PHOSITA

Authored by Julie Langdon, July 30, 2015 at 3:09 pm

Did you know that July is National Ice Cream month?   To celebrate I decided that a perfect blog post is a discussion about ice cream and intellectual property litigation.  So, this post is dedicated to “ice cream, you scream, we all scream for ice cream!”   

There have been many IP (mostly trademark infringement) lawsuits in the past few years relating to our favorite frozen treat.  Here are some highlights:

The Frigid Dispute of the Softee Trucks

In 2014, two New York-based ice cream truck companies “Mister Softee” and “Master Softee” argued over Master Softee’s use of Mister Softee’s federally registered logo and sensory marks and its trade dress, among other issues.  The owner of the “Master Softee” trucks, Dimitrios Tsirkos, was a prior franchisee of “Mister Softee.”  Early on in the litigation, the court issued a preliminary injunction and enjoined the Defendant from using Mister Softee’s marks and any confusingly similar marks.  However, that order did not seem to halt the Defendant.  So, later in 2014, the court held the Defendant in civil contempt for failing to comply with the preliminary injunction order, and awarded sanctions in favor of the Plaintiffs.  In May the court entered a default judgment against the Defendant and ordered him to pay Plaintiffs attorneys’ fees and costs.  In the end, Mister Softee was not left out in the cold.  Mister Softee Inc. v. Tsirkos, No. 14 Civ. 1975 (LTS)(RLE) (S.D.N.Y. 2014).

The Big Texas “Ice Cream” Battle

Everything might be bigger in Texas, but Texas itself may not be big enough for two Amy’s (or maybe it is after all).  In 2013, Amy’s Ice Creams, Inc. (“AIC”), which is a 30+ year old company of ice cream shops based in Austin, Texas, filed suit against Amy’s Kitchen, Inc. (“AK”) apparently stemming from oppositions pending in the TTAB relating to AIC’s previously filed trademark applications, and due to AK’s pending launch of a non-dairy frozen dessert.  AIC filed suit against AK for various trademark-related claims, including, infringement, unfair competition, dilution, among others based on AIC’s registered Texas trademark.  AK counterclaimed.  Both parties filed Motions for Summary Judgment, but after the court determined that both parties’ motions had to be denied, the parties voluntarily dismissed the case.  Shortly thereafter, AIC expressly abandoned their pending trademark application which would cover ice cream, and limited their other federal registrations to “restaurant services featuring ice cream; catering.”  Perhaps the parties got litigation “cold feet” and decided an amicable resolution in TTAB was sweeter than a litigious one.  Amy's Ice Creams, Inc. v. Amy's Kitchen, Inc., No. 1:13 cv 00449 SS (W.D. Tex. 2013).   

The Chilling Case of Frozen Treat Porn

In 2012, Ben & Jerry’s filed suit against the producer of “Ben & Cherry’s” adult DVDs alleging a host of trademark-related claims.  Not only did the video series have a name similar to Ben & Jerry’s, but the adult film titles were similar to Ben & Jerry ice cream flavors (mostly inappropriate for DC’s blog), and the DVD jackets contained aspects such as green grass, grazing cows, and white clouds similar to Ben & Jerry’s packaging.  Also, rather than the well-known slogan “Vermont’s Finest” the DVDs referenced “Porno’s Finest”.  Needless to say, once Ben & Jerry’s discovered the cold truth about this new type of “food porn,” it wanted to put an end to it.  The court swiftly preliminarily enjoined the producer of the adult DVDs.  Ultimately the parties settled, and the Defendants were permanently enjoined from using similarly confusing marks, and from engaging in conduct which would dilute Ben & Jerry’s marks, or would likely confuse, mislead or deceive potential purchasers and other members of the public.  Ben & Jerry's Homemade, Inc. et al v. Rodax Distributors, Inc. et al, No. 1:12-cv-06734-LAK (S.D.N.Y. 2012). 

While there are sure to be more cases over the past few years, we will leave those for next year’s post.  Now, go get yourself some ice cream before summer is over!