January 30, 2015

Trademarkology: Mister Softee Comes Down Hard on Imposters

Ice cream lovers can rest a little easier, now that Mister Softee has shut down an unscrupulous quartet of competitors.

The Mister Softee company sells ice cream from trucks that play a jingle to announce their presence. It appears that a gang of rogues in New York was using ice cream trucks that looked very similar to Mister Softee trucks in attempt to get business from ice cream fans who were either not sharp-eyed enough to notice that it wasn't a real Mister Softee truck, or who didn't much care. Since much of the clientele is probably little kids, it's a good bet that a lot of the customer base falls into both of those groups.

According to the claims in the lawsuit, Mister Softee operates through franchisees â it grants independent operators the right to use its trademarks and business methods and to use specially-designed "mobile trucks" to sell ice cream and related treats. (I am assuming they discovered early on that "mobile trucks" were much more effective at selling the product than "immobile" trucks â although the latter would be easy to catch.) Mister Softee's complaint enthusiastically describes how distinctive its trucks are and how the ice cream-hungry public recognizes them as being Mister Softee's trucks.

Here's a photo of an honest-to-gosh Mister Softee truck (taken from a document filed in the lawsuit):

Photo 1 Real Truck

Now here's a photo of one of the bogus trucks:

Photo 2 Bogus Truck

Mister Softee is obviously no softy when it comes to trademark protection: he has cut no corners in registering his marks, and a list of his registrations is a good menu of the types of trademarks that can be protected. He has registered the words MISTER SOFTEE, the MISTER SOFTEE logo including an ice cream cone-headed man, the trade dress of the truck, and even the music the truck plays. Nicely done, sir!

The "trade dress" is the distinctive look of the truck, and that seems to be the real basis for the lawsuit. Protection for trade dress requires some sort of showing that the public associates the trade dress with Mister Softee â basically kids know to come running when they see the blue and white truck, and they know it's not just any old ice cream truck, but a Mister Softee truck. In the registration, Mister Softee describes the protected trade dress this way: "The color(s) BLUE AND WHITE is/are claimed as a feature of the mark. The mark consists of a blue horizontal stripe at the bottom of the white truck with blue wheels and includes the word mark Mister Softee and the design of an ice cream cone head. The mark also includes a sundae container with the Mister Softee word mark and milkshake container with the Mister Softee ice cream cone head included therein." The registration includes a drawing that shows what the truck looks like and indicates which parts are blue.

If you carefully compare the photo above with the description of the registered trade dress, you'll see that the offending truck actually lacks several of the claimed elements: no words "Mister Softee," no ice cream cone-headed man, no blue wheels, no sundae container with the Mister Softee word mark (the decal says "Soft Serve"), and no milkshake container with the Mister Softee ice cream cone head. To my eye it seems like it might well be confusingly similar even without those, which is enough for infringement, and it looks like a good bet that it was intended to confuse. But the list of elements recited in the complaint is notably shorter than the list in the registration â just four items, and one of those is the sliding glass window used to service customers, which to my mind is something that is just about unavoidable in an ice cream truck. The defendants' trucks were not all the same, and it's possible that one or more of the defendants could have beaten the rap.

But we'll never know, because Mister Softee got a default judgment. That's what happens when you get sued but don't show up in court to contest the matter â if the plaintiff submits enough evidence to support a judgment, the defendant loses even though he might have had some decent arguments. The judge entered judgment for over $7,000 in attorneys' fees, plus over $1,000 in costs. He also ordered the defendants to stop infringing and to alter their trucks so they wouldn't look like Mister Softee's trucks. Whether the ice cream head can collect that money is a matter for him to worry about.

For a real treat, check out this video with some vintage Mister Softee commercials, and that trademark jingle â but be warned, it's a real earworm:

Finally, here's a photo of a Mister Softee truck in England. I'm not sure if it's the real thing or not â Mister Softee's website doesn't refer to franchisees there. But it's a nice photo anyway:

Photo 3 Mr Softee Truck Goodwin

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