18 July 2017Trademarks

Mister Softee sues former licensee after freezing him out

Mister Softee has sued a former licensee, accusing him of infringing trademark rights by operating an ice cream stand.

The ice cream truck franchisor claimed that Carl Gallucci had infringed its trademarks and trade dress in a filing (pdf) at the US District Court for the District of New Jersey on Thursday, July 13.

Mister Softee has been  operating since 1956, and sells soft-serve ice cream and other frozen desserts.

Its licensees are authorised to use Mister Softee’s trade names, service marks and trademarks, and are allowed to operate under the Mister Softee “business system”, according to the suit.

Mister Softee owns the trademarks ‘Mister Softee’ and related logos, which are registered at the US Patent and Trademark Office (numbers 2128918, 0667335 and 0663456).

It also owns the Mister Softee musical jingle at registration number 2218017 and the mark ‘Conehead’, which refers to the Mister Softee cartoon logo of an ice cream cone with a smiling face and bow tie.

According to the suit, Gallucci entered into a licence agreement with Mister Softee in 2010 and a second one in 2012.

Gallucci failed to pay the licence fee in February this year, Mister Softee claimed. On July 12, Mister Softee terminated the licence.

The claim alleged that Gallucci has continued to use the trademarks and “wilfully intends to trade on Mister Softee’s reputation and cause dilution of the Mister Softee marks”.

“Because the defendant is no longer affiliated with Mister Softee, Mister Softee has no ability to ensure that defendant is storing and dispensing his ice cream and other food products in compliance with applicable health standards and laws,” said the suit.

Mister Softee is seeking a preliminary and permanent injunction, profits, triple damages, destruction of infringing material, and an order requiring Gallucci to return the music boxes in his possession that play the Mister Softee song.

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