Grupo Bimbo, S.A. B. de C.V.

Trademark Trial and Appeal Board

Apr 23, 2008

No. 78859187 (T.T.A.B. Apr. 23, 2008)

Mailed:
23 April 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Grupo Bimbo, S.A. B. de C.V.1
________

Serial No. 78859187
_______

Russell N. Rippamonti of Fish & Richardson P.C. for Grupo
Bimbo, S.A. B. de C.V.

Robert Clark, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Walters, Holtzman, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 11, 2006, applicant Grupo Bimbo, S.A. B. de
C.V. applied to register the mark TORTILLA BREAD (in
standard character form) on the Principal Register for
goods identified as “food products, namely flat bread” in
Class 30. The application (Serial No. 78859187) is based

1 By change of name from Grupo Bimbo, S.A. de C.V. See Reel and
Frame 3500/0952.
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 78859187
2
on applicant’s allegation of a bona fide intention to use
the mark in commerce.
The examining attorney has refused to register
applicant’s mark on the ground that the mark, when applied
to the goods, is either merely descriptive or, in the
alternative, deceptively misdescriptive. 15 U.S.C.
§ 1052(e)(1). After the examining attorney made the
refusal final, this appeal followed.2
The examining attorney argues that “TORTILLA BREAD is
a recognized term for a type of bread” and if it is not a
recognized term, “the combination results in a composite
that is itself descriptive.” Brief at unnumbered pp. 3-4.
The examining attorney also argues that:
In the present application, applicant’s product does
not fit any of the standard or traditional recipes for
a TORTILLA BREAD. As such, applicant’s goods are not
technically a TORTILLA BREAD. Nevertheless, the
examining attorney asserts that it’s very plausible
that applicant’s flat bread would be perceived as a
TORTILLA BREAD or at least a simulated version of one,
based on the usage of the term in the bread industry
and known to consumers based on the computerized
evidence from GOOGLE. Thus, the mark is at least
deceptively misdescriptive.

Brief at 12.

2 While applicant’s brief was mailed in a timely manner, it was
untimely received in the Office because it was not properly
addressed. Nonetheless, inasmuch as applicant has explained this
clerical error, we will consider its appeal brief. TBMP
§ 1203.02(a) (2d ed. rev. 2004).

Ser. No. 78859187
3
In response, applicant argues that the “terms
comprising Applicant’s mark are suggestive of Applicant’s
goods. A tortilla is ‘a thin round of unleavened cornmeal
or wheat flour bread usually eaten hot with a topping or
filing (as of ground meat or cheese)’… Applicant’s mark is
intended to suggest the mobility of a tortilla and the
thickness and leavened quality of bread.” Brief at 3.
Furthermore, “Applicant’s mark suggests the pliability of a
tortilla but consumers are not likely to believe that the
goods are tortillas.” Brief at 4.
When the refusal was made final, applicant filed this
appeal.3
“A term is merely descriptive if it immediately
conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is
used.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007). See also In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). To be
merely descriptive, a term need only describe “a
significant feature or characteristic” of the goods or

3 We sustain the examining attorney’s objection to applicant’s
untimely submission of pictures of its goods that it attached to
its brief. 37 CFR § 2.142(d). See also In re First Draft Inc.,
76 USPQ2d 1183, 1192 (TTAB 2005) (“Submission of the TARR
printout with its appeal brief, however, is an untimely
submission of this evidence”).
Ser. No. 78859187
4
services. In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1781 (Fed. Cir. 2003). See also Meehanite
Metal Corp. v. International Nickel Co., 262 F.2d 806, 120
USPQ 293, 294 (CCPA 1959). Descriptiveness of a mark is
not considered in the abstract, but in relation to the
particular goods or services for which registration is
sought. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978) (“Appellant’s abstract test is
deficient – not only in denying consideration of evidence
of the advertising materials directed to its goods, but in
failing to require consideration of its mark ‘when applied
to the goods’ as required by statute”).
The examining attorney has submitted two recipes from
the internet for TORTILLA BREAD to support his arguments.
These references show that the term “Tortilla Bread” can
refer to different bread products that have the
characteristics or features of tortillas.
Title: Tortilla Bread…
2¾ cup All purpose flour
1 T Sugar
1 pk Dry yeast
2 ts Salt
2 c. Warm Water
2 c. White cornmeal (masa hanna)

www.ocbtracker.com

Tortilla Bread
- 3 medium sized flour tortilla shells
- ½ tsp. garlic salt
Ser. No. 78859187
5
- 1 tsp. mexican oregano
- 2 tbs. vegetable oil
- 1 tsp. parmesan cheese
- pinch cayenne pepper

http://www.geocities.com/smartcook/

The examining attorney also submitted the following
definitions and arguments with its final Office action
(second page, footnotes omitted):
Applicant describes its goods as flat bread.
Flatbread is defined as: Any of various breads made
from usually unleavened dough and baked in flat,
often round loaves.4 This would include tortilla
bread. Tortilla is defined as: A thin disk of
unleavened bread made from cornmeal or wheat flour,
baked on a hot surface, and usually served topped
with or rolled around beans, ground meat, or cheese.

We also take judicial notice of the following definitions
of “tortilla.”5
A thin, round, unleavened bread prepared from cornmeal
or sometimes wheat flour, baked on a flat plate of
iron, earthenware, or the like.
The Random House Dictionary of the English Language
(unabridged) (2d ed. 1987).

A round thin unleavened bread, usu. made from cornmeal
or flour and served hot with toppings of ground meat
or cheese.
Webster’s II New Riverside University Dictionary
(1984).

4 We add a similar definition of “flat bread” as “any of various
often unleavened breads baked in round, flat loaves or cakes, as
those eaten in India, the Middle East, and Italy.” The Random
House Dictionary of the English Language (unabridged) (2d ed.
1987).

5 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser. No. 78859187
6
It is clear from these definitions that the
“tortilla” is a bread. Therefore, while perhaps not as
commonly used together as “white bread” or “rye bread,”
there is nothing incongruous about the term “Tortilla
Bread.” Furthermore, applicant’s goods are flat breads
and tortillas are described as thin, round, unleavened
bread prepared from cornmeal or sometimes wheat flour,
baked on a flat plate. Thus, tortillas would be included
within the definition of applicant’s flat breads.
Therefore, tortillas can accurately be described as a flat
bread and the term TORTILLA BREAD would at the very least
be merely descriptive for tortilla flat breads.
However, applicant argues (Brief at 3) that its mark
is not descriptive apparently because it assumes its
actual goods are more limited than its identified goods.
Applicant’s mark suggests the roundness, pliability
and manipulability of a tortilla, without being a
tortilla; Applicant’s mark suggests the fluffy
thickness and sink-your-teeth-into depth of bread
without being bread.

In effect, applicant maintains that its actual goods
are not tortillas but rather a food product that combines
characteristics of tortillas and leavened bread. Even if
applicant’s goods were to be limited in this manner, we
still conclude that term TORTILLA BREAD would be merely
Ser. No. 78859187
7
descriptive of a tortilla-like product that has a more
traditional bread-like thickness.
When purchasers would see the mark TORTILLA BREAD used
with a tortilla-like, leavened bread product, they would
immediately understand that the product has the combined
characteristic of tortillas and leavened bread. In re
Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (“The
only rational, logical reaction by a normal person to the
term ‘BREADSPRED’ when used in association with jellies and
jams would in our opinion be a spread made for bread”).
See also In re Bongrain International (American) Corp., 894
F.2d 1316, 13 USPQ2d 1727, 1728 (Fed. Cir. 1990) (“The
evidence of record clearly indicates that ‘BABY BRIE’ is
merely descriptive of the product and hence is not
registrable. Addition of the modifier ‘baby’ signifies
simply small size”); Cummins Engine Co., Inc. v.
Continental Motors Corp., 359 F.2d 892, 149 USPQ 559, 561
(CCPA 1966) (“We think ‘turbodiesel,’ to be naturally and
adequately nominative of engines having exhaust driven
turbine superchargers”); and In re Tekdyne Inc., 33 USPQ2d
1949, 1952 (TTAB 1994) (“Consequently, when applied to
applicant's surgical clamps, the term ‘MICRO-RETRACTOR’
directly describes, without conjecture or speculation, the
Ser. No. 78859187
8
nature, function or use of applicant's goods, namely, that
the product is a small retractor”).
In this case, there is nothing unique or incongruous
about the combined term TORTILLA BREAD. Applicant has
simply combined the words that best describe its specific
bread product, i.e. that its bread has some of the
characteristics of tortillas.
Based on this record, we conclude that applicant’s
mark is merely descriptive when used with applicant’s goods
inasmuch as applicant’s mark identifies a feature or
characteristic of applicant’s goods, i.e., they are bread
products that are similar to tortillas.
Decision: The examining attorney’s refusal to
register the term TORTILLA BREAD on the ground that the
mark is merely descriptive for food products, namely flat
breads is affirmed.6

6 Inasmuch as we have found that the mark is merely descriptive
both as to the goods described in the application and as to the
goods as applicant refers to them in its papers, we do not reach
the alternative, deceptively misdescriptive refusal. Applicant
has not argued that its mark would not be used on a product that
did not have the characteristics of tortillas.