UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES - GENERAL

Case No.CV 10-03677-RGK (SSx)DateSeptember 3, 2010TitleYOGUBLIZ, INC. v. AMERICAN DAIRY QUEEN CORP.

CV-90 (10/08)

CIVIL MINUTES - GENERAL

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Present: TheHonorableR. GARY KLAUSNER, UNITED STATES DISTRICT JUDGESharon L. WilliamsNot ReportedN/ADeputy ClerkCourt Reporter / RecorderTape No.Attorneys Present for Plaintiffs:Attorneys Present for Defendants:Not PresentNot Present

Proceedings: (IN CHAMBERS)

Order Re Defendant’s Motion for Preliminary Injunction(DE 19)

I.INTRO

Plaintiff Yogubliz, Inc. (“Yogubliz”) filed an action for declaratory judgment against DefendantAmerican Dairy Queen (“Dairy Queen”) on May 17, 2010. Yogubliz seeks declaratory judgment thatits “Blizzberry” and “Blizz Frozen Yogurt” products do not infringe trademarks on Dairy Queen’s“Blizzard” line of products. On June 7, Dairy Queen brought counterclaims alleging (1) trademark infringement under the Lanham Act, (2) trademark dilution under 15 U.S.C. § 1125(c), (3) falsedesignation under the Lanham Act, and (4) unfair competition under the California Business andProfessions Code.Presently before the Court is Dairy Queen’s motion for Preliminary Injunction. For thefollowing reasons, the Court

Denies

the motion.

II.FACTUAL BACKGROUNDA. Dairy Queen’s Blizzard

Dairy Queen franchises its fast food restaurants across America. These franchises’ menus

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Dairy Queen does not identify any location other than a Dairy Queen restaurant where theBlizzard products may be purchased.

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include a line of frozen dessert products marketed under the “Blizzard” mark.

The primary Blizzardproduct is soft serve ice cream mixed with pieces of candy, cookie, or fruit served in a cup. None of theBlizzard products are made with frozen yogurt. Dairy Queen has used the Blizzard brand to marketproducts since 1946. Blizzard products are advertized nationally in print, television, radio, and Internetmedia.The Dairy Queen website includes scattered use of the abbreviation “Blizz” to refer to theBlizzard products. Dairy Queen has also provided evidence of customers using the word blizz to referto Blizzard products. It is unclear from the evidence presented if this is a widespread phenomenon.Dairy Queen has not presented evidence of any significant efforts attempting to popularize Blizz as amark abbreviating Blizzard.The Blizzard mark is registered with the U.S. Patent and Trademark office. Yogubliz does notdispute that the Blizzard mark is validly registered.

B.Yogubliz’s Blizz Frozen Yogurt

Yogubliz began operating frozen yogurt shops in 2009. Yogubliz operates stores under twonames, Blizz Frozen Yogurt and Blizzberry. At this point, Yogubliz stores are located in Los AngelesCounty, California and Las Vegas, Nevada. These stores sell frozen yogurt, to which customers mayadd fruit, cookie, or candy pieces. The frozen yogurt products bear the mark “Blizz Frozen Yogurt.”Dairy Queen contends, and Yogubliz does not dispute, that Yogubliz advertizes its products throughtelevision, print and Internet media. The U.S. Patent and Trademark Office granted registration of Yogubliz’s mark Blizzberry on May 5, 2009.

C.The Lawsuit

In May 2010, attorneys representing Dairy Queen sent Yogubliz a letter asserting that BlizzFrozen Yogurt infringed the Blizzard mark. The letter demanded that Yogubliz cease use of this mark.Soon afterwards, Yogubliz filed a complaint with this court seeking declaratory judgment of DairyQueen’s trademark infringement and related claims. With its Answer, Dairy Queen filed counterclaims

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Registration of a trademark constitutes prima facie evidence o the validity of the mark and theregistrant’s exclusive right to use the mark on goods identified in the registration.

Brookfield Commc’ns

,174 F.3d at 1047. Dairy Queen has presented evidence that its Blizzard mark is registered.

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asserting trademark infringement, trademark dilution, false designation, and unfair competition underfederal law.Dairy Queen now seeks to preliminarily enjoin Yogubliz from using Blizz, Blizz FrozenYogurt, or any other mark that is confusingly similar to the Blizzard mark. The preliminary injunctionDairy Queen requests would also require Yogubliz to recall all marketing and advertising materials thatincorporate Blizz or Blizz Frozen Yogurt marks.

III.JUDICIAL STANDARD

“A preliminary injunction is an extraordinary remedy never awarded as of right.”

Winter v. Natural Res. Def. Council, Inc.

, 129 S. Ct. 365, 376 (2008). A plaintiff seeking a preliminary injunctionmust establish that (1) it is likely to succeed on the merits, (2) it is likely to suffer irreparable harm inthe absence of preliminary relief, (3) the balance of equities tips in its favor, and (4) an injunction is inthe public interest.

Id.

at 374.

IV.DISCUSSION

Dairy Queen contends that it is entitled to a preliminary injunction because it has satisfied theabove-stated preliminary injunction test. The court disagrees. As set out below, Dairy Queen has failedto establish that it is likely to succeed on the merits on any of its claims. Dairy Queen’s request forpreliminary injunction is thus

Denied

A.Trademark Infringement Claim

To succeed on the merits of a trademark infringement claim under the Lanham Act, petitionermust establish that respondent’s mark is “confusingly similar to [petitioner’s] valid, protectable mark.”

Brookfield Commc’ns v. W. Coast Entm’t Corp.

, 174 F.3d 1036, 1046 (9th Cir. 1999). Dairy Queen haspresented uncontroverted evidence that its Blizzard mark is valid and protectable.

Therefore, DairyQueen’s claim turns on whether it can establish a likelihood that the marks will be found to beconfusingly similar.

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