A federal courtroom in Salt Lake City could go "totally nuts" Thursday as a half dozen attorneys from four states fight over ice cream.
At issue is a dispute between Southern Foods Group and Ben & Jerry's Homemade Inc. over the "Totally Nuts" trademark that both firms claim as their own.Dallas-based Southern Foods Group filed a lawsuit earlier this year alleging that the Vermont-based Ben & Jerry's began using the Totally Nuts label more than a year after Southern Foods applied it to its Borden/Meadow Gold ice cream product.
"Southern Foods created its ice cream and the mark Totally Nuts through the expenditure of time, labor, skill and money," the suit said. "Defendants have used Southern Foods' mark in competition with Southern Foods, thereby Ben & Jerry's gained an unfair advantage with little or no burden of any development of the mark or goodwill associated there-with."
For its part, Ben & Jerry's attorneys contend the Vermont company's rights to the "Totally Nuts" name predate Southern Foods' trademark application.
"As a result, any use by Borden/Meadow Gold of the trade-mark `Totally Nuts' would be a violation of the rights of Ben & Jerry's in the trademark `Totally Nuts," and further is misleading to the public and an unfair practice."
Why are the two firms going nuts over the issue? Money. For example, in its court filings, Southern Foods said in the past year alone, it has sold more than 150,000 half-gallons of "Totally Nuts" ice cream, representing gross sales of more than $300,000.
Southern Foods began selling its "Totally Nuts" product in May 1997. Ben & Jerry's says it launched its "Totally Nuts" product with a well-publicized event in Washington, D.C., in June 1996.
Southern Foods argues Ben & Jerry's Washington event was a one-time"gimmick" protesting defense spending at a news conference, "not trademark use."
It was not until after Southern Foods began selling "Totally Nuts" that Ben & Jerry's launched its nationwide sales of "Totally Nuts," the lawsuit said.
"The concurrent use of Totally Nuts by Southern Foods and Ben & Jerry's threatens consumers with probably confusion and Southern Foods with irreparable harm for which preliminary injunctive relief is both appropriate and necessary," Southern Foods said in its filings.
Its motion for a preliminary injunction is scheduled for a hearing Thursday afternoon before U.S. District Chief Judge David Sam.