Brooklyn federal court puts stop to fraudulent Mister Softee ice cream trucks

January 28, 2015 By Charisma L. Troiano, Esq. Brooklyn Daily Eagle

Mister Softee’s lawyer, Jeffrey Zucker. Photo Courtesy of Fisher Zucker LLC

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A Brooklyn court has ordered a Queens man to pay thousands in attorney fees and costs for defaulting on a suit alleging trademark infringement and the use of fake ice cream trucks to confuse consumers into thinking that they were enjoying Mister Softee ice cream.

On Monday, federal Judge Joan Azrack found Gus Anthony Toufos in default of a 2013 action for failing to appear after being served notice of a trademark lawsuit and ordered the defendant to pay $7,337 for Mister Softee’s attorneys’ fees incurred for having to bring and prosecute the trademark claim and $1444.86 costs.

The Mister Softee brand is a federally protected trademark, and while the company provides franchises to various entities and individuals for the exclusive right to sell ice cream in a signature Mister Softee truck, in 2013 it began receiving complaints that an unlicensed truck appeared to be using the Mister Softee brand to sell frozen treats.

“We get calls from members of the public regarding possible infringing trucks,” Mister Softee lawyer, Jeffrey Zucker, explained to the Eagle at the time. “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 desist. More times than not, the truck owner ignores the cease and desist letter, and a lawsuit is then filed.”

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-serve ice cream cone with a smiley face and bow tie.

The suspected infringing vehicles were also white with blue trim borders. Many contained 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 asserted.

Defendant Toufos failed to submit an answer to the suit, which was filed in August 2013, and neither explained nor provided a defense regarding the look and close resemblance his trucks had to the Mister Softee brand.

Protecting Mister Softee’s brand integrity was one of many reasons behind the company’s reason to file suit against Toufos. The lawsuit contended that people 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.

Azrack applied that rationale in approving a permanent injunction against Toufos’ use of the Mister Softee brand or an imitation thereof.

Being granted permanent injunctive relief against a defendant is not an easy task. “To obtain a permanent injunction, the plaintiffs must establish (1) success on the merits and (2) a risk of irreparable harm,” if the defendant continues his or her course of action, Azrack explained in her ruling Monday.

In other words, Mister Softee would have to first prove to the court that it would have succeeded in its trademark suit against Toufos and that if Toufos were to continue to use fake Mister Softee trucks for frozen treats, the actual Mister Softee brand would be harmed beyond repair.

Azrack found “a high degree of similarity between a Mister Softee truck and defendants’ trucks,” establishing a “likelihood of confusion” between the actual brand and the imitator.

Many unlawful vehicles 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 asserted.

Looking to the harm caused by fraudulent ice cream trucks, Azrack pointed to Mister Softee’s consumer base.

“Mister Softee’s primary customer base is young children who could be very easily confused by defendants’ use of Mister Softee’s truck design,” the judge wrote. And because Mister Softee would “have no way of way to ensure that: (1) defendants’ ice cream products meet Mister Softee’s quality expectations; or (2) defendants store and dispense ice cream in compliance with the applicable health codes and regulations,” Azrack ruled that the brand would suffer irreparable harm if Toufos were allowed to continue operating fake Mister Softee trucks.

Brooklyn attorney Gerald Derevyanny of Adler Vermillion & Skocilich LLP appeared for Mister Softee.