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Sep 18, 2017

Mister Softee Takes Hard Line Against Former Licensee

As a kid in New York, I knew Mister Softee ice cream. We all did. Like Pavlov’s dogs, as soon as we heard the iconic musical jingle coming from a Mister Softee truck we would stop everything and run to meet the truck to buy ice cream. The sound was as distinctive as a Harley Davidson motorcycle.

In operation since 1956, Mister Softee has amassed a collection of trademarks, several of which are registered with the United States Patent and Trademark Office. These trademarks include “Mister Softee,” related logos, the iconic musical jingle, and other terms including “Tu-Tone Cone,” “Twinkletop Conehead,” “Cherry Top Conehead,” “Chocolate Top Conehead,” and “Devil’s Delight Conehead.” Mister Softee licenses these marks to other ice cream stands and, in turn, requires the stand to be painted in Mister Softee’s signature red, white, and blue theme and to display the Mister Softee decals. Only authorized licensees may use these marks.

Late last month, Mister Softee won its legal battle against a former licensee Carl Gallucci, who was purportedly “infringing on Mister Softee’s trademark rights by operating an ice cream stand using the Mister Softee trademarks without Mister Softee’s permission.” Gallucci entered into license agreements for his two ice cream stands with Mr. Softee in 2010 and 2012. The dispute arose when Gallucci continued to use the Mister Softee trademarks on his two stands without paying Mr. Softee a royalty fee. Giving him 30 days to pay the fee, Gallucci defaulted once again. In response, Mister Softee filed a claim in the U.S. District Court for the District of New Jersey against Gallucci, claiming it “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” and “is unfairly competing with Mister Softee’s licensees, all of whom paid and continue to pay royalty fees for the right to use Mister Softee’s trademarks.”  Mr. Softee asked for a preliminary and permanent injunction, an accounting of profits, treble damages, destruction of Mr. Softee labels, wrappers, etc. in Gallucci’s possession, and attorneys’ fees.

The court ordered Gallucci to shut down his two stands on the Jersey Shore boardwalk, and completely halt the use of the Mister Softee trademarks, music boxes, menu boards, and decal packages. According to reports, Gallucci shut down one of his stands and has been attempting to rebrand the other.

Don’t let the name fool you — Mr. Softee can be as tough as any other brand owner enforcing its valuable trademark rights.

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