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Trademark law offers greater protection to marks that are strong, i.e., distinctive. The strength of a mark is determined by its placement on a continuum of marks from generic, afforded no protection; through descriptive or suggestive, given moderate protection; to arbitrary or fanciful awarded maximum protection. While personal names used as trademarks are not inherently distinctive, they are treated as strong marks upon a showing of secondary meaning. Secondary meaning is the consumer's association of the mark with a particular source or sponsor.
Plaintiff E. & J. Gallo Winery ("the Winery"), owned by Joseph E. Gallo’s older brothers, Ernest and Julio Gallo, initially brought a trademark infringement action against defendant Joseph E. Gallo for the use of the name GALLO on retail packages of cheese. Defendant counterclaimed against the Winery and Ernest and Julio, asserting that he had inherited a one-third ownership interest in the Winery (and thus its trademarks) from their parents who died in 1933. The district court granted summary judgment in favor of Ernest and Julio on the counterclaims, granted judgment following a bench trial in favor of the Winery on the trademark claims, and permanently enjoined Joseph from using the GALLO name as a trademark on retail packages of cheese and in advertisements. On appeal, Joseph sought reversal of the judgments, but challenged as well the scope of the injunction.
The court examined eight factors in deciding the likelihood of consumer confusion: (1) strength of plaintiff's mark; (2) proximity or relatedness of the goods; (3) similarity of the sight, sound, and meaning of the marks; (4) evidence of actual confusion; (5) similarity of marketing channels; (6) type of the goods and degree of care consumers exercise; (7) intent of the defendant; and (8) likelihood that the parties would expand their product lines. The court found that plaintiff's mark was very strong and that defendant had intentionally tried to appropriate the strength of that mark for a complimentary product. The injunction was narrowly drawn, however, to allow defendant to use his name in print ads where the distinctive style of his trademark was apparent but to prohibit aural advertising.