Federal Judge Rules W.B. Mason's Use of 'Blizzard' Doesn't Infringe on Dairy Queen's Trademark

A federal judge in Minnesota has rejected Dairy Queen's claims that W.B. Mason's use of the Blizzard name for bottled spring water infringed on DQ¡¯s trademarks for its popular line of frozen treats.

On June 10, US District Judge Susan Richard Nelson handed W.B. Mason sweet relief with a favorable decision, following a bench trial over several weeks last fall in St. Paul. The decision was briefly kept under seal to give both companies the opportunity to redact any trade secrets.

Dairy Queen sued the Brockton-based office supplier in 2018, accusing it of infringing on the Berkshire Hathaway-owned chain's trademarks for its Blizzard treats and cakes. The company, doing business as American Dairy Queen Corp., argued the spring water label likely would cause customer confusion and dilute the value of its Blizzard brand. But Nelson put the freeze on DQ's suit by ruling the ice cream purveyor did not present adequate evidence to prove either claim.

"The notion that any reasonable human being would ever have been confused between a Blizzard bottle of spring water and a Blizzard treat you buy at a Dairy Queen, we always thought was ridiculous," said Jason Kravitz, a Nixon Peabody partner who led a team of attorneys that represented W.B. Mason.

The closest potential overlap cited in the trial involved a few ice cream shop customers of W.B. Mason that resold Blizzard bottles to consumers. (DQ shops also sell bottled water.) But W.B. Mason does not allow the resale of its water, and promptly asked them to stop after it was discovered.

DQ issued a statement saying it is disappointed in Nelson's decision, and is still reviewing its rights to appeal. The ice cream seller said it "must take action to protect our famous brand from other parties who try to use Blizzard with food and beverage products." The company added that it will "vigorously enforce our rights when necessary," in part to protect its independent franchisees.

W.B. Mason began using the Blizzard name for white copy paper in 2003, before introducing Blizzard-brand water in 2010. During the trial, chief executive Leo Meehan said he chose the name to emphasize the paper's brightness. Then, when the company was developing its own water brand, Meehan said he looked over at a package of Blizzard paper and thought it would be a great name for the beverage as well. He testified that he had not been to a Dairy Queen, and was not aware the company used the Blizzard name. That changed, he said, after DQ objected following W.B. Mason's filing for trademark protection for the water in 2016.

Kravitz said the judge's decision likely makes it harder for DQ to prove confusion or dilution of the brand in the future.

"This goes in the category of, 'Be careful what you wish for,'" Kravitz said. "Today, it's safe to say Dairy Queen's trademark rights are weaker than when they started this thing."

Source: bostonglobe.com-Jon Chesto

Editor: IPR Daily-Selly