An ice cream truck operator in New York City has been ordered to stop using logos and designs that are "confusingly similar" to the distinctive images on the South Jersey-based Mister Softee trucks.
A federal judge issued a preliminary injunction last week barring former Mister Softee franchisee Dimitrios Tsirkos from using Mister Softee-like designs on his trucks.
The Runnemede-based company filed suit against Tsirkos in March, alleging that he has violated the Mister Softee trademark since he was terminated earlier this year, after planning to "operate his ice cream trucks independently from the Mister Softee system." He had agreements to operate 16 Mister Softee franchises in the Bronx, Manhattan and Queens.
Tsirkos first labeled his trucks as "Master Softee" and later called at least one "Soft King," according to court documents. The trucks look similar to Mister Softee vehicles in coloring, use the same "the World's Best" slogan in red script, and display a similar ice cream cone character that wears a blue jacket and red bow tie.
"Tsirkos has utilized and benefited from the Mister Softee marks in the operation of his mobile ice cream business" and "willfully intended to trade on Mister Softee's reputation and cause the dilution of the Mister Softee marks," Mister Softee's lawsuit says.
U.S. District Judge Laura Taylor Swain wrote in a memorandum opinion that the coloring and logos on Tsirkos' trucks are "virtually identical" to Mister Softee trucks.
"Defendant's use of similar truck decoration and his operation of those trucks in Mister Softee-franchised territories is likely causing harm," she wrote.
In court filings, Tsirkos contends that he has "gone to considerable expense to change all the trucks in my fleet so as not to infringe" on Mister Softee.
A hearing in the case is scheduled for next week.
Mister Softee is seeking a permanent injunction, royalties Tsirkos owes, an accounting of profits the company may be entitled to and an order requiring Tsirkos to return or destroy all materials with its trademark, among other terms.
Mister Softee occasionally goes to court to defend its trademarks. The company also alleges that Tsirkos convinced another franchisee, Reza Amanollahi to "join him in abandoning the Mister Softee system." A separate suit against Amanollahi is pending in federal court in Newark.