The Paleta War

October 22, 2019 Admin 0 Comments

Countless paleta shops in Mexico and the U.S. are called La Michoacana, but two companies want to stake legal claim to the name

It’s one of those stiflingly humid summer afternoons in Detroit, and Nevería La Michoacana is packed with Detroiters in search of sweet, cool refuge. Millennials are gulping down aguas frescas, hijab-wearing teens choose toppings for their ice cream sundaes, and young Chicana moms and abuelas alike help their little ones order paletas, the quintessential Mexican ice cream pop. Behind the counter, members of the Gutiérrez family, ranging from tween to middle-aged, staff the family-owned business. Each morning before business hours, one of the workers comes in and cranks out hundreds of paletas, from tiny, kid-friendly pops dipped in chocolate to hefty bullet-shaped specialties filled with the goat’s milk caramel cajeta.

The Detroit parlor, open only during the summer months on account of brutal Midwest winters, is just one of an untold number of paleterias that bears the Michoacana name across the United States and Mexico. Some estimates place the number of Michoacanas in Mexico alone at between 8,000 and 15,000, while one source says Mexico is home to some 30,000. There isn’t an official count for Michoacanas in the United States, but visit any Mexican and Mexican-American community across the country and you’re likely to see at least one. The name and myriad variations of it can be found in brightly hued shops, on the labels of paletas in pushcarts, and on boxes in the frozen food aisles of supermarkets from rural Michoacán to Mexico City, Los Angeles to New York, Florida to Texas.

People use the phrase “La Michoacana” as shorthand for a paleteria or ice cream shop in much the same way that people use the brand name Kleenex to mean facial tissue. But La Michoacana isn’t an official brand. It refers to a loosely connected network of ice cream shops, typically family owned. Michoacana has created a path to economic mobility by allowing countless Mexicans and Mexican-Americans to open their own shops without the need for a lot of capital or education. And as these shops continue to pop up onto street corners in neighborhoods and plazas, the name Michoacana has been at the center of a series of lawsuits over who gets to use it.

The word “paleta” is derived from the Spanish word for stick — palo. Paletas are made with water or heavy cream (or whole milk) combined with all-natural ingredients like fresh fruit. They come in a variety of flavors, like strawberries and cream, coconut, tamarind, watermelon, mango, and avocado, and many are dusted with chile powder for a sweet and spicy flavor combination.

According to most accounts, the Mexican paleta’s story begins in Tocumbo, a small, rural town in the state of Michoacán. One origin story begins in 1930, when Tocumbo resident Rafael Malfavón began making and distributing the first paletas to surrounding villages using wooden boxes carried by donkeys. In his 2001 book True Tales From Another Mexico, journalist Sam Quinones writes that two Tocumbans, Agustín Andrade and Ignacio Alcázar, separately brought the paleteria concept to Mexico City in the 1940s. The two men opened a string of competing shops all over the Mexican capital. Alcázar’s brother, Luis, eventually joined him and the two began to loan money to friends and family from their hometown so they could open their own paleterias. Those relatives then lent money to others to do the same, eventually resulting in paleterias across all of Mexico, many called La Michoacana. And with that, Quinones writes, Tocumbans became the “popsicle kings of Mexico.”

Gustavo Arellano

Tocumbo takes pride in its reputation as the birthplace of paletas. According to Paletas, the 2011 book by Fany Gerson, owner of Mexican sweets shop La Newyorkina, a gigantic pink paleta statue made of concrete welcomes visitors when they arrive in Tocumbo, and most of the townspeople there have some hand in paleta-making. While many spend much of the year selling the pops in other parts of Mexico, they return for the village’s annual Feria de la Paleta, a weeklong celebration of the iconic confections.

But while it’s easy to trace paletas back to Tocumbo, tracking the La Michoacana name isn’t so simple. Andrade and Alcázar each relocated to the capital at different times, and it’s unclear who first used the word to sell paletas. And because the Michoacana name grew casually between families and friends, the brand itself wasn’t trademarked until decades after the first paleterias started opening in Mexico City. By then, it had infiltrated every corner of Mexico and had already made its way to the United States. “Arguing that La Michoacana is a brand, it’s like saying ice cream is a brand, it’s like saying paleta is a brand,” says Gerson. This is where the Michoacana story gets sticky.

In 1991, brothers Ruben Gutierrez and Ignacio Gutierrez opened a paleta factory and began selling paletas from a pushcart in Turlock, California, in the state’s Central Valley. They called the operation Paleteria La Michoacana. According to the company’s current vice president of sales, Paul Storke, the year prior to launching the business, the brothers — themselves immigrants from the state of Jalisco — had traveled to Mexico to learn more about paleta-making and to buy equipment.

The following year, the niece of storied paleta inventor Malfavón, her husband, and several of their children launched paleta company Prolacto (which stands for Productos Lácteos Tocumbo) in Mexico. In 1995, Prolacto registered the name La Michoacana Natural and several other variations of the Michoacana name with the Mexican Institute of Intellectual Property, the equivalent to the U.S. Patent and Trademark Office. By the late ’90s Prolacto’s founding directors began entering licensing agreements with individual shop owners in the United States, including in parts of Florida and Texas and in Sonoma, California.

Meanwhile the Gutierrez brothers’ Paleteria La Michoacana continued to grow. In 2002, Ignacio Gutierrez established a California corporation known as Paleteria La Michoacana, Inc. and trademarked the phrase “La Indita Michoacana” along with its logo design: an illustration of a doll with braided black hair, dressed in traditional Michoacán attire and holding an ice cream cone. The company distributes its paletas to national big-box retailers including Costco and Walmart, as well as Walgreens and Latinx supermarkets like El Super and Vallarta.

As paletas become mass market and mainstream, La Michoacana starts to stand for something different. Already, paleteros strive to stand out among a sea of like-named paleta shops. Quinones writes that as Michoacanas began to saturate Mexico, shop owners started getting creative with their presentations. Many added glass freezer cases to proudly display their products; others painted cartoon characters or balloons on their walls to attract the kids. And the ingredients over the years have increased in extravagance, with flavors like pistachio, bubblegum, cheesecake, even Ferrero Rocher.

In Chicago, home to the largest concentration of Mexicans and Mexican Americans in the Midwest, more than a dozen paleterias bear some form of the word Michoacán in their name, and the competition to outshine each other is immense. La Michoacana Premium in the city’s Pilsen neighborhood, for example, distinguishes itself with a catchphrase: “Si no es premium, no es Michoacana,” which means “If it’s not premium, it’s not Michoacana.” But if La Michoacana becomes the designated name for the boxes of paletas sold at Costco, as well as the family-owned paleterias with ties to Michoacán, the name begins to lose what made it special.

With that in mind, in 2007, Prolacto approached the United States Patent and Trademark Office asking that the office cancel Paleteria La Michoacana’s trademark for the phrase “La Indita Michoacana” and the accompanying design. Although thousands of paleterias use the name Michoacana, Stephen Anderson, a lawyer for Prolacto, claims the Paleteria La Michoacana used deceptive tactics to try to tie the company to the original Tocumbo paleterias. In court, for example, Paleteria La Michoacana showed a drawing allegedly depicting the company’s first pushcart bearing the words “ahora en los estados unidos” (now in the United States). As Paleteria La Michoacana grew, Anderson says the company also shared the Tocumbo origin story in its biography and its packaging. Prolacto is still intent on putting a stop to Paleteria La Michoacana, which, the Mexico-based company contends, is harming its reputation. Prolacto wants to be able to sell a product deeply rooted in the owners’ family history, without competition from a brand with a similar name.

Like the name Michoacana, variations of Paleteria La Michoacana’s logo image, la Indita, had been used by countless other paleterias. (The image is based on women from the indigenous Purépecha population in Michoacán, who commonly braid their hair and wear embroidered dresses.) This time, though, Prolacto wanted to set the record straight: Only Prolacto, whose founders had direct ties to Malfavón, and its U.S. licensees should have the authority to use the name and image in the United States.

“In the 1940s there wasn’t an intellectual property regime in Mexico,” says Anderson. He says it’s true that Andrade and Alcázar had opened paleterias in Mexico City, but by then these shops were already commonplace in Tocumbo. Malfavón had given Andrade permission to use the Michoacana name in Mexico City, but he never anticipated that the moniker would reach beyond the geographic boundaries of Tocumbo.

As far Prolacto was concerned, Paleteria La Michoacana’s logo was “culturally exploitative.” They contended that Paleteria La Michoacana appropriated the image after its owners saw it at paleta shops when visiting Mexico before starting their company. Prolacto was initially unsuccessful in its efforts to register the marks with the trademark office, given that Paleteria La Michoacana had already trademarked the name and a logo in the U.S., where Prolacto’s registration with the Mexican Institute of Intellectual Property doesn’t apply. But court records show that in 2011 the trademark dispute became a point of legal contention when the Trademark Trial and Appeal Board sided with Prolacto to cancel the registration of one of Paleteria’s marks, an updated version of the Indian Girl encircled by the words “La Indita Michoacana.”

Paleteria La Michoacana appealed that decision, and up until 2018, both companies went back and forth making their respective cases in courts in D.C., Florida, and North Carolina. In August 2018 the U.S. Court of Appeals for the D.C. Circuit ruled in favor of the U.S.-born paleta company Paleteria La Michoacana. The appeals court said the name La Michoacana paired with some variation of the image of la Indita is so common in the United States that it cannot be claimed by one business over another, but the court ruled that Paleteria La Michoacana did own the rights to its distinct image of “La Michoacana.” According to the ruling, Prolacto actually infringed on its trademark by using similar marks in its U.S. sales. Therefore, Prolacto had to stop using its doll logo in parts of California and Texas where Paleteria La Michoacana and Prolacto licensees both did business.

Storke, Paleteria La Michoacana’s vice president of sales, declined to comment on the legal battle, but he did say the California-based company, which employs more than 100 workers, is the only company that has the right to market paletas in U.S. supermarkets and retail shops using the symbol of the little girl. Of course, hundreds of independent shops, like the Detroit shop, produce their own variations of the Michoacana name or logo, and a small number of Prolacto licensees continue to operate as many as 30 U.S.-based paleterias in North Carolina, California, Houston, and Florida under the name La Michoacana Natural ice cream.

Anderson says Prolacto has been successful in stopping a few paleterias in North Carolina, Florida, and California from using its trademarked name and logo based on judgments won in North Carolina and Florida courts. And while the average customer likely won’t notice if their local shop swaps out the paleta in the la Indita logo’s hand for an ice cream cone or a flower, the fact that family-owned paleterias may now have to contend with trademark challenges arguably takes away from the organic aspect of the shops that for decades have seemed to transcend ownership. After all, who would think to trademark the humble ice cream shop?

Prolacto is continuing to pursue whatever legal actions possible to fight Paleteria La Michoacana and regain permission to use the prized name. “The paleta is defined as something made by hand, in small batches, with no preservatives, fresh milk, and juice, fruit, or nuts,” Anderson says. “[Paleteria La Michoacana] make a million a day in a factory, using sugar water. They use almost no real fruit, aside [from] purees for flavoring. You won’t find an Oreo, or a fresh strawberry, or even a shred of coconut… It bastardizes the tradition.” Paleteria La Michoacana’s Storke, however, would argue that the company’s hundreds of employees take pride in the quality of its products and that most of the workers are also of Mexican heritage.

A majority of customers likely have no idea that the name Michoacana is so contentious. Those more familiar with the paleta’s history may ask where the owners of their local paleteria are from. Connoisseurs like Gerson know that if they say Tocumbo, it’s a link to the paleta’s origin story. But for the average family that lines up at the counter at places like Nevería La Michoacana back in Detroit every summer, La Michoacana is just as much a part of the ice cream lexicon as the waffle cone, no matter who owns the name.

Serena Maria Daniels is a Detroit-based freelance journalist and founder of Tostada Magazine. Maria Rodriguez is a Mexican-American artist living in Portland, Oregon.
Fact-checked by Andrea López Cruzado