Gallo’s humor (or lack thereof)
E & J Gallo, the enormous, privately held wine company, is well-known (notorious?) for protecting their brand. Ernest and Julio sued their own brother Joseph in 1986 to prevent him from marketing his cheese as “Joseph Gallo.” They also sued unrelated East Bay company, Gallo Salume Inc., to limit the number of their meat products that could carry the name.
A couple of weeks ago, E & J Gallo cranked the lawsuit-o-meter up a notch: They sued a Seattle gourmet food store for selling a Spanish pasta called Gallo. On the forums of the Seattle Times, Steve Winston, the owner of The Spanish Table in Pike Place Market, comments that Pastas Gallo dates from 1874 while E & J Gallo dates from 1933.
In Ernest Gallo’s obituary, the Times of London further summarized Gallo’s legal actions:
In 1990 the company successfully sued the Gallo Nero wine consortium of Chianti who had used the word “gallo†(cockerel) on their bottles. Ten years later the brothers took the Chianti wine-makers to court again over their domaine name.
In the meantime they put pressure on a small domaine called Santa Marcellina in Chianti because they had a “Marcellina†trade-mark among the many they had patented. In 1994 they attacked a Mexican company called Pasatiempos Gallo. In 2002 it was the turn of a lady potter in Texas, who used the word “gallo†because she made ceramic representations of roosters. Gallo himself made no excuses for his behaviour, saying: “We don’t want most of the business. We want it all.â€
While it’s no doubt important for mark holders to protect their marks, there’s no point in being a cockerel about it. The situation smacks of Monster Cable’s overreaching and suing a mini-golf company and engendering consumer ill will. Perhaps we should take a page from Gizmodo’s book and come up with a list of items that Gallo legal eagles might want to put in their sight:
Pico de gallo salsa
The Year of the Rooster
France
Rossignol skis
Coq au vin
Le coq sportif
Cockfights
On May 11th, 2009 at 8:42 am ,AC wrote:
one thing for sure, DrV, you’re keeping your carbon imprint low on this post by recycling an old and very tired story.
On May 11th, 2009 at 10:41 am ,alex wrote:
In Argentina, I always buy a rice called Arroz Gallo, now I´m afraid they may change the name 😉
On May 11th, 2009 at 1:11 pm ,Dylan wrote:
Am I to understand that anyone who also shares the last name “Gallo” cannot use it for their own business pursuits?
On May 11th, 2009 at 2:23 pm ,Erica Lauesen wrote:
I have one comment….”Land of the free…” Doesn’t sound like it.
On May 11th, 2009 at 6:53 pm ,Kathy Sullivan wrote:
I believe there is something inherently wrong when anyone or business can force another to not use a name not because they are right but because they have enough money to keep the issue in court so long that the smaller business cannot continue to pursue the legal issues. In 2007 we visited a winery that was forced by another winery in another country to change its name. The small winery’s lawyers said that while they were in the “right” the other winery could keep them in court for months and perhaps years. The small winery changed their name. I realize that there could potentially but not likely be confusion with using the same name, but the smaller winery was in the right. Recently, we were visiting another winery and I asked about the logo. This winery also had to change their logo because another winery felt that it was too similar to theirs – the only similarity was because it was foliage – not the same foliage though.
When I heard about Gallo’s issue with the pasta in Seattle, I was astounded. How can one company be so egotistical that they think they can control the use of the Gallo name? It’s certainly understandable that Gallo would not want another winery or wine-related item to be named Gallo. However, what does pasta made in Spain and sold in Seattle have to do with E & J Gallo?
Is there a lawyer out there who can explain this so it all makes sense?
On May 11th, 2009 at 7:55 pm ,Lars wrote:
how about cocktails?
On May 11th, 2009 at 9:12 pm ,Chris C wrote:
Great post Tyler, thanks!
On May 11th, 2009 at 9:20 pm ,Steve Winston wrote:
E&J Gallo Winery’s Trademark Department also peckishly went after Atlanta school teacher Celeste LeTard Williams in 2007 because her art work featured a painting of a rooster juxtaposed with the Spanish word gallo based on a traditional Mexican loteria card. They insisted she retitle the rooster gallito. Their action effectively stripped Celete’s Spanish vocabulary language of a noun.
But since they have the money, the cock crows at dawn.
Steve Winston
Owner, The Spanish Table
On May 11th, 2009 at 9:45 pm ,Audrey wrote:
This reminds me of when McDonalds started suing Scottish citizens whose businesses used their own Surname. Then they started suing anyone with the Mc or Mac before it. So one could get sued by both companies by naming something McGallo!
On May 11th, 2009 at 10:10 pm ,Dan wrote:
Didn’t Duckhorn do essentially this same thing, including going after a Long Island winery that had “Duck” as part of its name? As I recall, the New York winery was also older than its litigious namesake.
On May 12th, 2009 at 7:49 am ,corkdork wrote:
This sounds kind of like the LayerCake/Cupcake lawsuit (Jack Cakebread should sue ’em both!).
Heck, from what I recall, Donald Trump once successfully sued an Indian restaurant in Atlantic City over the use of the name “Taj Mahal.” Trademark protection is a nasty, nasty business.
On May 12th, 2009 at 8:51 am ,Dante wrote:
What you fail to mention in your article is the issues and legalities surrounding trademarks. One of the main issues with a trademark is that you must vehemently and aggressively fight for your trademarks in order to protect them otherwise you make yourself very susceptible to losing your marks for an obvious infringement down the line. I suggest you interview a trademark attorney on this and they will show you that it’s not the Gallo’s that are being goofy it is the trademark law that is goofy. In order to preserve and protect your trademark you must act in a consistent and timely matter otherwise in time you will lose your trademark. Of course, the depth and understanding of issues is certainly lost in today’s world of headlines and blogs when anyone can just gloss over a story and come to an “educated” conclusion. Thanks for taking part in the dumbing down of society Dr. Vino.
On May 12th, 2009 at 9:04 am ,Mark Ashley wrote:
Dante, how does an artist who makes pottery roosters damage the Gallo brand? Is that really an infringement of Gallo’s intellectual property?
Since you’re name is Dante: Perhaps the heirs of the author of Inferno should sue you and everyone with the same name for using their brand? Absurd, right? How would that be any different from what Gallo is doing here?
On May 12th, 2009 at 9:48 am ,Joel Goldberg wrote:
It isn’t only the big guys who play this game. Here in Michigan, where we have lots of spare shekels to lavish on lawyers, Leelanau Cellars squabbled in court for years over the use of a Peninsula’s name by Chateau de Leelanau. And an ongoing case pits Chateau Grand Traverse against Grand Traverse Distillery over naming rights for a bay that’s bigger than the both of ’em.
On May 12th, 2009 at 1:17 pm ,Marvin James wrote:
Uh…
“Marque”… not “Mark”.
You are an idiot.
On May 12th, 2009 at 2:34 pm ,Esteban wrote:
Marvin, who’s “Marque”? Or are you referring to trademarks (or marques?)
It’s so hard to keep track of whom you’re actually insulting.
On May 13th, 2009 at 12:58 am ,Joey wrote:
Gallo issue a similar warning to a Spanish winery that had a very small production white wine named Gallocanta (Rooster cackle/sings). They had to change the name to Que lindo cacareaba (How beautiful it cackled).
What a waste of time and money!
On May 19th, 2009 at 8:29 am ,bikeman wrote:
What about Gallo, the national beer of Guatamala? It even has a rooster on the label.
On May 19th, 2009 at 11:37 am ,tish wrote:
There is a shop called Gallo Nero in Manhattan. Big Chianti-like black rooster in red circle sign handing out front. 54th street? Think it may even be a wine bar. Pray for their safe passage…
On May 19th, 2009 at 3:35 pm ,Victor Honoré wrote:
Interesting to see what will happen with their relationship with the Catena winery, who had given Gallo US distribution rights of their Alamos brand and a year earlier Gallo had agreed to also distribute Catena´s Escorihuela Gascon brand.
Now that Catena announced today that they are moving to NJ importer Winebow, it will be interesting to see where this leaves Gallo. The press release did not announce which brands were moving over to Winebow.
The clear loser here has to be Catena´s old importer, Billington.
On May 23rd, 2009 at 2:39 am ,Rick wrote:
I found Tish’s comment regarding a “Gallo Nero” shop in Manhattan of interest. I teach a trademark course using a 1991 case in which E&J stopped the US use of “Consorzio del Gallo Nero” by an Italian organization promoting Chianti Classico. If that Manhattan “Gallo Nero” is in any way connected with alcohol, they better have a good trademark lawyer on speed-dial.
On May 23rd, 2009 at 7:32 am ,Kathy wrote:
Rick:
As you teach a trademark course, you must have an excellent understanding of all the issues involved. Since it is not wine related can Gallo legally stop the store in Seattle from selling Gallo pasta?
On May 23rd, 2009 at 7:41 am ,Joel Goldberg wrote:
Kathy, it probably bears repeating that these battles frequently don’t revolve over who’s in the legal right, but who has the deeper pockets to support years of litigation. That’s the American Way — and why you’ll so often see the small guy fold at the first sight of a “lawyer letter” from someone like Gallo.
On May 31st, 2009 at 5:03 am ,Warren Edwardes wrote:
It is worth repeating the message that trademark law protects those with the large legal budget. Defending a trademark against a big budget infringer can cost a lot of money.
I have found that a small firm with a trademark (in The UK) needs to put quite a bit of money on the table before considering defending a trademark infringement by large firm with a large legal budget.
From this case it looks like the solution is good PR and the use of the media.
I am sure that very many more people now know of plucky Seattle based Spanish Kitchen
On June 1st, 2009 at 3:38 pm ,El Jefe wrote:
Indeed it is a money issue. At the other end of the spectrum is my winery with an established brand name that is now being infringed by a very large winemaking company that didn’t even bother to file for a trademark. All I can really do is try to out-brand them.
On June 25th, 2009 at 7:35 am ,rooibos wrote:
Here in South Africa we have an oufit called Laugh-it-off that delights in printing T-Shirts with tweaked logos ridiculing big companies like Gallo. They then get sued and the court case is given huge publicity in the press, to the detriment of the big companies. Of course Laugh-it-off has no assets so even if damages are awarded the big loser will be the big company. I suggest you fellows do the same and hit Gallo where it hurts – their pride and their reputation.