The sight of a Mister Softee ice cream truck is a reminder that
summer is here, and its jingle draws children to run and grab a
cone to enjoy. Mister Softee trucks are sprinkled around 15 states,
with over 600 trucks operated by franchisees. Although the trucks
move slowly enough for a child to catch up, this number of mobile
franchises can be difficult for a franchisor to monitor.
In a recent attempt to police its brand, Mister Softee took aim
against a former franchisee that began operating "Master
Softee" and "Soft King" trucks. The underlying case,
Mister Softee, Inc. v. Tsirkos, accused Dimitrious Tsirkos
of trademark infringement and breach of the Franchise Agreement
with Mister Softee. Tsirkos was authorized to operate sixteen
Mister Softee trucks around Queens and the Bronx, but allegedly
breached the Franchise Agreement by failing to make royalty
payments and park the trucks in a designated depot. After ending
his franchise relationship with Mister Softee, Tsirkos continued to
operate ice cream trucks labeled "Master Softee" and
"Soft King" in the same areas he operated Mister Softee
trucks, in violation of the Franchise Agreement's non-compete
provisions, according to the complaint.
In its June 5, 2014 decision, the court for the Southern District
of New York granted Mister Softee's request for preliminary
injunction, finding the names and designs of Tsirkos's trucks
confusingly similar to Mister Softee's. The injunction
prohibits Tsirkos from operating trucks with designs and names
confusingly similar to Mister Softee's trademarks –
including the "Mister Softee" name, cone figure, jingle,
and truck design – and operating trucks within a five mile
radius of Tsirkos's prior Mister Softee territories.
The proverbial cherry on top came when Tsirkos continued to operate
"Master Softee" trucks in Manhattan, violating the
injunction. The court found that Mister Softee demonstrated Tsirkos
violated the order by providing photographic evidence of
"Master Softee" trucks operating around Manhattan
starting just two days after the injunction was granted.
Information also came to light that at least two other individuals
owned and operated "Master Softee" trucks, proving that
this is not the end of the road for Mister Softee's
battle.
The "Master Softee" case garnered a great deal of media
attention, some of which noted Mister Softee's strict
enforcement of its Franchise Agreements and protection of its
trademarks and trade dress. This is not the first time a Mister
Softee franchisee has gone off course – earlier this month
the District Court of New Jersey granted a similar injunction
against Reza Amanollahi who was allegedly operating similarly
infringing trucks (although there was dispute over the actual
ownership of the trucks). These recent decisions follow prior cases
in which Mister Softee filed trademark infringement suits against
other ice cream truck operations, though not franchisees, for using
markings confusingly similar to those registered by Mister
Softee.
Although monitoring 600 trucks for compliance is not always a
treat, Mister Softee's consumer base may be favorable when a
court evaluates its trademark infringement claims. As noted by the
Tsirkos court, the designs on trucks are meant to be seen
from a distance, allowing a court to review the similarity of the
marks or designs at issue with less scrutiny. Additionally, Mister
Softee's consumers are (mostly) children, deemed as
"unsophisticated consumers."
So while it may be a lofty task for Mister Softee to police its
moving franchises, certain factors have favored Mister Softee and
allowed it to succeed on trademark infringement claims, keeping the
brand from melting away.
*Michael Isselin is a summer associate and not licensed to
practice.
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