## Facts

- E. & J. Gallo Winery, owned and controlled by brothers Ernest and Julio Gallo, developed substantial goodwill in the GALLO mark for wine and related products.
- Their brother, Joseph Gallo, later operated Gallo Cattle Company and marketed retail cheese using the name GALLO on packaging and in advertising.
- The Winery sued Joseph, Michael Gallo, and Gallo Cattle Company for trademark infringement and related federal and California claims arising from the GALLO use on cheese.
- Joseph counterclaimed against the Winery, Ernest, and Julio, alleging he owned a one-third interest in the Winery and its trademarks by inheritance from their parents’ estates (deaths in 1933).
- The district court granted summary judgment against Joseph’s ownership counterclaims as barred by prior probate proceedings.
- After a bench trial, the district court found infringement and related violations and entered a permanent injunction barring Joseph’s use of GALLO as a trademark on retail cheese and in advertising.
- Joseph sought a new trial, asserting judicial bias and seeking disqualification under 28 U.S.C. § 455; the district court denied the motion.

## Issues

1. Whether res judicata from final probate decrees barred Joseph’s counterclaims asserting a one-third ownership interest in the Winery and its trademarks.
2. Whether use of the identical surname mark GALLO on retail cheese and in advertising created a likelihood of confusion and violated federal and California trademark, dilution, and unfair-competition law.
3. Whether the trial judge’s alleged partiality required disqualification under 28 U.S.C. § 455 and warranted a new trial.
4. Whether the permanent injunction was overbroad, ambiguous, or impermissibly restricted lawful speech, requiring modification.

## Decision

- The Ninth Circuit affirmed summary judgment on Joseph’s ownership counterclaims, holding they were barred by res judicata based on final probate proceedings.
- The court affirmed liability for trademark infringement and related claims, agreeing that Joseph’s GALLO use on cheese was likely to cause consumer confusion with the Winery’s famous GALLO mark.
- The court affirmed denial of a new trial and rejected the judicial-disqualification challenge under 28 U.S.C. § 455.
- The court affirmed entry of a permanent injunction but modified its scope to address tailoring and clarity concerns.

## Legal Principles

- Under California law, final probate accounting orders and decrees are binding and conclusive as to estate assets, including against parties who were minors during probate; claims to estate-derived ownership interests may be barred by res judicata decades later.
- Likelihood of confusion is supported where a junior user adopts an identical mark, the senior user’s mark is strong and widely recognized, and the goods are sufficiently related to prompt consumers to assume common source or sponsorship.
- The fact that the junior user is using a personal surname does not preclude injunctive relief when such use functions as a trademark and is likely to confuse consumers as to source or affiliation.
- Judicial disqualification under 28 U.S.C. § 455 requires a showing that impartiality might reasonably be questioned or that specified grounds for recusal exist; adverse rulings or insufficient allegations of bias do not mandate recusal.
- Trademark injunctions must be sufficiently clear and no broader than necessary to prevent infringement and related harms; appellate courts may modify injunctions to ensure proper scope.

## Conclusion

The Ninth Circuit held that Joseph Gallo could not relitigate claimed ownership in the Winery due to binding probate decrees, upheld findings that his GALLO branding for retail cheese infringed and diluted the Winery’s famous GALLO mark, rejected claims of judicial bias, and sustained permanent injunctive relief while narrowing the order to ensure it was properly tailored and clear.


E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280 (9th Cir. 1992)