Chicago is renowned for its iconic Italian beef sandwiches. One name that is inexorably linked with Italian beef in the Windy City is Scala’s Original Beef. For over 60 years, Scala’s was one of the biggest suppliers of authentic Italian beef in Chicago. But in the 1990s and 2000s, the famous brand slowly faded from the spotlight before disappearing completely.
So what exactly happened to Scala Beef once one of the most trusted names in Chicago’s renowned sandwich culture?
The Rise of an Italian Beef Icon
Scala’s history begins in 1925 when Italian immigrant Pasquale Scala opened a small butcher shop and deli in Chicago’s Little Italy neighborhood. At his store, he began experimenting with thinly-sliced beef served on fresh Italian bread. This was the genesis of the now-famous Chicago Italian beef sandwich.
By 1939, demand for Pasquale’s beef sandwiches had grown so much that he opened a wholesale business focused solely on thinly-sliced Italian beef. For decades, Scala Beef became one of the biggest suppliers of Italian beef to Chicago pizzerias, hot dog stands, and sandwich shops.
At its peak popularity in the 1960s-80s, Scala’s beef could be found in beloved Chicago restaurants like Mr. Beef, Al’s Beef, and Portillo’s. For locals and tourists alike, the name Scala’s was synonymous with authentic, high-quality Italian beef.
Changing Tastes Lead to Decline
In the 1990s, however, Scala Beef started to lose prominence. Consumer tastes began shifting away from traditional Italian fare. More diners started seeking out trendier options like Mexican, Thai, and fusion cuisine.
At the same time, many neighborhood Italian beef stands in Chicago began sourcing from other suppliers or making their beef in-house. Although still respected, Scala’s beef was no longer an indispensable name on menus across the city.
There were also generational shifts within Chicago’s Italian community that contributed to Scala’s decline. As the old-school Italian deli culture faded, fewer businesses carried on traditions like specializing in Italian beef. The market for Scala Beef shrank.
Attempted Revivals Fall Short
In the early 2000s, Scala’s attempted to revive its relevance with new branding and modernized marketing. They positioned themselves as an authentic Chicago tradition ready for a comeback.
For a few years, it appeared Scala Beef might regain its former prominence. More restaurants added it back to their menus, and Scala’s expanded distribution to suburban Chicago locations.
The company also began selling Italian beef kits nationwide through mail order and online sales. This allowed Scala’s to reach new customers outside their traditional Chicago marketplace.
But these efforts ultimately weren’t enough to sustain the brand’s resurgence. By the mid-2000s, the Scala’s revival had sputtered out, and the company quietly closed down operations. After 80 successful years, the iconic Italian beef maker was gone.
Why Scala’s Couldn’t Adapt to a Changing Market
There are a few key reasons why Scala Beef appears to have struggled adapting to shifts in consumer demand:
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Failure to innovate. Scala’s clung to traditional production methods and didn’t develop new products to excite customers. Their Italian beef stayed nearly identical for decades while food trends rapidly changed.
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Not attracting younger customers. As generations turned over, Scala’s didn’t effectively market to new, younger diners. Their brand appealing mostly to older demographics nostalgic for classic Italian beef.
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Rising competition. More specialty meat companies entered the Italian beef business, eating into Scala’s market share. New suppliers offered greater variety and flexibility.
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Poor leadership transitions. When leadership passed between generations, the new leaders may have lacked the business savvy to evolve Scala’s for the modern era.
While Scala’s retains a special place in Chicago sandwich lore, the brand failed to change with the times. Their disappearance leaves a noticeable hole in a city where Italian beef once reigned supreme.
The Legacy of Scala’s Lives On
Though Scala Beef could not withstand declining popularity and emerging competition, their legacy lives on as an icon of Chicago’s italian beef history.
For over 60 years, Scala’s name was a reliable stamp of quality. Even today, Chicagoans looking for that quintessential Italian beef experience seek out joints that once carried the famed Scala’s beef.
Beyond restaurants, Scala’s also inspired today’s Italian beef makers. New brands aim to emulate the thin-sliced beef and zesty flavors that made Scala’s sandwiches so craveable.
Home cooks still try to recreate Scala’s iconic beef and even purchase Scala’s merch as Chicago food nostalgia. Though gone, Scala Beef remains an integral part of Windy City culinary tradition.
Where to Get Authentic Italian Beef Today
While Scala’s is a fond memory, devotees of Chicago-style Italian beef need not despair. Many local joints still serve authentic, scrumptious Italian beef. Here are a few top options:
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Al’s Beef – Popular for juicy beef soaked in gravy and topped with fiery giardiniera peppers. A longtime Chicago favorite.
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Mr. Beef – Known for heaping portions and signature beef cooked in beef tallow for full, meaty flavor.
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Portillo’s – The popular chain’s Italian beef recipe draws inspiration from Scala’s, using high-quality ingredients.
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Buona Beef – Another local favorite serving tender, thinly-sliced Italian beef since 1981.
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Jay’s Beef – A neighborhood staple since 1960, Jay’s has mastered the Chicago-style Italian beef and sausage sandwich.
Though Scala Beef is gone, no single brand defined Chicago’s famous Italian beef tradition. Plenty of devoted beef houses carry on its legacy today, honoring a cherished local specialty.
The storied history of Scala’s traces the rise and fall of an iconic Chicago brand. But their impact lives on through continued love of juicy, peppery Italian beef – a civic pride for Windy City residents. Scala’s may be a memory, but quality Italian beef in Chicago endures.
MEMORANDUM OPINION AND ORDER
Plaintiff Scalas Original Beef Sausage Company LLC (“Scalas”) has sued Defendants Michaelangelo Alvarez d/b/a Michaelangelo Foods and Michaelangelo Foods, LLC (together, “Defendants”), saying that they have violated the Lanham Act (15 U.S.C. S. C. § 1114(a); (2) unfair competition in violation of the Lanham Act, 15 U. S. C. § 1125(a); (3) violation of the Illinois Deceptive Trade Practices Act, 815 ILCS § 510/1 et seq. (4) breaking the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS § 505/1 et seq. The complaint also asks for a court to say that Scalas has the right to sell and distribute giardiniera under the “Scalas” and “Scalas Preferred” marks.
Scalas is asking the court for a temporary restraining order (“TRO”) so that the defendants can’t market or sell giardiniera or other foods with the “Scalas Preferred” or “Scalas” trademark on them. In particular, Plaintiff wants an immediate order temporarily stopping Defendants from (1) violating Plaintiffs’ two federally registered trademarks and (2) putting information on Defendants’ product labels and website that makes it look like Defendants’ products are related to Plaintiffs’ products. Even though the motion is close, the Court decides that Scalas has not met its burden of showing a right to the extraordinary remedy of a TRO under the sliding scale standard that is used in this circuit. Accordingly, Scalas motion [6] is respectfully denied.
Scalas is a distributor of Italian meats and related food products. Scalas and its predecessors have been selling food products under the Scalas name since approximately 1925. In 1949, Pasquale Scala — Scalas founder — incorporated the business under the name, Scala Packing Co. , Inc. (“SPCI”). In approximately 1960, SPCI began selling bottled giardiniera under the “Scalas” and “Scalas Preferred” brands. During the month of August 2007, SPCI sent two requests to the US Patent and Trademark Office to make “Scalas Preferred” a trademark for certain Italian-style foods. On September 23, 2008, SPCI received the two trademarks for which they applied.
Defendant Alvarez began working for SPCI in 1996. On August 25, 2008, Alvarez, on behalf of his company Michaelangelo Foods, entered into an agreement with SPCI. In its entirety, the agreement consists of three paragraphs:
The agreement is silent as to its duration and it contains no termination clause.
Prior to August 2008, SPCIs giardiniera and other prepared vegetables were produced by E. Formella and Sons. According to Alvarez, at the time that he purchased SPCIs prepared vegetable division, E. Formella and Sons had refused to continue supplying SPCI because of past non-payment. SPCIs customers for giardiniera and prepared vegetables included Jewel, Super Fresh, and Piggly-Wiggly. In his declaration, Alvarez says that SPCI’s prepared vegetable division did not have any pending orders or inventory when he bought it. In addition, Jewel had stopped placing orders with SPCI because of delivery problems.
Under the Scalas label, Alvarez has sold giardiniera and ready-to-eat vegetables to Jewel, Super Fresh, and Piggly Wiggly since he got the license. During that time, Alvarez has invested nearly $50,000 in the business, which has annual gross revenue of $200,000.
SPCI told the defendants in writing on August 12, 2009, that they could no longer use the “Scalas” name and logo on vegetable products. This happened right away. Even though the license agreement is said to have ended, defendants are still selling vegetables, such as giardiniera, under the “Scalas” name. Scalas alleges that the labels that Defendants use on their giardiniera and other products infringe Scalas trademarks. The defendants say that Scalas broke the agreement and that the license is still valid or that the trademark has been given up for prepared vegetables.
In a letter dated October 27, 2009, Scalas demanded that Defendants cease distributing products bearing the “Scalas” name. Defendants refused to do so by letter dated November 9, 2009.
SPCI and Scalas signed an Asset Purchase Agreement on November 5, 2009. As part of the agreement, Scalas agreed to buy “all trademarks, trade names, logos, service marks, brand marks, brand names, and domain names” of SPCIs, along with all goodwill associated with those assets. The closing of the Asset Purchase Agreement took place on November 23, 2009. That same day, Scalas initiated this lawsuit and filed its motion for a temporary restraining order. The motion was brought up on December 2, 2009, and the plaintiff’s lawyer did a short direct examination of the defendant, Alvarez, in court. The court then set a time for more briefing on the TRO motion. That motion is now fully and capably briefed and ready for decision.
The parties also talked about the Defendants’ motion to disqualify Scalas’s lawyer, which the Court turned down in a December 10 memorandum opinion and order [23].
A temporary restraining order is “an extraordinary remedy that should not be granted unless the movant, by a clear showing, carries the burden of persuasion.” This is true for all types of injunctive relief. ” Mazurek v. Armstrong, 520 U. S. 968, 972 (1997) (emphasis in original). A person or group asking for a temporary restraining order must first show that (1) their case has a reasonable chance of succeeding on the facts; (2) they have no other legal options that are adequate; and (3) they will suffer irreparable harm if they are not granted preliminary relief. Abbott Labs. v. Mead Johnson Co. , 971 F. 2d 6, 11 (7th Cir. 1992). If this is met by the moving party, the court must weigh the irreparable harm that the nonmoving party will suffer if preliminary relief is granted against the irreparable harm that the moving party will suffer if relief is denied. Storck USA, L. P. v. Farley Candy Co. , 14 F. 3d 311, 314 (7th Cir. 1994). Lastly, the court looks at what’s best for the public by granting or denying the relief, including how the relief will affect people who aren’t parties to the case. Id. ; see also Credit Suisse First Boston, LLC v. Vender, 2004 WL 2806191, at *1 (N. D. Ill. Dec. 3, 2004). “Sitting as would a chancellor in equity” (Abbott, 971 F.) the court then weighs all of these things. The court used a “sliding scale” method, which says that “the more likely plaintiff will succeed on the merits, the less the balance of irreparable harms needs to favor plaintiffs position.” ” Ty, Inc. v. The Jones Group, 237 F. 3d 891, 895 (7th Cir. 2001).
A. Likelihood of Success on the Merits
If someone wants a TRO or a preliminary injunction, they have to show “that they have a better than negligible chance of success on the merits of at least one of their claims.” ” Girl Scouts of Manitou Council, Inc. v. Girl Scouts of U. S. A. , 549 F. 3d 1079, 1096 (7th Cir. 2008). This is an “admittedly low requirement. ” Id. Scalas says that its Lanham Act claims are likely to be successful because: (1) Scalas has a mark that can be protected; (2) the license agreement was legally ended, so Defendants’ continued use of the mark is without Scalas’ permission; and (3) Defendants’ unauthorized use of the mark is likely to cause confusion among consumers. The defendants say that: (1) Scalas has given up its trademark for prepared vegetables; (2) the license agreement was not properly ended; and (3) the defendants’ use of the name “Scalas” is not likely to cause confusion in the market since Scalas is not selling prepared vegetables at the moment.
The Seventh Circuit says that district courts should look at seven things to see if there is a good chance of confusion: (1) how similar the marks are in terms of appearance and suggestion; (2) how similar the products are; (3) where and how they are used together; (4) how careful consumers are likely to be; (5) how strong the plaintiff’s mark is; (6) If there is real confusion; and (7) If the defendant meant to “palm off” his product as the plaintiff’s. CAE, Inc. v. Clean Air Engineering, Inc. , 267 F. 3d 660, 677-78 (7th Cir. 2001). Scalas says, and the defendants don’t strongly disagree, that these things make it more likely that there was confusion. When the Court looks at the two labels, it agrees that Scalas made a pretty strong case that the defendants’ labels are likely to be confusing.
The defendants’ argument that there can’t be any confusion because Scalas isn’t selling ready-to-eat vegetables right now doesn’t make sense. The license was properly ended, and Scalas has a mark that can be protected. There is a good chance that people who buy products distributed by Defendants would think they were actually buying products distributed or licensed by Scalas. Even though Scalas doesn’t sell a competing line of prepared vegetables right now, it doesn’t clear up the confusion about where the products come from (though it does sell other food items with the Scalas marks). See Geneva Intern. Corp. v. Petrof, Spol, S. R. O. , 608 F. Supp. 2d 993, 1003-04 (N. D. Ill. 2009) “A trademark is a sign of origin that lets customers know that the goods and services sold under that trademark are all the same in nature and quality.”
Of course, the likelihood of confusion is meaningless if Defendants retain a valid license. The ending of the license will only be legal if Scalas is right and the license agreement could be ended at any time. After carefully going over the arguments made in both sides’ briefs, the Court decides that Scalas has shown that it has at least a reasonable chance of showing that the termination was legal.
Under Illinois law, “contracts of indefinite duration are generally deemed terminable at will by either party. ” See A. T. N. , Inc. v. McAirlaids Vliesstoffe GmbH Co. KG, 557 F. 3d 483, 486-87 (7th Cir. 2009) (citing Jespersen v. Minn. Mining Mfg. Co. , 700 N. E. 2d 1014, 1016 (Ill. 1998)). However, there is an exception to this rule for agreements that don’t have a set length of time but can end only when certain events happen. See Jespersen, 700 N. E. 2d at 1016. Such agreements are not terminable at will. Id. On the other hand, an agreement with an open-ended length of time and a list of reasons for ending it can be ended at any time. Id. at 1017.
Here, the license agreement is of indefinite duration and the agreement contains no termination provision. Scalas contends that under Jespersen and its progeny the license thus is terminable at will. To this, the defendants say that the Court should find the license to be perpetual because of how the transaction works economically. In Baldwin Piano, Inc. v. Deutsche Wurlitzer GmbH, 392 F. 3d 881 (7th Cir. 2004), the Seventh Circuit decided that the deal’s economics made it more likely to treat the trademark license in question, which didn’t say how long it would last, as perpetual rather than terminable at will. But Baldwin Piano is not directly relevant because, unlike this agreement, the one in Baldwin Piano had a clear list of reasons for ending the contract, and that language seems to have had an effect on the court’s decision. See Automation By Design, Inc. v. Raybestos Products Co. , 463 F. 3d 749, 760 (7th Cir. 2006. The Baldwin Piano court used an Illinois Supreme Court decision that said a list of reasons for ending a contract does not limit its length and lets the parties end it whenever they want. At the preliminary injunction (and maybe summary judgment) stage of the case, one important legal question will be how much the weak terms of the agreement the parties signed must be shaped by the economic situation and other factors that were in place at the time the agreement was signed. And then that question will be affected by a better understanding of those facts and situations that will be available once the case has been fully investigated. But for now, even if Baldwin Piano makes it seem less likely that Scalas can prove that the license could be ended at any time, Scalas still easily meets the “better than negligible” standard.
Lastly, the defendants say that Scalas hasn’t shown that it has a good chance of winning its trademark infringement case because it has stopped using its mark for prepared vegetables. Defendants advance two abandonment arguments. First, the defendants say that Scalas gave up control of the mark through “naked” licensing, which means that he didn’t keep an eye on the quality of the goods sold under the mark. See TMT North America, Inc. v. Magic Touch GmbH, 124 F. 3d 876, 885 (7th Cir. 1997) (“[a] trademark owner * * * can abandon all trademark rights through uncontrolled or `naked licensing”). Second, Defendants argue that Scalas abandoned the mark through non-use. See Miyano Machinery USA, Inc. v. MiyanoHitec Machinery, Inc. , 576 F. Supp. 2d 868 (N. D. Ill. 2008), “A mark may be deemed abandoned when it has been stopped being used with no plans to resume such use”; 15 U.S.C. S. C. § 1127.
Scalas says that Defendants can’t say that Scalas’ trademark rights aren’t valid by saying they didn’t do enough quality control or didn’t use the product during the license term. This is because of the doctrine of licensee estoppel. Lawyers say that a former licensee can’t challenge the trademark of its former licensor based on facts that came up during the license. This is called “licensee estoppel.” ” Chrysler Motors Corp. v. Alloy Automotive Co. , Inc. , 661 F. Supp. 191, 193 (N. D. Ill. 1987); see also Bunn-O-Matic Corp. v. Bunn Coffee Service, Inc. , 88 F. Supp. 2d 914, 927 (C. D. Ill. 2000) (“licensees are barred from bringing up any events that happened before the license ended in order to question the validity of the licensor’s trademarks”). Again, Scalas has shown that its licensee estoppel argument has a good enough chance of succeeding to clear the admittedly low bar at the TRO stage. The Court does say, though, that “licensee estoppel is an equitable doctrine, and a court remains free to consider the particular circumstances of the case, including the nature of the licensee’s claim and the terms of the license.” ” RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 33, cmt. d (1995). So far, it looks like the defendants might be able to avoid licensee estoppel on fair grounds, given how the license came to be in the first place.
There are still some unresolved issues in both contract and trademark law that could affect how the case is decided in the end, so it is too early to say who will win. At this point, Scala’s only job is to show that there is a “better than negligible” chance that he will win. It easily has done that. However, Scala’s case on the facts doesn’t seem very strong right now, so it will have to make a strong case that some or all of the other factors also support its case in order to get temporary injunctive relief under the sliding scale method.
The Italian Beef Sandwich in Chicago History
FAQ
What is the original Italian beef in Chicago?
What cut of beef is used for Chicago Italian beef?
Why is Italian beef so popular in Chicago?
What is the Chicago way Italian beef?
What happened to Scala beef?
Shaving the beef and serving it with the roasting liquid helped “stretch the limited meat” that people could afford at the time. Scala would go on to found the Scala Packing Co., which sold Italian beef to numerous restaurants until very recently going out of business. The second story is nearly identical, except that it was Tony Ferreri.
Is Scala beef still popular in Chicago?
While Scala Beef may be gone, the legacy of Italian beef lives on in Chicago. However, some experts suggest that the traditional Italian beef sandwich may be losing ground to newer, more artisanal options like the Italian sub. These sandwiches are less messy and feature a variety of meats that appeal to a more diverse range of tastes.
Where did Scala beef come from?
Scala Beef’s history dates back to the early 1900s, when Italian immigrants who worked in Chicago’s Union Stock Yards would bring home less expensive cuts of beef to feed their families. To make the meat more palatable, they slow-roasted it to make it tender and flavorful, before simmering it in a spicy broth with Italian-style spices and herbs.
Who is Scala meat packing?
Anybody who follows the inner workings and history of the local Chicago Italian meat business, knows the great name Scala. For those who don’t know, Scala Meat Packing was controlled by the Scala family throughout it’s entire life.