Mister Softee, Inc. v. Tsirkos

In a trademark infringement case, courts look to an eight-part test that determines whether customer confusion will occur due to the infringement that will damage business for the senior user.

Opinion (Swain): Plaintiffs, Mister Softee, Inc. (“MSI”) and its franchisees Mister Softee of Queens, Inc. (“MSQ”), and Sabo Ice Cream Corp. (“Sabo”), brought suit against Defendant Dimitrios Tsirkos (“Tsirkos”) for trademark infringement and breach of contract. Tsirkos was, until recently, a Mister Softee franchisee and licensee; he still owns several ice cream trucks. MSI owns certain registered trademarks related to Mister Softee, and licenses these trademarks to sub-franchisers, who then turn them into franchisees for use in operating Mister Softee ice cream trucks. MSI owns, specifically, the trademark “Mister Softee,” trademark of related logos, a sensory mark for the Mister Softee jingle, and a federal trademark for the registration for the design of the Mister Softee ice cream truck, which has a distinctive appearance. Defendant decided to terminate his Franchise Agreement, which includes a covenant not to compete for two years. He then continued to operate in areas where Mister Softee and its affiliates had granted franchises. Defendant initially labeled his trucks as “Master Softee” trucks )he later labeled at least one truck “Soft King” instead), and the “Master Softee” and “Soft King” trucks are both the same two-axle models and remain strikingly similar in appearance to the Mister Softee branded trucks. Plaintiffs contend that the use of similar truck decoration and the operation of those trucks in Mister Softee-franchised territories is likely causing harm; because of the similar appearance, customers are likely to associate Defendant’s trucks with Plaintiff’s trademarks and products, and Plaintiff doesn't have control over the quality of the products being sold by Defendant. Plaintiffs assert claims of trademark infringement on this basis. “The Plaintiff in a trademark infringement action establishes a likelihood of success by showing both (1) a legal, exclusive right to the mark, and (2) a likelihood that customers will be confused as to the source of the infringing product.” When determining whether there is a likelihood of confusion, courts look to an eight-factor balancing test: “(1) strength of the trademark; (2) similarity of the marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may ‘bridge the gap’ by developing a product for sale in the market of the alleged infringer’s product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the relevant market.” The ultimate question courts look at is whether, “looking at the products in their totality, consumers are likely to be confused.” The court held that all of these factors favored Plaintiffs due to the striking similarities between the trucks. Plaintiff’s motion for a preliminary injunction was GRANTED in part, due to failures to show necessary evidence of harm in their Breach of Covenant Not to Compete claim.