchise
`
`!
`
`,PURI'Y
`
`2 l0 Land
`220 Foreclosure
`230 Rent Lease & Ejectment
`240 Torts to Land
`245 Tort Product Liability
`290 All Other Real Property
`
`V, ORIGIN (Place an "X" in One Rox Only)
`;'11 I Original
`;2 Removed lrom Tl 3 Remanded ffom
`T-1 4 Reinstatedor T-'l 5 Translened liom r- 6 Multidistrict rr 8 Multidistrict
`,-
`Appellate Court u Reopened u
`Another District t-J Litigation
`Proceedrng
`State Court
`Litigation -
`Direct File
`
`Transfer
`
`6prctfy)
`Statute under which you are filing 1Do not cile juisdictional statutes unless diversity).
`Cite the U.S
`15 U.S.C. Section 1071
`
`VI. CAUSE OF ACTION
`
`VII. REQUESTED IN N cngcT IF THIS IS A clAss AcTIoN
`COMPLAINT:
`vlrr. RELATED CASE(S)
`IF ANY
`
`(See instuctions)
`
`JUDGE
`
`UNDER RULE 23, F.R.Cv.P.
`
`DEMAND S
`
`CHECK YES only if demanded in complaint:
`lYes Euo
`
`JURY DEMAND:
`
`DOCKET NUMBER
`
`decision of the U.S. Trademark Trial and Appeal Board
`
`DAl'E
`
`Jun 15.2021
`
`FOR OFFICE USE ONLY
`
`SIUNAfURh OI A]'IORNBY OF RECORD
`
`/s/ Clay S. Hester
`
`RECEIPT #
`
`AMOTJNT
`
`APPLYING tFP
`
`JIIDGE
`
`MAG. JUDGE
`
`

`

`Case 1:21-cv-00721 Document 1 Filed 06/15/21 Page 1 of 14 PageID# 1
`
`Case No.: 1:21-CV-00721
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`)
`GRUPO BIMBO S.A.B. de C.V., a
`)
`Mexico Corporation;
`
`
`)
`
`
`
`
`
`
`)
`
`Plaintiff,
`
`
`
`)
`
`
`
`
`
`
`)
`
`v.
`
`
`
`
`)
`
`
`
`
`
`
`)
`DREW HIRSHFELD, in his official
`)
`capacity performing the functions and
`duties of the Under Secretary of Commerce )
`for Intellectual Property and Director of the )
`United States Patent and Trademark Office; )
`and
`
`
`
`
`
`)
`
`
`
`
`
`
`)
`)
`THE UNITED STATES PATENT AND
`)
`TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`)
`
`Serve:
`
`
`
`)
`
`Office of the General Counsel
`)
`
`U.S. Patent and Trademark Office
`)
`
`Madison Bldg. East, Room 10B20
`)
`
`600 Dulany Street
`
`
`)
`
`Alexandria, VA 22314
`
`)
`
`
`
`
`
`
`)
`
`Attorney General of the United
`)
`
`States
`
`
`
`)
`
`Main Justice Building
`
`)
`10th & Constitution Ave, NW
`
`)
`
`Washington, DC 20530
`
`)
`
`
`
`
`
`
`)
`
`U.S. Attorney for the Eastern Dist.
`)
`
`of Va.
`
`
`
`)
`
`2100 Jamieson Avenue
`
`)
`
`Alexandria, VA 22314
`
`)
`
`
`
`
`
`
`)
`
`Defendants.
`
`
`
`)
`___________________________________ )
`
`
`
`
`
`
`
`
`

`

`Case 1:21-cv-00721 Document 1 Filed 06/15/21 Page 2 of 14 PageID# 2
`
`COMPLAINT
`
`Plaintiff Grupo Bimbo S.A.B. de C.V. (“Plaintiff” or “Grupo Bimbo”), by its undersigned
`
`attorneys, for its Complaint against defendants Drew Hirshfeld, in his official capacity performing
`
`the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director
`
`of the United States Patent and Trademark Office (the “Director”), and the United States Patent
`
`and Trademark Office (the “PTO”), alleges as follows:
`
`INTRODUCTION
`
`1.
`
` Grupo Bimbo, along with its many subsidiaries, is the largest bakery company in
`
`the world, and its many brands are some of the most beloved by consumers worldwide.
`
`2.
`
`In approximately August 2015, Grupo Bimbo introduced ARTESANO brand pre-
`
`packaged, sliced bread in the United States. The product was an immediate success. Since its
`
`launch, retailers have sold approximately one billion dollars of ARTESANO brand pre-packaged
`
`sliced bread, making ARTESANO one of the most successful bread brands during that time period.
`
`3.
`
`As a result, the ARTESANO mark has become a well-known brand as used in
`
`connection with pre-packaged sliced bread.
`
`4.
`
`Nevertheless, the PTO has refused to register Grupo Bimbo’s well-known
`
`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. This action is to appeal that decision.
`
`PARTIES, JURISDICTION AND VENUE
`
`5.
`
`Grupo Bimbo is a Mexico corporation with an office at Prolongacion Paseo De La
`
`Reforma, No. 1000, Co. Pena Blanca Santa Fe, Mexico City, Mexico 01210.
`
`
`
`2
`
`

`

`Case 1:21-cv-00721 Document 1 Filed 06/15/21 Page 3 of 14 PageID# 3
`
`6.
`
`Drew Hirschfeld is performing the functions and duties of the Under Secretary of
`
`Commerce for Intellectual Property and Director of the United States Patent and Trademark Office
`
`with an address at P.O. Box 1450, Alexandria, Virginia 22314.
`
`7.
`
`The United States Patent and Trademark Office is a federal agency within the
`
`United States Department of Commerce. The agency is located at 600 Dulany Street, Alexandria,
`
`Virginia 22314.
`
`8.
`
`This Court has jurisdiction over the subject matter of this action pursuant to Section
`
`21(b) of the U.S. Trademark Act of 1946 (the “Lanham Act”), as amended, 15 U.S.C. Sec. 1071(b),
`
`which provides that a party dissatisfied with a final decision of the Trademark Trial and Appeal
`
`Board (“TTAB”) may institute a new civil action in a Federal District Court challenging such
`
`decision. This Court also has subject matter jurisdiction pursuant to 28 U.S.C. Sec. 1331.
`
`9.
`
`Venue is proper in this district pursuant to 28 U.S.C. Sec. 1391(e)(1)(A).
`
`Grupo Bimbo and the ARTESANO Brand
`
`FACTUAL BACKGROUND
`
`10.
`
`Grupo Bimbo, along with its many subsidiaries, is the largest bakery company in
`
`the world. Its successful and widely recognized brands are sold in the United States and
`
`internationally.
`
`11.
`
`Grupo Bimbo sells ARTESANO brand bread in countries throughout the world,
`
`including in Mexico.
`
`12.
`
`Since at least as early as August 2015, Grupo Bimbo has extensively and
`
`continuously used and promoted the ARTESANO trademark in connection with pre-packaged
`
`sliced bread in commerce in the United States.
`
`
`
`3
`
`

`

`Case 1:21-cv-00721 Document 1 Filed 06/15/21 Page 4 of 14 PageID# 4
`
`13.
`
`Since its launch, retailers have sold approximately one billion dollars of
`
`ARTESANO brand pre-packaged sliced bread in the United States, making one of the most
`
`successful bread brands during that time frame.
`
`14.
`
`The ARTESANO mark is prominently displayed on packaging and advertisements
`
`as shown below:
`
`
`
`
`
`
`
`15.
`
`The ARTESANO brand is ubiquitous in bread aisles throughout the country.
`
`Indeed, ARTESANO brand bread is available for purchase at all major food retailers throughout
`
`the United States.
`
`16.
`
`The ARTESANO mark is prominently used in connection with in-store displays,
`
`as shown below:
`
`
`
`
`
`4
`
`

`

`Case 1:21-cv-00721 Document 1 Filed 06/15/21 Page 5 of 14 PageID# 5
`
`
`
`17.
`
`Grupo Bimbo has spent tens of millions of dollars to advertise and promote
`
`ARTESANO prepackaged, sliced bread in the United States. Such advertisements and promotions
`
`have created hundreds of millions of consumer impressions.
`
`18.
`
`Advertisements promoting Grupo Bimbo’s ARTESANO pre-packaged sliced
`
`bread have frequently aired during television programming in the United States, including on
`
`popular networks such as ABC, CBS, E, HGTV, TBS, and Bravo.
`
`19.
`
`Grupo Bimbo has promoted its ARTESANO pre-packaged sliced bread with print
`
`advertisements, which have been circulated to well over 100 million U.S. consumers.
`
`
`
`5
`
`

`

`Case 1:21-cv-00721 Document 1 Filed 06/15/21 Page 6 of 14 PageID# 6
`
`20.
`
`Grupo Bimbo’s ARTESANO brand is active on social and digital media, including
`
`on Facebook, Pinterest, Instagram, and YouTube.
`
`21.
`
`Grupo Bimbo’s ARTESANO bread has won numerous industry awards and
`
`recognitions, all featuring ARTESANO as Grupo Bimbo’s brand name for the product. For
`
`example, in April 2017, the IRI Growth Summit, an annual conference attended by sales and
`
`marketing leaders from the world’s top consumer packaged goods manufacturers, retailers and
`
`media agencies, announced the most successful Consumer Packaged Goods Brands of 2016. IRI
`
`Growth Summit named Grupo Bimbo’s ARTESANO bread #5 on the list of its 2016 New Product
`
`Pacesetters in terms of sales. The IRI Growth Summit cited the impressive $102.4 million in first
`
`year sales and the 43% rate of repeat consumers.
`
`22.
`
`Grupo Bimbo 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. The survey employed the
`
`well-accepted Teflon format for assessing whether a term is generic. Grupo Bimbo’s survey results
`
`show that 55.2% of respondents identified ARTESANO as a brand name for the relevant goods,
`
`whereas only 23.7% identified it as a common name – a 2 to 1 difference. The results demonstrate
`
`that the primary significance respondents place on the ARTESANO mark is as a brand name, and
`
`not as a common name.
`
`23.
`
`In short, the ARTESANO brand is a distinctive source identifier and functions as a
`
`strong trademark for consumers of pre-packaged sliced bread.
`
`
`
`
`
`
`
`
`
`6
`
`

`

`Case 1:21-cv-00721 Document 1 Filed 06/15/21 Page 7 of 14 PageID# 7
`
`U.S. Trademark Application History
`
`24.
`
`On April 12, 2017, Grupo Bimbo filed a federal trademark application based on
`
`use-in-commerce since at least as early as August 31, 2015, for the mark ARTESANO, Serial No.
`
`87/408,465 in International Class 30.
`
`25.
`
`An Office Action issued on June 26, 2017, refusing Grupo Bimbo’s mark on the
`
`basis of mere descriptiveness under Lanham Act Section 2(e)(1). Grupo Bimbo timely filed its
`
`response on December 21, 2017, explaining why its mark is inherently distinctive. Grupo Bimbo
`
`also took the position, in the alternative, that its ARTESANO mark has acquired distinctiveness
`
`under Lanham Act Section 2(f) based on its extensive use of the mark, and provided evidence
`
`showing the duration, extent and nature of Grupo Bimbo’s use of the mark in commerce.
`
`26.
`
`A further non-final Office Action issued on January 16, 2018, maintaining the
`
`Section 2(e)(1) refusal and raising a new issue regarding the alleged insufficiency of Grupo
`
`Bimbo’s Section 2(f) claim of acquired distinctiveness. Grupo Bimbo timely filed its response on
`
`July 16, 2018, maintaining its position that its ARTESANO mark is inherently distinctive, and also
`
`arguing in the alternative that its ARTESANO mark has acquired distinctiveness. Grupo Bimbo
`
`provided further evidence of strong consumer recognition and its extensive use of the mark with
`
`its submission.
`
`27.
`
`A further non-final Office Action issued on August 28, 2018, maintaining the
`
`Section 2(e)(1) and Section 2(f) refusals, and raising a new issue regarding a generic advisory.
`
`Grupo Bimbo timely filed its response on February 28, 2019 maintaining its position that its
`
`ARTESANO mark is inherently distinctive, and also arguing in the alternative that its
`
`ARTESANO mark has acquired distinctiveness. Grupo Bimbo provided further evidence of strong
`
`consumer recognition and its extensive use of the mark with its submission.
`
`
`
`7
`
`

`

`Case 1:21-cv-00721 Document 1 Filed 06/15/21 Page 8 of 14 PageID# 8
`
`28.
`
`A further non-final Office Action issued on May 2, 2019, refusing the mark on the
`
`basis of genericness under Lanham Act Sections 1, 2, 3 and 45, and maintaining the Section 2(e)(1)
`
`and Section 2(f) refusals. Grupo Bimbo timely filed its response on November 4, 2019 maintaining
`
`its position that its ARTESANO is inherently distinctive and not generic, and also arguing in the
`
`alternative that its ARTESANO mark has acquired distinctiveness. Grupo Bimbo provided further
`
`evidence of strong consumer recognition and its extensive use of the mark with its submission,
`
`including survey evidence. Grupo Bimbo also amended its identification of goods to pre-packaged
`
`sliced bread.
`
`29.
`
`A final Office Action issued on December 5, 2019 maintaining the Section 1, 2, 3
`
`and 45 refusal based on genericness, as well as the Section 2(e)(1) and Section 2(f) refusals. Grupo
`
`Bimbo timely filed a Request for Reconsideration on June 5, 2020 maintaining its position that its
`
`ARTESANO mark is inherently distinctive and not generic, and also arguing in the alternative that
`
`its ARTESANO mark has acquired distinctiveness. Grupo Bimbo provided further evidence of
`
`strong consumer recognition and its extensive use of the mark with its submission.
`
`30.
`
`On June 5, 2020, Grupo Bimbo filed a Notice of Appeal with the Trademark Trial
`
`and Appeal Board (“TTAB”). Grupo Bimbo’s Request for Reconsideration was denied on July
`
`17, 2020. Thereafter, the TTAB resumed action on the appeal, which was suspended pending
`
`disposition of the Request for Reconsideration.
`
`The PTO Decision
`
`31.
`
`On April 14, 2021, following briefing and oral argument, the TTAB issued an order
`
`affirming the refusal to register Grupo Bimbo’s ARTESANO mark on the asserted ground that the
`
`mark is generic. The TTAB also ruled, however, that the ARTESANO mark had acquired
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`Case 1:21-cv-00721 Document 1 Filed 06/15/21 Page 9 of 14 PageID# 9
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`secondary meaning, and would therefore be entitled to registration if the ARTESANO mark were
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`descriptive rather than generic.
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`The PTO Erred In Refusing To Register Grupo Bimbo’s ARTESANO Mark On
`The Asserted Ground That The Mark Is Generic.
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`32.
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`A generic term is one that designates an entire class of goods or services, rather
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`than the producer of those goods or services.
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`33.
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`The term ARTESANO has no generic or descriptive meaning in relation to the
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`applied-for goods – pre-packaged sliced bread.
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`34.
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`The TTAB committed numerous errors in finding that the ARTESANO mark is a
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`generic term for prepackaged, sliced bread.
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`The TTAB Applied the Wrong Burden of Proof
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`35.
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`The Trademark Manual of Examining Procedure (TMEP) states that the
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`“examining attorney has the burden of proving that a term is generic by clear evidence.”
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`36.
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`In finding that the ARTESANO mark is a generic term for prepackaged, sliced
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`bread, the TTAB erred by applying the wrong burden of proof. While the TTAB correctly
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`acknowledged that “the examining attorney has the burden of proving genericness,” it failed to
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`identify or apply the proper “clear evidence” standard.
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`Misapplication of the Doctrine of Foreign Equivalents
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`37.
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`The USPTO does not contend that ARTESANO has a meaning in English, but
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`rather refused registration of the ARTESANO mark relying on the “doctrine of foreign
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`equivalents.”
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`38.
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`In denying Grupo Bimbo’s appeal, the TTAB erred in its application of the doctrine
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`of foreign equivalents.
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`Case 1:21-cv-00721 Document 1 Filed 06/15/21 Page 10 of 14 PageID# 10
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`39.
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`The doctrine of foreign equivalents can only be applied when there is a literal and
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`direct translation, the term is from a common modern, language, there is no contradictory evidence
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`of other meanings, and the ordinary American purchaser will stop and translate the foreign word
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`into English.
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`40.
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`The Trademark Manual of Examining Procedure (“TMEP”) explains how the
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`doctrine should be applied, noting: “Whether an examining attorney should apply the doctrine of
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`foreign equivalents turns upon the significance of the foreign mark to the relevant purchasers,
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`which is based on an analysis of the evidence of record, including, for example, dictionary,
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`Internet, and LexisNexis® evidence. If the evidence shows that the relevant English translation is
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`literal and direct, and no contradictory evidence of shades of meaning or other relevant
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`meanings exists, the doctrine generally should be applied by the examining attorney.”
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`41.
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`The record in the present case contains numerous translations of the term
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`ARTESANO, including craftsman, craftswoman, handmade, handcrafted, home-produced,
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`produced using traditional methods, traditional, homemade, and artisan.
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`42.
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`Not only does the record contain “shades of meaning” but it also contains
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`completely different meanings, and the doctrine cannot be applied under the USPTO’s own rules.
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`43.
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`Indeed, in the application at issue in the case, Trademark Application No.
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`87/408,465, the USPTO accepted “craftsman” as the English translation of ARTESANO.
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`44.
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`“Craftsman” does not immediately describe an ingredient, function, feature,
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`purpose or use of Applicant’s bread nor is it a generic term for bread.
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`45.
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`The TMEP indicates that the doctrine of foreign equivalents is a mere “guideline,
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`not an absolute rule.”
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`Case 1:21-cv-00721 Document 1 Filed 06/15/21 Page 11 of 14 PageID# 11
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`46.
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`TTAB erred in using the doctrine of foreign equivalents as a bright line rule to
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`trump the evidence of consumer perception, including Applicant’s survey, rather than using it as
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`a guideline.
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`47.
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`The TTAB erred by relying on an academic translation exercise and disregarding
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`the clear evidence of consumer perception in the record.
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`ARTESANO Is Not Used as a Generic Term for Prepackaged, Sliced Bread
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`48.
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`The primary significance of the ARTESANO mark to the relevant public
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`determines whether a term is generic for prepackaged sliced bread.
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`49.
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`ARTESANO is not used by consumers, competitors, or the trade in a generic
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`manner for pre-packaged sliced bread. Instead, the primary significance of ARTESANO in
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`connection with pre-packaged slice bread is as a brand that identifies the source of the goods.
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`50.
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`Grupo Bimbo owns approximately eighteen (18) foreign trademark registrations
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`for ARTESANO for bread in different Spanish speaking countries, including Mexico, and
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`submitted copies of the trademark registration certificates to the USPTO. The ARTESANO mark
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`has been deemed a registrable trademark in these Spanish speaking jurisdictions. These
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`registrations of ARTESANO in Spanish speaking countries illustrates the brand significance of
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`ARTESANO and undercuts the TTAB’s reliance on the doctrine of foreign equivalents as the basis
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`for the position that the mark is generic.
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`ARTESANO Mark is Registrable on the Principal Register
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`51.
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`The ARTESANO mark is inherently distinctive (i.e., arbitrary, fanciful, or
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`suggestive) for the goods in question.
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`52.
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`Inherently distinctive marks are registrable on the Principal Register without a
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`showing of secondary meaning.
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`Case 1:21-cv-00721 Document 1 Filed 06/15/21 Page 12 of 14 PageID# 12
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`53.
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`In the alternative, if it is found not inherently distinctive, the ARTESANO mark is
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`descriptive, and not generic, for the goods in question. A mark is considered merely descriptive
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`if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the
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`specified goods. A merely descriptive mark is registrable on the Principal Register if it is found
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`to have acquired distinctiveness.
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`54.
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`As a result of Grupo Bimbo’s extensive use, promotion and sales under the
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`ARTESANO mark throughout the country, as well as the careful nurturing of the ARTESANO
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`brand, and the strong consumer and industry recognition of the ARTESANO mark, the
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`ARTESANO mark has acquired distinctiveness as a trademark for pre-packaged sliced bread and
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`therefore is entitled to registration on the Principal Register under Lanham Act Section 2(f).
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`55.
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`The TTAB recognized and held that the ARTESANO mark has acquired
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`distinctiveness in the United States for the goods in question.
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`FIRST CAUSE OF ACTION
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`56.
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`Grupo Bimbo incorporates by reference the paragraphs 1 through 55 above as if
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`fully set forth herein.
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`57.
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`Grupo Bimbo requests a finding and a declaration from this Court that the
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`ARTESANO mark is inherently distinctive (i.e., arbitrary, fanciful, or suggestive) for pre-
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`packaged sliced bread and therefore entitled to registration on the Principal Register without a
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`showing of secondary meaning. On this basis, the Director should be directed to pass the
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`application to publication.
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`SECOND CAUSE OF ACTION
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`58.
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` Grupo Bimbo incorporates by reference the paragraphs 1 through 57 above as if
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`fully set forth herein.
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`Case 1:21-cv-00721 Document 1 Filed 06/15/21 Page 13 of 14 PageID# 13
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`59.
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`In the alternative, if the ARTESANO mark is found not inherently distinctive,
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`Grupo Bimbo requests a finding and a declaration from this Court that the ARTESANO mark is
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`descriptive, and not generic, for pre-packaged sliced bread and has acquired distinctiveness, and
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`therefore is entitled to registration on the Principal Register under Lanham Act Section 2(f). On
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`this basis, the Director should be directed to pass the application to publication.
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`PRAYER OF RELIEF
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`WHEREFORE, Grupo Bimbo requests this Court to enter judgment:
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`(a) Reversing the decision of the TTAB, dated April 14, 2021, and directing the Director
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`to pass Grupo Bimbo’s subject application to publication for registration on the Principal
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`Register;
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`(b) Declaring that the ARTESANO mark is inherently distinctive (i.e., arbitrary, fanciful,
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`or suggestive) for pre-packaged sliced bread and therefore entitled to registration on the
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`Principal Register without a showing of secondary meaning;
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`(c) In the alternative, if the ARTESANO mark is found not inherently distinctive, declaring
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`that the ARTESANO mark is descriptive, and not generic, for pre-packaged sliced bread
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`and has acquired distinctiveness, and therefore is entitled to registration on the Principal
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`Register under Lanham Act Section 2(f); and
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`(d) Awarding Grupo Bimbo such other relief as this Court may deem just and proper.
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`DATED: June 15, 2021
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`Respectfully submitted,
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`GRUPO BIMBO S.A.B. de C.V.
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`By:
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`/s/ Clay S. Hester
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`Case 1:21-cv-00721 Document 1 Filed 06/15/21 Page 14 of 14 PageID# 14
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`M.F. Connell Mullins, Jr. (VSB No. 47213)
`cmullins@spottsfain.com
`Clay S. Hester (VSB No. 93051)
`chester@spottsfain.com
`SPOTTS FAIN P.C.
`411 E. Franklin St., Suite 600
`Richmond, VA 23219
`Tel: (804) 697-2000
`Fax: (804) 697-2144
`
`Jeffrey Handelman
`jhandelman@brinksgilson.com
`Andrew Avsec
`aavsec@brinksgilson.com
`Virginia W. Marino
`vmarino@brinksgilson.com
`Emily T. Kappers
`ekappers@brinksgilson.com
`(pro hac vice forthcoming)
`BRINKS GILSON & LIONE
`NBC Tower, Suite 3600
`455 N. Cityfront Plaza Drive
`Chicago, IL 60611
`Telephone: (312) 321-4200
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`Attorneys for Plaintiff
`Grupo Bimbo S.A.B. de C.V.
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`14
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