In less than two decades, Kona Ice went from a small shaved ice food truck in Northern Kentucky to a shaved ice giant with over 1,800 franchises across the United States. Their brightly colored food trucks and their penguin mascot are easily recognizable by kids and adults alike. Part of their success comes down to their vast intellectual property portfolio, which recently allowed them to win a major patent infringement case against competitor, Tikiz, with a verdict of over $500,000.
Who Is Kona Ice?
Kona Ice opened in 2007 in Florence, Kentucky, offering friendly service and gourmet shaved ice in a variety of flavors. Since then, they have opened over 1,800 franchises serving 49 states and have made Entrepreneur Magazine’s Franchise 500 List for 11 consecutive years. They’ve also been named one of the “Top 100 Most Innovative Franchises” by the Franchise Business Review.
The franchise has an extremely distinctive look and feel from their competitors for the most part, due to an extensive portfolio of intellectual property protections. This includes both design and utility patents for their shaved ice truck, which became the subject of their case against Florida competitor, Tikiz.
Kona Ice vs. Tikiz
In 2017, Kona Ice sued Tikiz for patent infringement, concerning their US Patent No. 9751447. The patent covered the design and function of their shaved ice vehicles, which often depicted their penguin mascot in a tropical setting, offering the viewer a shaved ice treat. Tikiz’s food truck took on a similar design, but with their tiki torch mascot. They also had a similar “liquid toppings dispensing system.” All told, Kona Ice cited sixteen patent infringements by Tikiz.
Tikiz then filed a declaratory judgment action against Kona Ice, which presiding U.S. District Judge K. Michael Moore dismissed. After several key wins in early hearings, the case eventually went to a jury trial. In June of 2024, the jury ruled that Tikiz performed willful patent infringement and that they owed Kona Ice $532,905 in reasonable royalties.
What To Learn From This Case
This was a major victory for Kona Ice, and allowed them to maintain their distinct appeal on the market. It also sent a message to competitors about how seriously Kona Ice takes intellectual property infringement. Undoubtedly, one of the reasons they were able to win this case was because they took such care to have an extensive IP portfolio, full of granted patents, registered trademarks, and more.
During the case, Tikiz attempted to argue that Kona Ice should not have been granted the patents about their shaved ice vehicles, as it conflicted with patent applications that already existed. But ultimately, Kona Ice had the documentation to support their case, both the rights to the patent and proof of Tikiz’s infringement.
Hiring an experienced intellectual property attorney can be a major boon when it comes to protecting your business from IP infringement. The team at Garcia-Zamor has over two decades of combined experience filing IP protections for clients and helping them to defend against infringement. We’re here to help you. Contact us today to learn more.
