E. & J. Gallo Winery v. Gallo Cattle Company
United States Court of Appeals for the Ninth Circuit
967 F.2d 1280 (1992)
E. & J. Gallo Winery (plaintiff), founded by brothers Ernest and Julio Gallo, settled a trademark suit against Gallo Salame by having Gallo Salame assign the Gallo mark to the winery, which then licensed it back to Gallo Salame under a quality-control program monitoring the products sold under the name. When the brothers' relative Joseph Gallo later began selling cheese as "Joseph Gallo" through his Gallo Cattle Company (defendant), the winery sued for infringement and won an injunction; Joseph appealed, arguing the winery's underlying assignment from Gallo Salame was an invalid "in gross" transfer that stripped the winery of any valid ownership interest in the mark.
Whether a simultaneous assignment and license-back agreement of a trademark will be held a valid assignment if it preserves control over and the quality of the products or services associated with the mark.