Can a family name, like Gallo, be protected? And what are the limits of such protection? People’s last names, or surnames, present a thorny issue in trademark law. Family names can be protected, (the short answer is yes), but under what circumstances?
People’s last names, also called surnames, present a thorny issue in trademark law. Thus, the subject of this article is whether such family names can be protected, (short answer: yes), and under what circumstances. A natural corollary is what limits exist on such protection? These issues seem to come up quite often before the courts and in the Patent and Trademark Office. Perhaps it is because many business owners like to use their family names, either as part of the corporate name or trade names, or as a separate trademark.
I have had the privilege of representing some large corporations which are based on a family name, including, to name a few, MCKESSON Corporation (formerly FOREMOST MCKESSON) in San Francisco, MARTINELLI’S apple juice (S. Martinelli & Company), the name of my favorite apple juice, FOSTER FARMS (Foster is the family name), KAISER PERMANENTE, and SEE’S CANDIES, based on Mary See whose picture still appears on many products. In fact, it was a recent trip to meet with one family about their business which prompted me to think that this might be a good topic. Many businesses struggle with the use of the surname of the owner, and there are a lot of misconceptions and myths in existence. One of them goes like this: We can never protect our family name in a business setting, others with the same name can always use their name. Wrong!
First of all, surnames can be federally registered as trademarks in the United States Patent and Trademark Office, provided that they are not “primarily” “merely” a surname, or, even if they are, they have become distinctive or associated with a particular company or its products. The laws in many foreign countries are similar, although in some countries it can be quite difficult to register family names.
The first step should always be a search to see if someone else, including someone with a similar or the same family name, is already using or has already registered that name as a mark. For example, if a new business owned by a named John Smith, wanted to start a cough drop company and call it SMITH BROTHERS, look out! One individual apparently changed
his last name to HYATT, and used that name for legal services, ultimately doing legal battle with the HYATT hotel chain over the use of this somewhat uncommon surname. And whether a family name is common or rare is a factor in how well and under what circumstances it will be protected.
A few years ago, the highest federal appellate court in California, the Ninth Circuit, discussed the rules of the family name game in a case involving the famous GALLO family, which, the Court mentioned, was the best-selling brand of wine in the United States. The older brothers, Earnest and Julio Gallo, owned GALLO Winery and used the GALLO name as a trademark for their wines. The younger brother, Joseph Gallo-and his son Michael Gallo had gone into the cheese business using the GALLO name as his trademark. Problems, and expensive
litigation, eventually erupted. The moral of this case, discussed below, is that not only
strangers with the same name can sometimes be prevented form using their family name in a competing business, but even other family members may be stopped in a non-competing business, depending upon the circumstances. Many courts have ruled that adding a first name, such as Joseph to GALLO, may not be sufficient to avoid confusion in the marketplace.
The court in the GALLO case observed that it arose “out of a tortuous family history apparently involving sibling rivalry on a grand scale. The relevant facts date back nearly a century.” Of course, family name disputes arise in far less grandiose situations, as mundane as when John Jones wants to start a printing company called JONES Printing. But in Gallo, the father, Joseph Gallo, Sr., after having immigrated to Northern California in the early 1900s, apparently made the mistake of having three children, who later became the parties to this lawsuit. According to the Court, as this tragic story goes, the father, who “had a brush with the law for bootlegging during Prohibition,” later took his own life and that of his wife due to the drop in grape prices caused by The Great Depression. The two older brothers then took over the business in which the younger brother, only 13 at the time his parents died, was not involved.
Later, in 1979, the GALLO Winery sued another business which used GALLO SALAME for selling Salami and other prepared meat products and sliced cheese. Nobody in the Gallo Salame company had the name of Gallo, but the company had the name of Gallo, but the company registered GALLO as part of its trademark in 1970. Utilizing a common settlement technique in trademark cases, Gallo Salame assigned its federal registration that included GALLO to the GALLO Winery, as part of the settlement of the suit, and GALLO Winery in turn “licensed” Gallo Salame to continue to use the GALLO SALAME trademark for the same products. A “win-win” situation. Apparently the trial court believed that many consumers believed that Gallo Salame’s cheese products were “put out by the same company that put out” GALLO wine, that is, infringed on GALLO Winery’s rights. Rack up one court battle in favor of protecting the family name, even for a different business, not run by an individual bearing that family name.
GALLO Winery did not object when brother Joseph used his full name, Joseph Gallo, for vineyards and a dairy product with the name GALLO CATTLE COMPANY, but they were not happy when he expanded into sales of cheese to consumers under the trademark JOSEPH GALLO. Apparently GALLO SALAME was not happy about this either. Ultimately the trial judge ruled that Joseph Gallo could not use GALLO for retail cheese at all or in advertising, because such usage infringed on the GALLO trademark for wines and unfairly competed with GALLO Winery and “diluted” its rights.
Some of the ground rules discussed by the appellate court are that one does not have an absolute right to use one’s personal name as a trademark. Nonetheless, court are “reluctant” to stop an individual from using his or her own name in a business if, and it is an important IF, that individual has not attempted to confuse the public by using that name. Even if the individual has not attempted to cause confusion or capitalize on another’s trademark, his or her use may still be limited by a carefully crafted injunction designed to balance the ability to use one’s own name against the risk of public confusion from such usage. The court held that this standard had been met since Joseph Gallo could still use JOSEPH GALLO on wholesale, but not retail, sales of cheese, an as a trade name, including Gallo Cattle Company. However, the Court did narrow down the scope of the injunction to the extent that it might preclude use of GALLO for any product, ruling that this was too broad, and could not be determined if and when the GALLO name was used on products other than cheese and wine.
Personal names, to be protected according to the court, must have “secondary meaning;” that is, they must be associated with a particular source or sponsor by consumers. GALLO was determined to be a “strong” trademark due to the extensive advertising, promotion and long usage. Thus, a family name can become a strong, protectable trademark, and under the right circumstances, even a family member can be prevented from using his or her own.