San Diego Trademark Attorney® Blog

Wendy's Battles "Frosty" Trademark Infringement

June 26, 2013

ice_cream.jpgSan Diego - As summer heats up, so does the fight over ice cream by two major food producers. Fast food giant Wendy's International, Inc. has filed trademark infringement claims against United Dairy Farmers, Inc. for its use of the trademark Frosties on United Dairy Farmers' prepackaged soft-serve ice cream.

The Frosty trademark, the well-known Wendy's dessert, has been in continuous use since 1969 and is one of the hamburger-maker's best-selling items. While the term Frosty originally referred to the company's chocolate soft serve ice cream drink, the Frosty brand has expanded to include floats, sundaes and ice cream cones. Wendy's fast food locations number 5,800 nationwide, making it the country's third largest hamburger fast food chain.

Wendy's argues that United Dairy's infringement of its Frosty ice cream is particularly flagrant, as its design for the infringing ice cream product is packaged in a yellow and red color scheme. Wendy's own design of a yellow package with a red logo has trade dress protection, which Wendy's argues United Dairy is also infringing.

Wendy's claims that United Dairy has refused to comply with a cease-and-desist letter it sent demanding it immediately stop sales of its Frosties prepackaged ice cream. As a result, Wendy's filed a lawsuit in federal court in the Southern District of Ohio, where both companies are headquartered.

In the lawsuit, the fast food giant is asking for both compensatory and punitive damages. Wendy's argues that the Frosties product will lead to a likelihood of confusion among consumers and will damage the reputation of the Frosty brand.

United Dairy has been producing its Frosties ice cream since 2005 and has distributed the product in grocery stores across 14 states and at the 200 convenience stores operated by the company. Wendy's complaint alleges that United Dairy has been marketing its ice cream products under the trademarks Frosties and Frosty Malts. Sales of these products have been primarily concentrated in Ohio, Kentucky and Indiana. Wendy's alleges it recently learned about these products, which explains why it has taken nearly 8 years since the products' introduction to act on it.