Trademark Attorney Morris Turek

Morris E. Turek

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Dairy Queen v. Yogubliz – A “Blizzard” of Trademark Litigation Like No Other

If you happen to be from California (or enjoy gambling at the Mirage or Palms casinos in Las Vegas), you may be familiar with a small chain of frozen yogurt shops called “Blizz Frozen Yogurt” owned by a California company by the name of Yogubliz, Inc.  According to its website, Yogubliz currently operates eight locations that serve a variety of treats made with frozen yogurt, including sundaes, smoothies, shakes, and blended coffee drinks.  Although I am not entirely clear on the exact history of the company, my research indicates that at least some of the Blizz locations were once called “Blizzberry.”  The Trademark Office’s records show that Yogubliz applied to register BLIZZBERRY for “frozen yogurt” back in June 2008 and was granted a federal trademark registration for the name about a year later.  The specimen that Yogubliz submitted with its application was a website screenshot that prominently displays the BLIZZBERRY mark and that looks completely different from the current website.  Perhaps Pinkberry, Inc. (which operates a chain of frozen yogurt shops under the name PINKBERRY) wasn’t too sweet on Yogubliz’s use of BLIZZBERRY and “encouraged” Yogubliz to change the name.  In fact, I note that Pinkberry filed an extension of time to oppose the BLIZZBERRY application but never followed through on filing the opposition.  Anyway, I believe Yogubliz now only uses BLIZZBERRY as the name for one of its yogurt smoothies.

Unless you’ve been living under a rock for the past 65 years, I’m sure you are familiar with Dairy Queen’s delicious “Blizzard” ice cream confections.  Diary Queen has been using the name BLIZZARD since 1946 and has owned a federal registration for the mark since 1952.  Enough said about this famous trademark.  But, in the event you have been living under a rock and know nothing about Dairy Queen’s Blizzard desserts, I urge you to check out the DQ website to get up to speed with the rest of civilized society.

Now let me get back to Yogubliz.  In November 2009, (only six months after receiving its registration for BLIZZBERRY), Yogubliz applied to register BLIZZ FROZEN YOGURT for “frozen yogurt.”  The trademark examining attorney assigned to Yogubliz’s application initially refused registration of the mark on the basis that it was likely to cause confusion with Dairy Queen’s BLIZZARD mark.  Undeterred, Yogubliz argued that its mark was not likely to cause confusion because (1) BLIZZ is not a common truncation of the word BLIZZARD and, therefore, consumers would not perceive BLIZZ to be associated with Dairy Queen or its BLIZZARD product, and (2) Dairy Queen sells only ice cream and not frozen yogurt.  Somewhat surprisingly, the trademark examining attorney was persuaded by these arguments to withdraw her rejection and allowed Yogubliz’s mark to be published for opposition.

At some point during all of this, Dairy Queen fired off a letter to Yogubliz demanding that it cease and desist from all further use of BLIZZ and BLIZZBERRY based on its prior rights in the BLIZZARD mark.  Not only did Yogubliz fail to comply, it actually turned around and filed a federal lawsuit against Dairy Queen on May 17 requesting that the Court issue an order declaring that its BLIZZ and BLIZZBERRY trademarks do not infringe upon any of the rights Dairy Queen has in its BLIZZARD mark.  In response, Dairy Queen (1) counterclaimed against Yogubliz for trademark infringement and trademark dilution, (2) filed a cancellation proceeding against Yogubliz’s trademark registration for BLIZZBERRY, and (3) filed an opposition against Yogubliz’s pending trademark application for BLIZZ FROZEN YOGURT.  You can read a little more about the federal infringement litigation here and here.

You know, I really don’t see how Dairy Queen could lose this case.  Unquestionably, BLIZZARD is an arbitrary and famous trademark entitled to the broadest scope of protection under U.S. trademark law.  DQ has owned a federal registration for the mark for over half a century and the Blizzard is probably the most well-known item on its menu (sorry all you Peanut Buster Parfait fans).  More than a billion Blizzards have been sold over the years and Dairy Queen has spent hundreds of millions of dollars promoting its product.  It is impossible for me to believe that Yogubliz wasn’t attempting to capitalize on the goodwill associated with DQ’s BLIZZARD trademark because there is simply no competitive need or reason for Yogubliz to have adopted BLIZZ or BLIZZBERRY for frozen yogurt other than to unfairly hitch a ride on Dairy Queen’s immense success.  In fact, the more I think about it, the more I am convinced that Yogubliz’s original BLIZZBERRY trademark was an intentional rip-off and combination of Dairy Queen’s BLIZZARD and Pinkberry’s PINKBERRY marks.

In sum, Dairy Queen has little choice but to challenge Yogubliz because, if it doesn’t, it will open the door for other frozen dessert shops and frozen dessert manufacturers to use trademarks that are similar to BLIZZARD or likely to dilute the distinctive quality of the famous BLIZZARD name.  But, of course, Yogubliz can’t go down without a fight either because it will cost Yogubliz millions of dollars to phase out its trademarks and to implement new ones.  In fact, and adverse judgment might even bankrupt Yogubliz.  Good thing Yogubliz  has plenty of frozen yogurt in which to drown its sorrows if such a judgment is handed down.

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3 Responses to Dairy Queen v. Yogubliz – A “Blizzard” of Trademark Litigation Like No Other

  1. Stephen Abraham says:

    The rumor of Yogubliz’ demise is greatly exaggerated. Nothingstanding your beliefs as to what motivated Yogubliz, you got it wrong, and the federal judge in the case got it right (as did the trademark examiner). DQ’s motion for preliminary injunction DENIED. Read the order. Not close on any of your points.

  2. Morris Turek says:

    Stephen, thank you for leaving a comment. However, as you know, this is only a preliminary injunction that was denied and not a final ruling on the merits. Although reasonable minds may differ, I think that the adoption by your client of BLIZZ is exactly what the doctrine of trademark dilution is supposed to protect against. I mean, would it be OK for an ice cream or yogurt shop to adopt the mark BLIZZA in the face of DQ’s rights in BLIZZARD? What about BLIZZAR? Clearly, your client’s mark is a truncation of DQ’s BLIZZARD just like these other examples. There may be no likelihood of confusion, but if the federal dilution statute is not going to protect against these types of other uses, then honestly I don’t know when it would.

    Anyway, I look forward to following the case.

  3. mike says:

    BLIZZARD is not arbitrary for DQ’s product. It’s quintessentially suggestive. This distinction matters in this particular dispute. Although inherently distinctive, this suggestive mark is not overwhelmingly “conceptually” strong on the spectrum of distinctiveness.

    As a consumer, I can’t imagine that there is a LoC here, but I’d be very interested to see what discovery turns up on the bad faith issues. Regardless, this was appropriately hopeless as a P.I. case.

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