Rienzi & Sons Sued Because It Calls Its Domestically-Produced Cheese Parmigiano

By Kate Sander, chief editor, Cheese Market News

The Consorzio del Formaggio Parmigiano-Reggiano has filed suit in the United States District Court for the Northern District of New York against Rienzi & Sons Inc., Astoria, NY.

The Consorzio is the international quality control association that oversees production, certification and marketing of Parmigiano-Reggiano Parmesan cheese. It is headquartered in Reggio Emilia, Italy, but has an American office in Syracuse, NY.

In the suit, the Consorzio has charged that the use of the term "Parmigiano" by Rienzi for grated cheese in shaker cans and deli tubs is an infringement of the Consorzio's registered certification marks granted by the U.S. Patent and Trademark Office. Even though Rienzi & Sons doesn't use the word "Reggiano" for its cheese, the Consorzio's position is that use of the term "Parmigiano" is likely to cause marketplace confusion, says Nancy Radke, U.S. director of communications, American office of the Consorzio del Formaggio Parmigiano-Reggiano.

The Consorzio is asking the court to enjoin Rienzi's use of the term "Parmigiano" for cheese that hasn't been certified by the Consorzio, demanding Rienzi provide an account of the profits derived from the alleged infringement and requesting an award of monetary damages for the injury the Consorzio has sustained because of Rienzi's alleged infringement. The Consorzio also is seeking treble damages and attorneys fees because of what it calls willful infringement by Rienzi.

However, Mike Rienzi, president, Rienzi & Sons, says the Consorzio has picked the wrong company with which to fight, and he vows to take the case all of the way to the Supreme Court if he has to.

"We don't call it Parmigiano-Reggiano, only Parmigiano and that's an international word," Rienzi says. "You can look it up in the dictionary."

Rienzi says the only reason he calls his domestically-produced cheese Parmigiano instead of Parmesan is because he likes the word better. Besides, that is what the cheese is, he argues. "What do you call a Provolone produced in Wisconsin? You call it Provolone," he argues.

Rienzi also says he doesn't appreciate the Consorzio's approach, adding that he has faith in the U.S. justice system.

This hasn't been the first time the Consorzio has sued a U.S. company over Parmigiano. In 1995, the Consorzio reached an out-of-court settlement with Grande Cheese in which Grande agreed not to use the term Parmigiano. Grande's attorney says rather than argue over a descriptive term, the company switched to calling its cheese Parmesan.

Radke says that in order to defend the company's certification marks, the Consorzio must actively seek to protect the name from becoming commonly used. These suits are part of that practice, she says.

By law, Parmigiano-Reggiano only can be made in certain parts of Italy. The cheese has been produced by independent dairies in the Italian province of Emilia-Romagna for 800 years. In 1955, Italian law designated the counties of Parma, Reggio-Emilia and Modena in their entirety and a portion of the county of Bologna to the west of the Reno river as well as a portion of the county of Mantua to the east of the Po river as a controlled cheesemaking district and established the Consorzio del Formaggio Parmigiano-Reggiano to regulate the cheese's production and marketing. Only cheese produced in this district and meeting the Consorzio's processing requirements and quality standards can bear the name Parmigiano-Reggiano.

In addition, currently there is disagreement in the European Union over the use of the word "Parmesan" and who should be eligible to use it. The Codex Milk and Milk Products Committee recently voted to table the issue of whether or not to develop a Codex standard for Parmesan until its next meeting because of the controversy. CMN

Other top stories in this week's issue of Cheese Market News:

• Supreme Court asked to consider constitutionality of dairy compact
• Despite price volatility frustration, pizza industry still savors cheese
• Milk production continues strong with 8% gain
• Opt-out period, 6-month limit spur forward contracting comments

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