E. & J. Gallo Winery v. Grenade Beverage LLC, 1:13-cv-00770

Plaintiff E. & J. Gallo Winery owns the federally registered GALLO trademark for wines; Defendant Grenade Beverage LLC markets EL GALLO energy drinks.
The parties cross-moved for summary judgment; hearing occurred August 13, 2014; magistrate judge recommended partial grant to plaintiff and denial to defendant.
Gallo asserts trademark infringement, false designation of origin, unfair competition, and related claims under California law; Defendant disputes ownership/validity of marks and market relationship.
undisputed facts show GALLO marks are widely used and promoted, with extensive advertising and nationwide distribution; El Gallo products were marketed as energy drinks and mixers in various states.
Court analyzes likelihood of confusion under Sleekcraft factors and finds GALLO mark strong and similar to EL GALLO, with related beverage products and overlapping markets.
Court grants summary judgment for plaintiff on liability and awards a permanent injunction against Defendant’s use of EL GALLO; EL GALLITO injunction denied; remedies at law deemed insufficient for continued infringement.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Likelihood of trademark infringement	Gallo: GALLO is distinctive, nonfunctional, and likely to be confused with EL GALLO.	Grenade: EL GALLO is sufficiently different and not infringing.	Likelihood of confusion established; summary judgment for Gallo on liability.
Are GALLO and EL GALLO marks confusingly similar under Sleekcraft factors?	Marks are similar in dominant word and appearance; related products and marketing.	Limited evidence of market overlap and differences in products.	Factors favor confusion overall; substantial similarity and relatedness support infringement.
entitlement to injunctive relief	Permanent injunction is proper to prevent irreparable harm and preserve goodwill.	Injunctive relief not warranted for EL GALLO as claims focus on GALLO.	Permanent injunction against EL GALLO granted; EL GALLITO injunction denied.
Are other Lanham Act/unfair competition claims proper	Stand on same core facts as trademark claim; standards align with §1125 and §1114.	Claims are separate but overlap with trademark law.	Plaintiff entitled to summary judgment on all related claims.
Remedies at law sufficient to foreclose relief	Injunctive relief appropriate because damages are inadequate and control over brand integrity at stake.	Damages could be calculated; license history suggests policing marks.	Remedies at law inadequate; injunction warranted.

Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (likelihood of confusion and Sleekcraft factors framework)
Sleekcraft Boats, Inc. v. West Coast Court, inc., 599 F.2d 341 (9th Cir. 1979) (eight-factor test for likelihood of confusion)
Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042 (9th Cir. 1998) (distinctiveness and nonfunctionality elements of trademark claims)
GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000) (appearance and meaning in analyzing mark similarity)
Zobmondo Entertainment, LLC v. Falls Media, LLC, 602 F.3d 1008 (9th Cir. 2010) (likelihood of confusion and strength of mark considerations)
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (Fed. Cir. 2005) (foreign equivalents and similarity analysis in mark comparison)
E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280 (9th Cir. 1992) (consumer confusion and harm in trademark context)