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  • Writer's pictureDavid Baker

Tempest in a tea pot or Blizzard in a Dairy Queen?

Late last month, a federal court ruled that Dairy Queen cannot stop W.B. Mason Co from selling "Blizzard" bottled spring water even though Blizzard is also the name of a popular treat sold by the nationwide ice cream and burger joint. It certainly helps that W.B. Mason, an office products distributor with a considerable business presence in the Midwest and along the Eastern Seaboard, doesn’t sell ice cream treats. Or hamburgers and fries. It sells paper products.

However, W.B. Mason does use the BLIZZARD trademark in connection with a line of brilliant white copy paper as well as its line of bottled water.

Wholly owned by Warren Buffett's Berkshire Hathaway Inc., Dairy Queen first used the Blizzard name in 1946 and now holds federal registrations for five Blizzard trademarks on file with the U.S. Patent and Trademark Office. Dairy Queen Blizzards refers to the combination of soft serve ice cream with broken up bits of third-party favorites like Oreo cookies or Butterfinger candy bars. The ice cream and candy bits are blended together and serve in a cup.

In her 217-page decision, U.S. District Judge Susan Richard Nelson found a lack of evidence that consumers were confused by the Blizzards or that W.B. Mason actually intended to confuse anyone. Judge Nelson acknowledged that even though W.B. Mason, which holds two federal trademarks for Blizzard copy paper, was not a direct competitor of Dairy Queen, there was a possibility that consumers might be confused because both Dairy Queen and W.B. Mason sell bottled water. But the judge reasoned that the products had "very different audience appeal," and had co-existed for 11 years with little or new consumer confusion despite evidence that Dairy Queen's Blizzard had achieved "iconic" status, with U.S. sales reaching $1.1 billion in 2020.

"Dairy Queen introduced no evidence of an actual association between the two products," Nelson wrote. "If association were to occur, in all likelihood, it would have occurred by now."

The lawsuit was filed in March 2018 and ended with the St. Paul, Minnesota-based judge ruling in favor of W.B. Mason after a 12-day non-jury trial with 30 witnesses last fall.

In a statement, Dairy Queen said it was disappointed and reviewing whether to appeal and would "vigorously enforce our rights when necessary" to protect franchisees.

Why It Matters. Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. However, because trademark law is intended to protect consumers from confusion about the source of particular goods or services most of the focus in a trademark infringement lawsuit is on whether consumers actually are being confused or are likely to be confused by any similarities between the marks. If not, then a court usually will hold that there is no trademark infringement.

For a copy of Judge Nelson’s ruling, the case is captioned American Dairy Queen Corp. v. W.B. Mason Co., U.S. District Court, District of Minnesota, No. 18-00693.

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