Just in time for summer, Mister Softee gets its just desserts courtesy of a federal judge. The war started when Dimitrio Tsirkos decided to rebrand his “Mister Softee” trucks as “Master Softee”, including mimicking the graphic of the delicious ice cream cone. Tsirkos was a former vendor of the venerated purveyor of the taste of summer. As a vendor, Tsirkos had to pay royalties. As a non-vendor, he got out of having to pay Mister Softee. Mister Softee sued and obtained an injunction permanently enjoining Tsirkos from operating his rogue ice cream trucks using confusingly similar branding. Tsirkos refused to surrender. He continued to operate his Master Softee trucks despite the injunction. A federal court judge held Tsirkos in contempt repeatedly and ordered him to pay $329,000.00 in damages. When he still wouldn’t stop, the court entered another order adding $287,258.00 in attorney’s fees and $52,605.00 in costs.

WHY YOU SHOULD KNOW THIS. There are three lessons here. The first is the obvious one. If you’re enjoined from doing something, you stop doing it. The second is how to properly rebrand. Tsirkos’ rebranding was pretty obvious trademark infringement. If he was going to rebrand he could have chosen a way to still get his message across without trying to confuse the public. The third is the cost effectiveness of fighting a fight that has little chance of success. The estimated annual royalty fee is about $3,400.00 per truck. Tsirkos operated 16 trucks. So his royalty payments were about $54,400.00 a year. The total judgment would have paid for about 12 years of royalties. Maybe the royalties weren’t so bad after all.

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