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Package it up - Bakery’s trade dress claim falls

August / September 2022 IP Newsletter

When designing product packaging, you generally want it to clearly identify your product. In Bimbo Bakeries USA, Inc. v. Sycamore, the U.S. Court of Appeals for the Tenth Circuit has ruled that a baking company’s trade dress used elements so customary in the industry that it was generic and not subject to trademark protection under the federal trademark law known as the Lanham Act.

Recipe for litigation

Bimbo Bakeries owns, makes and sells Grandma Sycamore’s Home-Maid Bread, a popular brand in Utah. It obtained the right to the recipe from a baker named Leland Sycamore, who later opened his own bakery.

U.S. Bakery, a competitor of Bimbo, hired Sycamore’s bakery to make another homemade bread called Grandma Emilie’s. After their relationship soured, U.S. Bakery developed a new formula for Grandma Emilie’s and created packaging that resembled Grandma Sycamore’s packaging.

Bimbo sued U.S. Bakery on multiple grounds, including trade dress infringement. The district court dismissed that claim before trial and Bimbo appealed.

Infringement ingredients

Trade dress refers to an object’s total image and overall appearance. It can include features such as size, shape, color or color combinations, texture, graphics, and even particular sales techniques.

To establish trade dress infringement, a plaintiff must show:

Trade dress is inherently distinctive if its intrinsic nature identifies its source. Trade dress that isn’t inherently distinctive can nonetheless gain legal protection if it has developed secondary meaning — in other words, if, in the minds of the public, the primary significance of the trade dress is to identify the product’s source, rather than the product itself.

Courts use five categories when determining whether trade dress is inherently distinctive: fanciful, arbitrary, suggestive, descriptive and generic. The first three are entitled to legal protection; descriptive trade dress can acquire protection through secondary meaning. Generic trade dress isn’t protectable.

Slicing analysis

As the appeals court noted, where it is industry custom to package products in a particular manner, trade dress in that style is generic. Ultimately, this principle doomed Bimbo’s appeal.

The court agreed with the district court that the trade dress for Grandma Sycamore’s product was customary for homemade bread products. Bimbo’s competitors in that sector all tended to use a horizontal label with a design at the top center of the end; the word “white” in red letters; and a red, yellow and white color scheme. They generally also used a stylized font below the design, outlined in white.

The court concluded, therefore, that Bimbo’s purported trade dress was generic and not protected. It affirmed the district court’s judgment in favor of U.S. Bakery.

Not totally cooked

All hope wasn’t lost for Bimbo following the court’s ruling. The Tenth Circuit concluded that Bimbo “may well have a protectable Grandma Sycamore’s trade dress.” Its trade dress claim in this case, however, was too broad and extended far beyond its product’s more specific attributes.

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