Wendy's Sues UDF Over Frosty Trademark

[The Interpreter]

http://www.dispatch.com/content/stories/business/2013/06/22/wendys-sues-udf-over-frosty-trademark.html

[Big Woody]

I dunno...I could see if they put a picture of Wendy on there, only instead of a redhead she's a brunette...something like that. I could never confuse a Wendy's frosty with a "frosties" from my freezer at home...even if it has red letters and yellow packaging.

[The Interpreter]

UDF could have chosen any name, but chose THAT one.

On the other hand, Wendy's, then and now a Columbus area company (with a brief interlude in Atlanta), took EIGHT YEARS to act? Really?

[shark6495]

In those 8 years, didnt the original Owner die, company changed leadership bought and sold Arby's ?

[THE_BEASTmaster]

Wendy's is not using the yellow cups for the Frosty Malts any more. They are using clear cups with clear dome tops on them, but UDF should rename their product to avoid confusion.

[The Interpreter]

Now. But that's a recent change. The red and yellow, though it has a strong association with Wendy's, first brings titan McDonald's to my mind.

[THE_BEASTmaster]

You do have a point there, Terp.

[CP&LERR Fan]

Really Wendy's would sue United dairy farmers for making Frostys with there colors. But still It might confuse people in thinking that it's Wendy's. Companies like Lego they don't sue other companies for copying of of the lego block.

[The Interpreter]

It's not just the colors. Do companies marketing building blocks call them Leggos? Frosty. Frosties.

And Lego has filed tens of lawsuits. Won a few, lost quite a few.

[shark6495]

I believe the blocks that are being sold are called "Blokos" and they even state on the package "They work with your other Lego sets."

[The Interpreter]

But they don't have just a slight off-spelling and call themselves Leggos.

The Frosty/Frosties is pretty blatant.

[bkroz]

Isn't one of the key questions whether or not consumers could be confused? I think in this case, they could be.

[Dieseltech20]

I wouldn't be. Unless the UDF one tastes good. The quality of the Wendy's Frosty has gone way down hill lately.

[The Interpreter]

Yeah, but the test is not whether YOU would be, but whether a typical consumer would be. Put another way, would they think Wendy's had something to do with the UDF product?

[TheCrypt]

If the basis of the test is confusion by the typical consumer, why do the Twisted Sisters win out over a small coffee shop? I don't think John Smith and Jane Doe would get a coffee shop and a rock band mixed up.

[The Interpreter]

That and trading on the good name and reputation of another. Would the typical consumer think the band had a connection to the coffee shop (or roller coaster) and thus be more likely to go there?

Would the UDF buyer of Frosties think they were somehow connected with Wendy's?

[Dieseltech20]

I don't see a Wendy's logo anywhere on the UDF products box. Of course some dimwitted individuals are confused by anything and everything.

[Leland Wykoff]

Examples of trade dress and mark infringement:

http://en.wikipedia.org/wiki/Trade_dress

File it under "food for thought."

[rcwizard13]

The fact it took them this long to act on this is pathetic. And same colors and name, really? Who cares?! I thought frostie was a term for an ice cream drink, not something that is Wendy's and only Wendy's. As previously said they use new cups now. Also, it's pretty hard to confuse the Wendy's logo/mascot with UDF's logo. If I got this case as a judge, I honestly would throw it out. I don't think it has any merit to it.

[The Interpreter]

The fact it took them this long to act on this is pathetic. And same colors and name, really? Who cares?! I thought frostie was a term for an ice cream drink, not something that is Wendy's and only Wendy's. As previously said they use new cups now. Also, it's pretty hard to confuse the Wendy's logo/mascot with UDF's logo. If I got this case as a judge, I honestly would throw it out. I don't think it has any merit to it.

Your fourth sentence makes Wendy's case.

If this came to you as a judge, hopefully the jury would make findings of fact (if there were a jury), and you'd make conclusions of law, both only after the case was presented by both parties and you had carefully reviewed all the applicable law in this complex field.

Still, your fourth sentence would be key if you were a witness.

So, given your attitude, should Six Flags be allowed to open a roller coaster named Beast so long as it's a different color and steel?

[shark6495]

To be 16 again and think all law suits have no merit....

Copywrite Law and Trademark Law is a very tedious business. People spend lifetimes and fortunes building a brand. Many will spend twice that amount to protect a brand.

Imagine you create a do-hickey. Everyone loves this Do-Hickey (which you copywrited the name). I thin put out my own Do-Hickie (a bit different spelling). Would you be mad? Would you be mad if I caused your profits to drop? Your dropped profits cause you to cut back on stores, or sell controlling interest in your brand. Now are you upset?

The UDF frosty may not a severe dent into Wedny's profits, but how many people could see a UDF frosty, think its the same as Wedny's pick up a 4 pack and then avoid going to Wendy's....

[Leland Wykoff]

rcwizard13 makes in interesting observation:

"I thought frostie was a term for an ice cream drink, not something that is Wendy's and only Wendy's."

If it can be shown enough people share this perception and belief Wendy's may well be found to have lost the trademark. As property, a trademark must be actively protected, least it fall into common usage, and become the generic term for a class of products or services.

Examples of trademarks which were lost due to a failure to protect the mark from generic usage includes aspirin, escalator, and cellophane. Once these terms became associated as the only descriptive form for a class of goods the mark was lost.

Contemporary products which have developed, and promoted, generic names for product classes to assist in the label product mark being applied only in association with a specific product include Xerox promoting photo copy to describe other than Xerox copies. Saran Wrap has promoted the generic term plastic film to describe, and thus distinguish itself from, other similar products. Jell-O also fights this battle by promoting the generic term gelatin. Band-Aid brand adhesive bandages applies pressure to avoid the ouch of having its trademark ripped away scab and all.

If Wendy's has been deficient, negligent, or unsuccessful in promoting a generic term such as dairy dessert to alternatively describe the broader class of ice cream style foods, such as a Frostie falls into, they may have already lost the battle.

Ask the former owner of Aspirin about that headache.

[rcwizard13]

The fact it took them this long to act on this is pathetic. And same colors and name, really? Who cares?! I thought frostie was a term for an ice cream drink, not something that is Wendy's and only Wendy's. As previously said they use new cups now. Also, it's pretty hard to confuse the Wendy's logo/mascot with UDF's logo. If I got this case as a judge, I honestly would throw it out. I don't think it has any merit to it.

Your fourth sentence makes Wendy's case.

If this came to you as a judge, hopefully the jury would make findings of fact (if there were a jury), and you'd make conclusions of law, both only after the case was presented by both parties and you had carefully reviewed all the applicable law in this complex field.

Still, your fourth sentence would be key if you were a witness.

So, given your attitude, should Six Flags be allowed to open a roller coaster named Beast so long as it's a different color and steel?

Yes, I would have no problem if Six Flags were to do that.

Leland brings up a very good argument extending on what I said. To go back to Shark, if my copyright isn't generic, I would be mad and sue. But as Leland did an excellent job further explaining, I believe frostie may have become too generic.

"To be 16 again and think all law suits have no merit...."

Um, no. I don't believe all law suits have no merit.

[Thrill_Biscuit]

Well, depending on the affirmative defenses in UDF's answer, especially whether Wendy's has sufficiently mitigated its damages over the last 8 years, I, for one, Sense a dismissal...

[The Interpreter]

If UDF were national, I might agree. It isn't.

Some trademarks that are NOT generic (yet?) that many misuse:

Kleenex.

Jell-O.

Kool-Aid.

Coke.

Xerox.

Compare:

aspirin

overhead door

thermos

escalator

Unless nearly everyone believes a term has become generic, the mark is protectable. Eight years is a problem. But a dismissal? I highly doubt it, unless there is a settlement.

I remember when I first saw the UDF product. I thought then UDF would be getting a cease and desist letter. Maybe it did. If the companies had been trying to settle since, that would be a whole different ball of wax.

Wendy's is huge. UDF isn't. I bet this settles.

[RollerNut]

Band-aid? I honestly thought that had already fallen to common use. Yes, I buy Band-aid brand brand-aids but I have heard their commercial advertise "Brand-Aid brand brand -aids". Icee is another one that I am gulity of using to refer to as a type of frozen drink when there is also Slush Puppy that makes icees.

[Thrill_Biscuit]

... Eight years is a problem. But a dismissal? I highly doubt it, unless there is a settlement.

I remember when I first saw the UDF product. I thought then UDF would be getting a cease and desist letter. Maybe it did. If the companies had been trying to settle since, that would be a whole different ball of wax.

Wendy's is huge. UDF isn't. I bet this settles.

You're right, Terpy. Upon further review: I was wrong... neither "fair use" nor "parody" can be applied to this case, because the smaller company is obviously, actively profiting from its product, and it appears to have almost an identical trade dress to the plaintiff's. "Estoppel" is out the window because the alleged infringement is happening presently. I guess the only thing left would be "who has the burden of proof" that the infringement was intentional; that is, unless the nature of infringement is one that requires no proof of "intent."

-Tb, who is not a lawyer, nor plays one on tv...

[The Interpreter]

Band-aid? I honestly thought that had already fallen to common use. Yes, I buy Band-aid brand brand-aids but I have heard their commercial advertise "Brand-Aid brand brand -aids". Icee is another one that I am gulity of using to refer to as a type of frozen drink when there is also Slush Puppy that makes icees.

The commercials refer to Band-Aid brand adhesive bandages. Slush Puppy and Icee are both brands and owned by, I believe, the same company. They are also very different products. One is a non-carbonated liquid soluttion with very small chunks of ice to which a flavored syrup is typically added; the other typically is a carbonated, ore-flavored foamy froth ( like 7-11's Slurpee, another branded version).

Companies fight like heck to maintain their trademarks. Newspapers that publish articles about "Cokes" can attest to that. Restaurants that quietly serve a Pepsi routinely when a customer specified a Coke can, too.

[DontWantToWait42mar0]

If you ask me, I think it's blatant that UDF wanted to pass their product off as something associated with the dessert from Wendy's.

[RollerNut]

What about the knockoff food brands at discount food stores that what similar packing to their namebrand counterparts.