For most of us, wine and kombucha tea are totally different products and only an idiot would confuse them. Not for Gallo, the $4 billion corporation with a history of trademark bullying. In April it sued local mom-and-pop Barefoot Bucha purveyors Kate and Ethan Zuckerman on the grounds that their kombucha name and logo infringed on its Barefoot Wine trademark.
The Zuckermans, like many businesses that have dared to use “barefoot” or “Gallo” in their product name, no matter how unrelated to wine that product might be, will change Barefoot Bucha’s name in a settlement with the wine goliath and will crowdsource a new name for the popular probiotic drink.
“It’s very common in litigation,” says intellectual property expert David Pratt at M-Cam. He estimates 80 percent or more of small companies faced with trademark bullying will change their company’s name because of the cost to litigate against deep pockets.
“Once you get into multi-billion-dollar publicly traded companies, they say, ‘We’d better have our hard-nosed lawyers go to the board and tell them we did everything to protect our trademark,’” he says.
“I don’t think Jefferson envisioned this,” says Pratt. James Madison convinced Thomas Jefferson to include intellectual property protection in the Constitution, he says, and he thinks that today, Jefferson would “be an open-source guy.”
The Zuckermans’ Conscious Cultures LLC settled without admitting any wrongdoing.“We are pleased that Conscious Cultures and E. & J. Gallo Winery have reached a mutually agreeable resolution,” says a Gallo spokesperson.
“We have amicably settled our differences out of court,” says Kate Zuckerman. “We are relieved to put this behind us so that we can continue to focus on bringing kombucha drinkers in our area a delicious and healthful beverage using a low-waste model.”
The winner of the “name that bucha” contest will receive a year’s worth of kombucha. Details are available on the Barefoot Bucha website and the deadline for submissions is September 12.
Crowdsourcing the name is an increasingly common tactic for up-and-coming companies and it appeals to millennials, says Pratt.
In choosing a new name, he advises the Zuckermans to check both the name and the classification code on the U.S. Patent and Trademark Office website, which means a car and a computer drive can have the same name because they’re different products. Although, in the case of Barefoot Bucha, “They probably didn’t think they’d run the confusion line with Barefoot Wine,” he says, so it’s also a good idea to note if an extremely litigious company owns similar trademarks.
Tom Gallo and Susan Devitt in Asheville, North Carolina, had to change the name of their company, GalloLea Pizza Kits, when E. & J. Gallo Winery came after them in 2012.
“In our case, it basically put us out of business,” says Gallo, citing the cost of changing the brand, its packaging, website and marketing.
Like the Zuckermans, Gallo and his wife had been in business for about five years, and decided to trademark their brand. He checked the U.S. Patent and Trademark Office database, and the trademark for Gallolea was available. “It didn’t cross my mind it could be confused with Gallo wine,” he says. “In our case, not only was the name different, it was a different class.”
Gallo says he’s “kind of sad” the Zuckermans agreed to change their name. And his advice for anyone in a similar situation? “Tell everybody not to buy Gallo products.”—Lisa Provence