How Bimbo lost its trademark case - Albuquerque Journal

How Bimbo lost its trademark case

Joel Jacobsen

Forty-some years ago, Leland Sycamore developed a recipe for making at commercial scale something that resembled homemade bread.

To avoid the mass-produced look, the loaves were mass-produced in pairs, in special two-part pans, to be pulled apart after baking, giving each a “breakaway side.”

He called his creation Grandma Sycamore’s Home-Maid Bread. (Yes, really, it’s “maid,” not “made.”) As soon as it launched in Utah, it become a hit. In 1993, Sycamore told the Salt Lake City-based Deseret News: “Southern Utah is going nuts on the stuff. I am surprised at the numbers of people who are buying the bread.”

“I’ve never aggressively sought to have a big company,” Sycamore continued. “It’s just sort of naturally working that way.” The reporter added: “he says he won’t give it up.”

Five years later, he gave it up. He “parted with his interest in Grandma Sycamore’s in 1998,” according to a recent opinion by the federal Tenth Circuit Court of Appeals. In the same year, he opened a new bakery with his son.

Meanwhile — and this plot gets thick, so stay with me — a big national bakery, Interstate Bakeries, known for its Hostess products, entered the Utah market. It began selling something called Grandma Emilie’s bread, which competed with Grandma Sycamore’s. Choose your grandma, Utahans.

Then, in 2012-13, two things happened. First, Interstate (by then rebranded Hostess Brands, not to be confused with the current company of the same name) went bankrupt. At the bankruptcy auction, a Portland company bought the rights to Grandma Emilie’s bread, and eventually hired Leland Sycamore to bake it.

Second, the rights to Grandma Sycamore’s were acquired by a subsidiary of the mammoth Mexican multinational Bimbo Bakeries. Bimbo sells bread under its own name, but also sells under a wide variety of other names, among them Sara Lee, Oroweat and Lender’s Bagels. If you’re reading this over breakfast, there’s a decent chance you’re munching on a Bimbo product.

When the Portland company re-launched Grandma Emilie’s, the people at Bimbo thought its packaging — its “trade dress” — looked familiar. A little too familiar. Bimbo sued for trademark infringement.

The Lanham Act was named for its congressional sponsor, Fritz Lanham, a colorful character even by the standards of Southern politics from a century ago. According to Wikipedia, he was the son of a Texas governor and amateur magician who co-wrote and toured with two musical comedies before launching his political career.

To establish a violation of the Lanham Act, a trademark holder has to establish the likelihood that consumers will confuse two products. Obviously, a direct knock-off is a violation, but changing a single letter isn’t nearly enough to evade trademark protections. The vague term “trade dress” is used to describe the whole gestalt of the product’s packaging.

Bimbo argued that the protected trade dress for Grandma Sycamore’s consisted of the following five allegedly distinctive features: “(1) a horizontally-oriented label; (2) a design placed at the top center of the end; (3) the word ‘White’ in red letters; (4) the use of a red, yellow, and white color scheme; and (5) stylized font below the design outlined in white.”

Interestingly, Bimbo didn’t claim exclusive rights to a bread name beginning with Grandma, though that seems like the most probable source of confusion. Some things are just too generic to trademark, I guess, grandmothers among them.

Whether two products are sufficiently similar that a consumer is likely to confuse them is something that an ordinary person can determine at a glance. It’s question of what the eye registers when scanning the supermarket shelves.

But legal analysis requires breaking down the conceptual steps involved in that nearly instantaneous perception, and so the Tenth Circuit’s opinion contains a sequence of numbered lists of factors to be laboriously considered.

Determining whether the trade dress is distinctive also requires consideration of industry standards, which means looking at the packaging of all the other brands competing in the same market segment.

And that was the insurmountable problem for Bimbo. The packaging for all brands of sliced sandwich bread tend to follow the same basic pattern. They have to, in order to guide browsing customers to the right shelf.

Bimbo lost its case, because, in the court’s words, the five features of its trade dress were “generic and unprotectable.”

The case also involved a claim of trade secret appropriation, but I can’t tell you anything about that because the Tenth Circuit’s discussion is top secret. It consists of lines of text blacked out as by a censor.

The court could have prepared a separate opinion for the parties’ eyes only, but chose instead to publish page after absurd page of blacked-out text, going public and private simultaneously.

Joel Jacobsen is an author who in 2015 retired from a 29-year legal career. If there are topics you would like to see covered in future columns, please write him at legal.column.tips@gmail.com.

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