Intuitively, no one would believe that Dairy Queen is the trademark source of spring water and ice cream. Spring water and sweets naturally appear to be sufficiently different that two similar marks could peacefully co-exist. However, we will soon find out if consumers are likely to expect the trademark source of spring water and ice cream to be the same.
On March 12th, American Dairy Queen Corporation sued W.B. Mason Co., Inc. for trademark infringement in the United States District Court for the District of Minnesota. Dairy Queen previously opposed the registration of W.B. Mason’s applications for BLIZZARD SPRING WATER and WHO BUT W.B. MASON’S BLIZZARD SPRING WATER for “spring water.”
Dairy Queen is the owner of four federal trademark registrations for BLIZZARD in connection with “heavy bodied milkshakes”; “milk shakes and semi-frozen ice milk and ice cream confections” (interestingly “with carbonated beverages” was deleted); “flavor blender machine for frozen treats”; and “restaurant services.” A court has never had to decide whether milkshakes or ice cream confections are related to water. Likewise, a court has never decided whether restaurant services are related to water. But courts have found that retail store services are related to water.
W.B. Mason likely has an up hill battle to convince a jury in Minnesota – where Dairy Queen was founded and still has its corporate headquarters – that ice cream and water are related. As searchers, we can learn something from this case. The lesson is that even if we believe goods identified in a search are sufficiently unrelated to avoid a problem, we still need to pay attention to who the owner of the marks identified in a search is.
Here, the searcher would have seen that Dairy Queen has been active at the Trademark Trial and Appeal Board when it comes to the BLIZZARD mark. Dairy Queen has filed proceedings against companies trying to register BLIZZARD for “beer”; “wines and spirits, namely, cognac, liqueurs, rum, vodka, and whiskey”; “preparations for making fruit drinks”; “stuffed toys”; “breath purifying mints”; and “pest control services dealing with dry wood termite infestations in residential and commercial properties.”
Stuffed toys? Pest control services? These are problematic when trying to sell ice cream? Of course not, but it shows the type of trademark owner Dairy Queen is and what it is attempting to accomplish, which is to some day have a mark strong enough that it can successful pursue dilution claims.
We need to be careful of adopting marks when these types of trademark owners pop up in search results and be prepared for a problem if the decision is made to move forward with a particular name.