United States District Court, N.D. Alabama, Western Division
MEMORANDUM OF OPINION
Scott Coogler United States District Judge
this Court are Defendants, J & J Snack Foods Corp., The
ICEE Company Inc., and ICEE of America ICEE of America, Inc.
(collectively “Defendants'”), Amended Motions
to Dismiss. (Docs. 35 & 36). Plaintiffs have timely filed
their opposition. The motions are fully briefed and ripe for
review. For the reasons stated below, Defendants' Amended
Motions to Dismiss (docs. 35 & 36) are due to be granted
in part and denied in part.
claims before this Court represent another episode in a saga
of litigation surrounding the use of the ICEE trademark in
the southeast. While the plaintiffs have varied, the claims
before this Court are certainly not novel. See ICEE
Distributors, Inc. v. J&J Snack Foods, 325 F.3d 586
(5th Cir. 2003) (“ICEE Distributors
I”); ICEE Distributors, Inc. v. J&J Snack
Foods, 445 F.3d 841 (5th Cir. 2006) (“ICEE
Distributors II”) (collectively the
“Louisiana” cases) (enjoining J & J Snack
Foods Corp.'s sale of ICEE branded squeeze up pops in a
competitor's exclusive sales territory); ICEE of
Atlanta Inc. v. J & J Snack Foods Corp, No.
1:02-cv-00214-HTC, 2005 WL 8154314, at * 1 (N.D.Ga. Jan. 21,
2005) (the “Georgia” case) (entering an Agreed
Final Judgment regarding J & J Snack Foods Corp's
sale of ICEE branded products in a competitor's exclusive
sales territory); ICEE of America, Inc. v. Mid-American
ICEE Corporation, et al., No. 3:02-cv-364-L, 2005 WL
2415940, at *6 (N.D. Tex. Sept. 29, 2005) (the
“Texas” case) (action by ICEE of America, Inc.
seeking a declaratory judgment concerning the rights and
responsibilities under ICEEQUIP licensing agreements).
ICEE trademark was developed in the 1960s when the owner of
Dairy Queen discovered that his refrigerator had partially
frozen some soda bottles. After this discovery, the ICEE
trademark was registered by John E. Mitchell Company and its
wholly owned subsidiary, ICEEQUIP Corporation. Initially, the
ICEEQUIP Corporation held the ICEE trademark in its entirety.
In the 1970s, ICEEQUIP Corporation began to issue
substantially similar ICEE trademark licenses to various
regional distributors for the exclusive use of the ICEE
trademark in specific sales territories, referred to as
marketing areas. These licenses gave each distributor an
exclusive right to sell products using the ICEE mark in
certain marketing areas for the life of the mark. Pursuant to
these licensing agreements, ICEEQUIP Corporation agreed to
not license the use of the ICEE trademark in the marketing
areas of the licensee to any other distributor.
1983, ICEEQUIP Corporation went out of business. The existing
ICEE regional distributors, who had licenses pursuant to
these trademark agreements, formed Defendant ICEE of America,
Inc. (“ IOA”) and acquired legal title to the
ICEE mark in order to maintain and protect it. Although IOA
continued the prior licensing agreements between ICEEQUIP and
the existing regional distributors, it became the record
owner of the ICEE trademark.
Bama ICEE and Bama ICEE Southern LLC (collectively
“Plaintiffs” or “Bama ICEE”), have
the exclusive right to sell ICEE branded products in several
counties in Alabama and Georgia through one of these
licensing agreements with IOA. Defendant The ICEE Company Inc.
(“TIC”), a wholly owned subsidiary of Defendant J
& J Snack Foods Corp (“J & J”), also has
the exclusive right to sell ICEE trademarked products in
certain marketing areas through a substantially similar
trademark license agreement with IOA. Collectively, J & J
and TIC own the exclusive right to sell ICEE branded products
in a majority of territories across the United States.
ICEE trademark litigation centers on J & J's sale,
pursuant to TIC's license, of products bearing the ICEE
trademark, including an alleged imitation frozen carbonated
beverage (“FCB”) Artic Blast, within
Plaintiffs' exclusive territory. Specifically, Plaintiffs
allege that J & J is selling ICEE branded products such
as popsicles, squeeze candies, and “slush”
pouches both directly and through third parties to retailers
like Sam's Club, Target, Walmart, Publix, Winn-Dixie, and
Piggly Wiggly located in Plaintiffs' exclusive sales
territory. Plaintiffs contend that IOA, for its part, is
approving and supporting J & J's sales of both
trademarked ICEE products and the imitation Artic Blast FCB
under the ICEE trademark in Plaintiffs' exclusive sales
contend that J & J employees are driving delivery trucks
marked with the ICEE trademark and wearing uniforms with the
ICEE trademark while selling and delivering ICEE branded and
the alleged imitation Artic Blast FCB products in
Plaintiffs' exclusive sales territory. Plaintiffs also
allege that J & J is delivering the imitation Artic Blast
FCB syrup in boxes bearing the ICEE trademark along with cups
and other signage for the seller's use that bear the ICEE
trademark. Finally, J &J's website,
http://www.icee.com/store-locator-page/, is alleged to have a
store locator that allows customers to find locations in
Plaintiffs' exclusive sales territory where they can buy
“ICCE or Artic Blast” from J & J.
general, a pleading must include “a short and plain
statement of the claim showing that the pleader is entitled
to relief.” Fed.R.Civ.P. 8(a)(2). However, in order to
withstand a motion to dismiss pursuant to Fed.R.Civ.P.
12(b)(6), a complaint “must plead enough facts to state
a claim to relief that is plausible on its face.”
Ray v. Spirit Airlines, Inc., 836 F.3d 1340, 1347-48
(11th Cir. 2016) (quoting Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 570 (2007)) (internal quotation
marks omitted). “A claim has facial plausibility when
the plaintiff pleads factual content that allows the court to
draw the reasonable inference that the defendant is liable
for the misconduct alleged.” Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009). Stated another way, the
factual allegations in the complaint must be sufficient to
“raise a right to relief above the speculative
level.” Edwards v. Prime, Inc., 602 F.3d 1276,
1291 (11th Cir. 2010). A complaint that succeeds in
“identifying facts that are suggestive enough to render
[the necessary elements of a claim] plausible” will
survive a motion to dismiss. Watts v. Fla. Int'l
Univ., 495 F.3d 1289, 1296 (11th Cir. 2007) (quoting
Twombly, 550 U.S. at 556) (internal quotation marks
evaluating the sufficiency of a complaint, this Court first
“identif[ies] pleadings that, because they are no more
than conclusions, are not entitled to the assumption of
truth.” Iqbal, 556 U.S. at 679. This Court
then “assume[s] the veracity” of the
complaint's “well-pleaded factual
allegations” and “determine[s] whether they
plausibly give rise to an entitlement to relief.”
Id. Review of the complaint is “a
context-specific task that requires [this Court] to draw on
its judicial experience and common sense.” Id.
If the pleading “contain[s] enough information
regarding the material elements of a cause of action to
support recovery under some ‘viable legal theory,
'” it satisfies the notice pleading standard.
Am. Fed'n of Labor & Cong. of Indus. Orgs. v.
City of Miami, 637 F.3d 1178, 1186 (11th Cir. 2011)
(quoting Roe v. Aware Woman Ctr. for Choice, Inc.,
253 F.3d 678, 683-84 (11th Cir. 2001)).
bring claims against Defendants for (1) Trademark
Infringement, (2) Trademark Dilution, (3) Breach of Contract,
(4) Tortious Interference with Existing Contracts and
Business Relationships, (5) Civil Conspiracy, (6) Breach of
Duty of Good Faith and Fair Dealing, (7)
Negligence/Wantonness, and (8) Trademark Cyberpiracy.
Defendants have moved to dismiss all claims except for breach
of contract. (Docs. 35 & 36.)
prevail on a trademark infringement claim under the Lanham
Act, a party must prove that (1) it owns a valid and
protectable mark, and (2) the opposing party's use of an
identical or similar mark is likely to cause
confusion.” FN Herstal SA v. Clyde Armory
Inc., 838 F.3d 1071, 1080 (11th Cir. 2016) (citing
Gift of Learning Found., Inc. v. TGC, Inc., No.
01-08069-CV-DTKH, 2001 WL 34718642, at *1 (S.D. Fla. 2001),
aff'd, 329 F.3d 792, 797 (11th Cir. 2003) (per
curiam)); 15 U.S.C. § 1114(1)(a).
cases within the Eleventh Circuit have found cognizable
trademark infringement claims when “identical goods
[are] sold in an unauthorized manner” because they are
not considered “genuine” for the purposes of the
Lanham Act. Caterpillar, Inc. v. Nationwide Equip.,877 F.Supp. 611, 615 (M.D. Fla. 1994) (internal quotation
marks omitted); See Hibbett Sporting Goods, Inc. v. Socks
& Accessory Brands Global Inc., No.
2:17-cv-01029-RDP, 2018 WL 582436, at *2-3 (N.D. Ala. 29,
2018)(“[G]oods manufactured by agreement with the