This sixth episode is about the worldwide fight over Budweiser trademarks, the new Canadian Trademark Act and Mr. Softee!

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IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 6 – July 11, 2014

 

RC = Rolf Claessen

KS = Kenneth Suzan

 

 

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to intellectual property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC: Thank you very much for tuning in to another episode of IP Fridays. We are very glad that you have tuned in to this episode. First of all, if you are listening to this on an iOS device, please visit www.ipfridays.com/itunes to subscribe to the podcast if you haven’t already done so and give us a review. We would be really grateful if you could do that. Also, if you want to tweet about us, you can tweet easily by going to www.ipfridays.com/love. But now I will tell you what we have in store for you today. We will talk about the latest developments in the Budweiser fight. The worldwide fight over Budweiser trademarks between the Czech Republic and the U.S. and we will have the latest updates about the new Canadian Trademark Act and we will also tell you about Mister Softee and I can hear his ice [cream] truck already….

 

KEN SUZAN’S DISCUSSION REGARDING MISTER SOFTEE

 

KS: The familiar chimes of a Mister Softee truck are a delight to the ears of many. Mister Softee is a well-known ice cream truck business that licenses its various trademarks to franchisees, who then own and operate Mister Softee ice cream trucks using those trademarks. The marks are numerous: the name “Mister Softee” and its logo, the “Mister Softee” ice cream jingle, and the design of the Mister Softee trucks—white trucks with blue horizontal stripes and blue wheels, that include an ice cream cone head with a red bow tie and a blue jacket and various phrases promoting sundaes, shakes, and “the Very Best” ice cream products.

 

Dimitrios Tsirkos is a former Mister Softee franchisee, who operated sixteen Mister Softee trucks within New York City. Tsirkos eventually stopped paying royalties and following the terms of the Mister Softee franchise agreements, and the company decided to terminate his franchises. This didn’t stop Tsirkos from continuing his ice cream sales; he rebranded his trucks as “Master Softee” or “Soft King” trucks, retaining the color scheme, slogans, and similar ice cream cone head character as the official Mister Softee vehicles.

 

Mister Softee is now suing Tsirkos in federal court in the Southern District of New York, claiming that he is not only infringing on their trademarks, but also violating a non-compete provision preventing Tsirkos from competing with Mister Softee for two years after their franchise agreements were terminated.

 

Mister Softee was granted a preliminary injunction on June 5 preventing Tsirkos from operating his trucks within his former franchise territories, as well as any other franchise territory within a five mile radius. Judge Swain, applying an 8-factor test to determine whether the Tsirkos trucks could be confused with Mister Softee trucks, found that all eight factors were met: the Mister Softee logo and the trade dress create a “distinctive and arbitrary” mark, and the Tsirkos trucks were “strikingly similar” to the Mister Softee trucks by using the same color sc...