Krispy Kreme goes after 36-year-old ice cream stand for TM infringement

Another classic case of overly-aggressive IP lawyers:

Channel 6 News asked people Friday when you hear Krispy Kreme, what do you think of?

"Good donuts." "Donuts." "Donuts." "An Ice Cream Cone."

Ice cream cone? Yes. That's what Krispy Kream Drive In on Route 422 in Cambria County sells. The current owners have been in Belsano since 1968.

Christina Hoover owns the Ice Cream shop with her husband. She tells Channel 6 News, "We're an ice cream fast food stand. It's a drive in."

And business is good. Then in the past month two letters from Krispy Kreme donuts. The corporation is not happy with them. But it's not about donuts and ice cream. The problem has to do with the name. Krispy Kreme donuts wants Krispy Kream Drive In to change theirs.

Amy Hughes is the Communications Director for Krispy Kreme. She tells Channel 6 News, "Unfortunately this business is violating a federal regulation trademark that we've had since 1951. And we've respectfully requested that they cease doing so within a reasonable amount of time."

Krispy Kreme couldn't be more wrong. Sure, it may have been using the name in connection with donuts since 1951, but ice cream and donuts are two different kinds of products. No one thinks the KK donut chain sells ice cream cones.

What Krispy Kreme is really arguing is dilution of their "famous" brand. Since going IPO a few years ago, Krispy Kremes have popped up everywhere across the county, from SBC Park in SF to the Excaliber in Las Vegas. So yes, within the last few years, one could argue that they are a "famous" tradermark like McDonalds or Kodak and should be protected from dilution (e.g. someone selling McDonalds backpacks or Kodak bicycles). The problem with this argument is that you can only sue someone for diluting a famous mark after its become famous. Since the Hoovers' ice cream stand has had the name "Krispy Kream" since 1968, they are quite safe from a dilution attack.

Update: I looked up Krispy Kreme's TM registrations in the USPTO database. They claim to have used the mark "Krispy Kreme" in connection with "restaurant services" since 1934, but didn't register the mark until 1971, three years after the Hoovers' business started using their mark. This means that before 1971, Krispty Kreme has common law rights only in the geographic areas where they did business but not nationwide until 1971. If there was no Krispy Kreme donut store in Cambria county in 1968, they can't go back and stop it now.

Comments

get real they are capitalizing on the name! And what does Krispy have to do with ice cream anyway

[Marianne]

Krispy Kreme is just trying to distract people from the SEC investigation! http://krispykremesucks.blogspot.com/

[Bob]

i hate yo dounuts fake ass tasting donuts

[bob]

i love yo donuts

[Charles]

e-mail your Krisp Kreme Sucks comments to: csallaire@yahoo.com for posting to the www.krispykremesucks.com website. the comments need to be accurate please.