Wendy’s Frosty Lawsuit
Wendy’s has kicked off the Summer frozen treat season by suing a competitor for knocking off its famous “Frosty” trademark and trade dress. United Dairy Products, makers of Homemade brand ice cream, have allegedly been selling “Frosty” and “Frosty Malts” in packaging strongly reminiscent of Wendy’s familiar yellow-and-red cups since 2005. Does Wendy’s have a case against their sweet, frozen competitor?
In this post, I’ll be referring to Wendy’s trademark “Frosty,” as well as their trade dress. I’ve written about trade dress in the past – here’s a post from a few years ago that, coincidentally, concerns the In-N-Out burger chain – but in this context it concerns the overall look and feel of a product’s packaging.
Wendy’s has been selling desserts under the brand name “Frosty” since 1969, around the time Dave Thomas opened the first Wendy’s restaurant. Their complaint, filed in US District Court last week, claims that they are known for their quality control and “select, premium ingredients.”
The nutrition information on Wendy’s website lists the following ingredients for the Original Chocolate Frosty:
Milk, Sugar, Corn Syrup, Cream, Whey, Nonfat Milk, Cocoa (processed with alkali), Guar Gum, Mono and Diglycerides, Cellulose Gum, Carrageenan, Calcium Sulfate, Disodium Phosphate, Artificial Flavor, Vitamin A Palmitate. CONTAINS: MILK.
I’m not sure why, given today’s awareness of nutrition, corn syrup should be considered a “select, premium” ingredient in a milkshake, but let’s play along.
Interestingly, although Wendy’s has clearly been using the Frosty name for decades, a search of the United States Patent and Trademark Office database shows that they did not apply to register FROSTY as a Federal trademark until June 6, 2013 (their application can be found here.) One may assume that they did so in anticipation of filing this lawsuit.
This is all leading me to one conclusion: Wendy’s knows, and has known for years, that “Frosty” is at least descriptive, and possibly generic, for these types of frozen treats. A Google search reveals countless examples of desserts with “Frosty” in their names, as well as ice cream shops named “Frosty’s” or variations thereof.
I suspect that Wendy’s never previously applied to register “Frosty” as a Federal trademark because they knew it would be a long shot at best. They have simply never been able to rid the world of competitive Frosties. Presumably UDP’s products presented a strong enough challenge that Wendy’s was finally motivated to take this aggressive action.
I think that Wendy’s has a stronger argument that UDP has appropriated its distinctive trade dress. Wendy’s has been dispensing its Frosties in versions of the yellow-and-red cups since 1969. While UDP may be within its rights in producing and marketing a similar product under the name “Frosties,” they might have gone too far in selecting a nearly identical style of packaging.
As far as taste goes, I’ll steer clear of this one – I’d prefer to avoid a repeat of my controversial Nutella comments.
