According to a lawsuit* filed vs Bimbo Bakeries USA and Arnold Sales Co (acquired by Bimbo in early 2009), Outer Aisle Gourmet learned in March this year that its cauliflower sandwich thins had been delisted by Amazon following complaints by Bimbo accusing Outer Aisle of trademark infringement.
Outer Aisle acknowledges that Bimbo subsidiary Arnold Sales Company – which has been selling a wheat-based sandwich thins product for some years - secured a registered trademark for ‘sandwich thins’ back in 2009, but says Bimbo’s “failure to police” this trademark over the years Outer Aisle has been selling cauliflower-based sandwich thins (2014-2021) meant Bimbo had effectively abandoned its rights to the trademark.
Outer Aisle: Bimbo has not policed its trademark for years
Founded in 2013, Outer Aisle – which has factories in Goleta and Ventura, CA - has been selling cauliflower-based pizza crusts and sandwich thins made from fresh cauliflower, parmesan cheese, eggs, and nutritional yeast since 2014.
Noting Bimbo’s “long history of acquiescence” over Outer Aisle’s use of the term sandwich thins in recent years, Outer Aisle said: “Defendants’ failure to police its SANDWICH THINS mark caused the public to understand ‘sandwich thins’ is generic for thinly sliced sandwich bread.”
In early 2021, however, as Bimbo Bakeries USA teased its own ‘veggie herb’ sandwich thins under the Oroweat brand on its website, and filed a new trademark application for cauliflower-infused sandwich thins, it filed an online complaint with Amazon accusing Outer Aisle of infringing its intellectual property, prompting Amazon to delist some of Outer Aisle's products.
In a lawsuit filed in late March accusing Bimbo of unfair competition under the Lanham Act, Outer Aisle said that it was losing money every day as a result of Bimbo's hardball tactics.
“Every day that the subject Amazon listings remain deactivated, Outer Aisle is suffering quantifiable lost sales of at least 10-20k per day.”
In an amended complaint filed in April, Outer Aisle said Bimbo: “cannot have experienced any trademark infringement, the benchmark of which is consumer confusion, because their competing product is not in commerce yet… and it is not even being sold on Amazon.”
It further alleged that Bimbo had instructed “at least one of Outer Aisle’s brick and mortar distributors” to remove Outer Aisle’s sandwich thins earlier this year in a cease and desist letter.
‘A classic example of Big Food using its vast resources to try to push its way into a market segment it did not create’
Outer Aisle Gourmet founder and CEO Jeanne David – who is framing this as a ‘David vs Goliath’ case - told us the legal action was necessary to “reverse Bimbo’s surprise, behind-the-scenes ambush of Outer Aisle’s Amazon store causing Outer Aisle’s sandwich thins listings to be taken down, while Bimbo was, at the same time, introducing its own cauliflower sandwich thins product under its Oroweat label.
“Outer Aisle’s Complaint explains how Bimbo’s tactics are a classic example of Big Food using its vast resources to try to push its way into a market segment it did not create or even recognize until Outer Aisle started succeeding, in this case, the low-carb plant-based baked goods segment created by Outer Aisle, which Bimbo is trying to aggressively enter with a traditional high-carb bread product with several artificial ingredients."
She added: “We are not intimidated by Bimbo and its army of lawyers. If Bimbo had an enforceable right in what we allege is an old and now generic trademark for the word, “thins,” used with bread, they would have taken some action in the past eight years to prevent Outer Aisle’s use of cauliflower sandwich thins.”
Bimbo Bakeries USA: Outer Aisle case is nonsensical' and 'contradictory'
Bimbo has not responded to emailed requests for comment from FoodNavigator-USA, but argued in court filings that it had no choice but to contact Amazon given Outer Aisle’s “willful infringement” of its trademark.
In a motion to dismiss the case filed in June, attorneys for Bimbo Bakeries USA said Outer Aisle’s arguments that it has common law rights to use the term sandwich thins were “nonsensical” and “contradictory.”
Meanwhile, Outer Aisle could not plausibly argue unfair competition under the Lanham Act when it filed its complaint in March as Bimbo’s Oroweat cauliflower sandwich thins were not (yet) on the market at this time, added the attorneys.
Cease and desist letters...
So what do legal experts make of the case?
Kevin Bell, partner at law firm Arnall Golden Gregory LLP (which is not representing either party) and a specialist in intellectual property law, told FoodNavigator-USA that, “As it currently stands, I would agree with the defendants’ [Bimbo Bakeries] arguments on the Lanham Act claim, which they have moved to dismiss. I don’t think Outer Aisle has properly pled its case sufficiently to maintain that claim. It seems to incorrectly (or unpersuasively) state that defendants have not done enough to police their trademark for sandwich thins over the years.
“However, they then identify three to four times the defendants sent them or their distributor cease and desist letters."
Outer Aisle, in turn, says its products had been on the market for years before Bimbo started alleging trademark infringement, arguing that Bimbo's "almost six-year delay in enforcing any trademark rights in sandwich thins exceeds the four-year statute of limitations under Cal. Civ. Proc. Code § 338(d), which federal courts in California use to calculate the laches period for trademark infringement."
Bell responded: "Because the Lanham Act does not have a defined statue of limitations, courts look to an analogous state statute and its statue of limitations period. While I don’t believe the California Code cited by Outer Aisle supports its request for a four-year statute of limitations for its laches defense, I would agree that four years is the appropriate time period to use."
An uphill battle?
But he added: "I still think Outer Aisle has an uphill battle to succeed on its argument that laches applies. The Court’s test for this defense is very fact intensive and often not addressed until the later stages of a litigation. I don’t find Outer Aisle’s laches defense to be very persuasive as currently presented to the court. It seems they prefer to argue that 'sandwich thins' is an 'old' phrase and generic at this point."
Attorney: ‘Bimbo has been using the mark since 2009 and under trademark law, it is considered incontestable’
Bell added: “One of Outer Aisle's other claims is to try and cancel defendants’ ‘sandwich thins’ trademark. Interestingly, Outer Aisle has been expressly abandoning its own trademark applications for such marks as ‘Cauliflower Sandwich Thins’ and ‘PlantPower Sandwich Thins.’ They may be trying to bolster their argument that ‘sandwich thins’ is generic."
Ultimately, he said, "it doesn’t really matter. The defendants [Bimbo] have been using the mark since 2009 and under trademark law, it is considered incontestable. Clearly, Bimbo has had trademark rights around this phrase for several years. On its face, it appears Bimbo has taken reasonable steps to protect its mark.
"As a intellectual property litigator, I don’t find the repetitive references by Outer Aisle to the virtues of cauliflower made by a small company over processed foods made by a larger company to move the needle in a lawsuit regarding federal trademark law. Federal District Court judges usually read past the passion and instead, get to the facts and apply the law."
That said, he noted, “There is still a lot to do in this case given many of the facts being pled. So I think this sits in the category of ‘stay tuned.’ However, if nothing else, this case is a strong example of the power of intellectual property and Amazon.”
*The case is Outer Aisle Gourmet LLC v Bimbo Bakeries USA, Inc; Arnold Sales Company, LLC, and Does 1-10 filed in the Central District of California, western division Case 2:21-cv-02599. Outer Aisle alleges unfair competition under the Lanham Act, and seeks declaratory judgment of trademark non-infringement, and the cancelation of Bimbo's sandwich thins trademark.
WATCH: ‘We took off like a rocket ship…’ Cauliflower-powered Outer Aisle Gourmet gears up to open third facility
Outer Aisle Gourmet – which makes sandwich thins, pizza crusts, and wraps using fresh cauliflower as the #1 ingredient – is gearing up to open its third manufacturing facility to meet growing demand for its grain-free, low-carb products.
