Trademark Case of Note: Frosty Treats v. Sony

Defendant’s Use of Graphics In Video Games Which Are Similar To Plaintiff’s Trucks and Graphics Are Insufficient To Show Violation of Lanham Act Without Evidence of Confusion and/or Secondary Meaning


Frosty Treats sued Sony Computer Entertainment America (SCEA) asserting claims under state and federal law for trademark infringement and dilution, and for unfair competition due to SCEA’s depiction of an ice cream truck bearing the phrase “Frosty Treats” and a clown character in one of SCEA’s video games.  Frosty Treats contends that because an ice cream truck, the phrase “Frosty Treats”, and the clown shown in SCEA’s video game are similar to its ice cream trucks and Safety Clown, the game creates a likelihood of confusion as to Frosty Treats’ sponsorship or affiliation with the video games.  In an appeal from the District Court’s granting SCEA’s motion for summary judgment dismissing Frosty Treats’ claims, and the Court of Appeals for the Eighth Circuit affirmed.

On the issue of whether the phrase “Frosty Treats” is a protectable trademark, the Eighth Circuit reviewed the factors of whether a mark is protectable.  For a mark to be protectable, the mark must first be categorized as (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful.  The Court held that, while “Frosty Treats” as a mark is not generic, the mark is descriptive.  Thus, the mark is only protectable to the extent the mark has acquired secondary meaning in the relevant market.  Therefore, Frosty Treats needed to show that the mark had acquired a secondary meaning to identify its goods and distinguish them from those of others.  According to the evidence of record, the evidence indicated that respondents to a survey conducted recognized the truck with the Frosty Treats phrase simply as a generic ice cream truck, thus failing to establish secondary meaning for the phrase “Frost Treats” on the ice cream.    Although direct evidence such as consumer testimony or surveys are probative of secondary meaning, secondary meaning can also be proven by circumstantial evidence.  However, the circumstantial evidence offered by Frosty failed to raise a genuine issue of material fact.  Therefore, the Court concluded that the “Frosty Treats” phrase was not protectable under trademark law.

On the issue of whether the Safety Clown graphic is a protectable mark or a non-protectable functional graphic, the District Court held that because the Safety Clown graphic serves a purpose, the graphic is functional and therefore not protectable.  The Eighth Circuit disagreed since District Court evaluated the issue using the colloquial meaning of “functional” rather than specialized meaning it has in trademark law.  In trademark law, “a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”  To be functional, the feature must be necessary to afford a competitor the means to compete effectively.  There was no evidence that the exclusive use of the Safety Clown graphic would deny Frosty Treats’ competitors the ability to compete effectively or place competitors at any non-reputational disadvantage.  Therefore, whether the Safety Clown graphic is functional presents a factual issue not appropriate for resolution upon a motion for summary judgment.

However, even assuming that the Safety Clown graphic and the mark “Frosty Treats” are protectable as trademarks, the Eighth Circuit held that there was no likelihood of confusion.  Specifically, the Eighth Circuit evaluated whether a likelihood of confusion exists with respect to the trade dress of the trucks and the Safety Clown in light of six criteria: (1) strength of owner’s mark; (2) similarity between the owner’s mark and the alleged infringer’s mark; (3) degree to which the products compete with each other; (4) alleged infringer’s intent to pass off its goods as those of the trademark owner; (5) incidents of actual confusion; and (6) type of product, its costs and conditions of purchase.  For the first factor, the Eighth Circuit held that the Safety Clown mark and trade dress of Frosty Treats’ truck are weak marks since the use of a clown on an ice cream trucks is hardly novel and Frosty Treats’ vans resemble a generic ice cream truck and therefore lack distinctiveness within the marketplace.  For the second factor, the Eighth Circuit held that the Safety Clown mark and trade dress of Frosty Treats vans are visually distinct from depictions in video games and no reasonable juror could find them similar.  In regards to the third and fourth factors, the Eighth Circuit held that SCEA’s products do not compete with Frosty Treats and no evidence was shown that SCEA intends to pass off Frosty Treat’s mark as its own.  For the fifth factor, Frosty Treats failed to provide any proof of actual confusion by a non-interested party, with the only evidence of actual confusion being the testimony of an interested person.  Lastly, in deciding the sixth factor, the Eighth Circuit held that the sixth factor is more important in confusion-of-source cases where degree of care that a purchaser exercises in purchasing a product can eliminate confusion that might otherwise exist.  In this case, Frosty Treats’ action is based on confusion of sponsorship, and thus the customers’ degree of care is of diminished importance.  Accordingly, Frosty failed to present sufficient evidence to create a triable issue as to the likelihood of confusion between the trade dress of Frosty Treats’ trucks or its Safety Clown.

Lastly, the Eighth Circuit held that Frosty Treats does not have actionable claims for trademark dilution under federal and Missouri law.  Specifically, Frosty Treats failed to show that the marks and trade dress at issue are famous as required by 15 U.S.C. §1125(c). In addition, the Eighth Circuit held that Frosty Treats failed to show “likelihood of injury to business reputation or of dilution of the distinctive quality of mark….shall be ground for injunctive relief,” since the marks and trade dress at issue are so dissimilar that it would be erroneous to hold that there was a likelihood of dilution.  Frosty Treats, Inc. v. Sony Computer Entm’t Am., Inc., 2005 U.S. App. LEXIS 15127, 75 USPQ2d 1570 (8th Cir. July 25, 2005).


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