By Charisma L. Miller, Esq.
Brooklyn Daily Eagle
Owners of suspected fake Mister Softee ice cream trucks are being asked to explain themselves in Brooklyn Federal Court.
The Mister Softee brand is a federally protected trademark and the company provides franchises to various entities and individuals for the exclusive right to sell ice cream in a signature Mister Softee truck.
Four trucks have been spotted on the streets of Queens that the company alleges are unlawfully utilizing and benefiting from the Mister Softee brand.
According to court papers, lawful Mister Softee trucks are white with blue trim borders and blue wheels. The wording “The Very Best” appears above the name “Mister Softee” in red cursive print. Franchised trucks also contain a distinctive cartoon logo depicting a soft ice cream cone with a smiley face and bow tie.
The suspected infringing vehicles are also white with blue trim borders. Many contain decals made to resemble Mister Softee insignia and other items that are “confusingly similar to the one[s] used by Mister Softee franchises,” the lawsuit asserts.
“Mister Softee is a well-known brand, especially in New York,” Jeffrey Zucker, lawyer for the Mister Softee company, told the Brooklyn Daily Eagle. “People want to copy it and get a free ride on the trademark.”
The suspected offending vehicles were looked into after complaints were forwarded to Zucker’s office. “We get calls from members of the public regarding possible infringing trucks,” Zucker explained. “We first hire private investigators to check out the complaint. Then we write a letter advising the truck owner that they are infringing on a trademark and demand that they cease and deist. More times than not, the truck owner ignores the cease and desist letter, and a lawsuit is then filed.”
The present suit contends that persons who violate trademark law and use the Mister Softee brand to sell ice cream without permission harm not only the Mister Softee brand but also the consuming public.
“Ice cream is a milk-based product. Therefore, proper guidelines and requirements need to be followed in order to ensure products are stored and dispensed in accordance to health standards,” said Zucker. Depots throughout New York, including Brooklyn, are staffed with Mister Softee inspectors.
Infringing trucks, on the other hand, are not under the supervision of the Mister Softee company and are therefore not subject to the extensive inspection of a licensed Mister Softee truck, the lawsuit argues.
The ultimate goal of the trademark lawsuit is to force the suspected infringers to remove all connection to Mister Softee from their ice cream trucks.
“We just want them to paint their trucks over and remove any and all reference to Mister Softee,” Zucker stated. Mister Softee also is seeking attorneys’ fees.
Although this was not requested, Mister Softee is entitled, if the suit is successful, to receive the triple the amount of profits that the offending trucks made while using the Mister Softee trademark.
Mister Softee is a family-owned business and has owned its trademark since 1956. “There is nothing wrong with competition,” Zucker noted. “Just compete under your own name.”