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You see them everywhere this time of year: ice cream trucks! They are hard to miss—or—resist.

In certain parts of the country, they are the unmistakable blue-and-white Mister Softee trucks, complete with the anthropomorphic, well-dressed, ice cream cone smiling from their sides. I have happy childhood memories of Mister Softee’s chocolate dipped cone, and I am making new memories with my family today.

In fact, we happily partook of Mister Softee treats in New York just a few weeks ago. I commented then on the iconic branding I remembered from childhood(to much eye-rolling from my kids). But that’s what you get when your mom is an IP lawyer: going for ice cream results in a discussion of branding and trademarks.2014-07-29_Mr-Softee-TM-Infringer_Jen

Well, as it turns out, that iconic branding, which Mister Softee has aggressively protected over the years, recently was the subject of litigation. In June, Mister Softee sought and obtained a preliminary injunction against a former franchisee who started his own competing ice cream truck business. He called it “Master Softee” and used the same blue and white color scheme and a smiling ice cream cone logo.

Slam-Dunk Trademark Infringement

This is textbook, slam-dunk trademark infringement. Mister Softee’s name, color scheme, and logo were all registered trademarks, and it was very clear that “Master Softee” copied them and intended to create confusion among customers. The Federal District Court for the Southern District of New York concluded as much, calling the Master Softee trucks “strikingly similar” and finding it “obvious that Defendant adopted his truck designs with the object of achieving an appearance similar” to the plaintiff’s trucks.

So beyond my summertime obsession with ice cream, what is interesting about this case? Well, what struck me about the case was the intersection between the trademark issues and the contract claims, because I often counsel clients about contract terms and structure.

Protecting Your Marks Is a Win-Win—For You

You see, Mister Softee sued for both trademark infringement and breach of the non-compete provisions of its contract with its former franchisee. Non-compete provisions can be tricky because courts tend to disfavor them. You want to craft a non-compete provision that is broad enough to cover your company’s legitimate business interests, but sufficiently narrowly tailored to pass scrutiny. Too broad, and courts in some jurisdictions will strike the provision entirely, leaving you with nothing. In other jurisdictions, like New York, courts may re-write the provision for you, so that it may be enforced.

Mister Softee’s non-compete provision was fairly broad, prohibiting franchisees from entering into any aspect of the ice cream business in New York City and Long Island for two years after termination of the franchise agreement. It’s the kind of provision that many courts would probably find unenforceable. But here, the court was inclined to enforce it at the preliminary injunction stage, albeit in a slightly narrowed form that applied only to retail sales of ice cream. The opinion indicates that the obvious trademark infringement and attendant bad faith made the non-compete argument a lot stronger. If the former franchisee had simply started his own ice cream truck business without any trademark infringement, the non-compete case would have been much weaker and likely would not have resulted in a preliminary injunction.

This is just another reason to make sure you are protecting your trademarks, like Mister Softee. In this case, having strong and well-protected marks helped Mister Softee demonstrate a legitimate business interest in its non-compete provision at the preliminary stage and, ultimately, put it in a much stronger litigation position.

What can we learn from Mister Softee? Protect your marks, and you can win in more ways than one.

2 Comments

  • Well done analysis in a short space. Suggest you follow up with our contempt motion. The former franchisee disregarded the judge’s order regarding both the infringement and non-compete. In Court this Friday.

  • Thanks, James. For those of you following along, because the defendant continued to operate after the injunction issued, Mister Softee brought a contempt motion. The judge granted the motion, threatening the defendant with jail if he did not comply with court orders. Congratulations to James and the Mister Softee team. We’ll keep following the story (and dreaming of that chocolate dipped cone).

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