Sony Wins Round Two In Its Battle With Frosty Treats Inc. (Case Summary)

Frosty Treats is one of the largest ice cream vendors in the US.  Its trucks are covered with pictures of the various products available for sale.  The trucks are also labeled with the words "Frosty Treats" and a picture of a clown's face.

Sony's "Twisted Metal" games contain ice cream trucks labeled with the words "Frosty Treats" and with a clown graphic (the "Safety Clown").  Frosty Treats Inc. sued Sony for trade-mark infringement and dilution and for unfair competition. 

The Court of Appeal affirmed the lower court's summary judgment against the Plaintiff who had not registered its marks and could not meet the burden of establishing that the marks are protected under trademark law. The phrase "Frosty Treats" was held to be generic, or alternatively, descriptive without secondary meaning. The court also held that the clown graphic was not eligible for protection because there was no likelihood of confusion.

To prevail in this case Frosty Treats had to demonstrate that the mark "Frosty Treats" has acquired a secondary meaning. Secondary meaning is an association formed in the minds of consumers between the mark and the source or origin of the product. To establish secondary meaning, Frosty Treats would have had to show that "Frosty Treats" serves to identify its goods and distinguish them from those of others. Secondary meaning does not require the consumer to identify a source by name but does require that the public recognize the mark and associate it with a single source.

According to a survey conducted by the Plaintiff only 1% of respondents shown images of the Frosty Treats ice cream van mentioned Frosty Treats by name. There is no indication in the record that the survey respondents (apart from the one percent) were familiar with the vans because of the small nine-by-four-inch "Frosty Treats" decal on the rear portion of the side of the van, the only place where the phrase "Frosty Treats" appears on the vehicle.

Furthermore, Sony's expert conducted a survey of 204 children and 200 adults who had purchased ice cream from an ice cream truck in Frosty Treats' largest markets. When asked to volunteer the names of any ice cream trucks that they had purchased ice cream from, not one recalled the name "Frosty Treats." The evidence as a whole simply did not provide a sufficient basis for concluding that the phrase "Frosty Treats" had acquired a secondary meaning. Accordingly, the Court found that it could not be protected under trademark law.

Apart from finding that the "Frosty Treats" and Safety Clown marks were unenforceable, the Court of Appeal affirmed the district court's holding that the Plaintiff failed to present sufficient evidence with regard to likelihood of confusion between the trade dress of its vans or its clown and any depictions of vans or clowns in Defendant's video games. The six criteria used to determine whether a likelihood of confusion exists are (1) the strength of the owner's mark; (2) the similarity between the owner's mark and the alleged infringer's mark; (3) the degree to which the products compete with each other; (4) the alleged infringer's intent to 'pass off' its goods as those of the trademark owner; (5) incidents of actual confusion; and (6) the type of product, its costs and conditions of purchase.

Here the court held that the "use of a clown on ice cream trucks is hardly novel", and the trade dress of Frosty Treats's vans resembles that of a generic ice cream truck and therefore lacks distinctiveness within the marketplace. There was, moreover, no evidence to indicate that Frosty Treats's Safety Clown mark and trade dress are well known.

With respect to the second criterion, the Safety Clown mark and trade dress of Frosty Treats's vans were found to be "visually distinct" from the relevant depictions in the Twisted Metal games and "no reasonable juror could find that they are similar." Frosty Treats' CEO, Carl Long's assertion that, "... if the Safety Clown had a brother who was nasty and mean, it would look somewhat like" the clown in Twisted Metal, wasn't enough to carry the day.
Transcript available here

Frosty Treats, Inc. v. Sony Computer Entm't Am., Inc.,
July 25, 2005, US Ct. of Appeal, 8th Cir.
[2005] U.S. App. LEXIS 15127
Summary by Arsen Krekovic.



  • Dani Lemon