Corante

AUTHORS

Donna Wentworth
( Archive | Home | Technorati Profile)

Ernest Miller
( Archive | Home )

Elizabeth Rader
( Archive | Home )

Jason Schultz
( Archive | Home )

Wendy Seltzer
( Archive | Home | Technorati Profile )

Aaron Swartz
( Archive | Home )

Alan Wexelblat
( Archive | Home )

About this weblog
Here we'll explore the nexus of legal rulings, Capitol Hill policy-making, technical standards development, and technological innovation that creates -- and will recreate -- the networked world as we know it. Among the topics we'll touch on: intellectual property conflicts, technical architecture and innovation, the evolution of copyright, private vs. public interests in Net policy-making, lobbying and the law, and more.

Disclaimer: the opinions expressed in this weblog are those of the authors and not of their respective institutions.

What Does "Copyfight" Mean?

Copyfight, the Solo Years: April 2002-March 2004

COPYFIGHTERS
a Typical Joe
Academic Copyright
Jack Balkin
John Perry Barlow
Benlog
beSpacific
bIPlog
Blogaritaville
Blogbook IP
BoingBoing
David Bollier
James Boyle
Robert Boynton
Brad Ideas
Ren Bucholz
Cabalamat: Digital Rights
Cinema Minima
CoCo
Commons-blog
Consensus @ Lawyerpoint
Copyfighter's Musings
Copyfutures
Copyright Readings
Copyrighteous
CopyrightWatch Canada
Susan Crawford
Walt Crawford
Creative Commons
Cruelty to Analog
Culture Cat
Deep Links
Derivative Work
Detritus
Julian Dibbell
DigitalConsumer
Digital Copyright Canada
Displacement of Concepts
Downhill Battle
DTM:<|
Electrolite
Exploded Library
Bret Fausett
Edward Felten - Freedom to Tinker
Edward Felten - Dashlog
Frank Field
Seth Finkelstein
Brian Flemming
Frankston, Reed
Free Culture
Free Range Librarian
Michael Froomkin
Michael Geist
Michael Geist's BNA News
Dan Gillmor
Mike Godwin
Joe Gratz
GrepLaw
James Grimmelmann
GrokLaw
Groklaw News
Matt Haughey
Erik J. Heels
ICANNWatch.org
Illegal-art.org
Induce Act blog
Inter Alia
IP & Social Justice
IPac blog
IPTAblog
Joi Ito
Jon Johansen
JD Lasica
LawMeme.org
Legal Theory Blog
Lenz Blog
Larry Lessig
Jessica Litman
James Love
Alex Macgillivray
Madisonian Theory
Maison Bisson
Kevin Marks
Tim Marman
Matt Rolls a Hoover
miniLinks
Mary Minow
Declan McCullagh
Eben Moglen
Dan Moniz
Napsterization
Nerdlaw
NQB
Danny O'Brien
Open Access
Open Codex
John Palfrey
Chris Palmer
Promote the Progress
PK News
PVR Blog
Eric Raymond
Joseph Reagle
Recording Industry vs. the People
Lisa Rein
Thomas Roessler
Seth Schoen
Doc Searls
Seb's Open Research
Shifted Librarian
Doug Simpson
Slapnose
Slashdot.org
Stay Free! Daily
Sarah Stirland
Swarthmore Coalition
Tech Law Advisor
Technology Liberation Front
Teleread
Siva Vaidhyanathan
Vertical Hold
Kim Weatherall
Weblogg-ed
David Weinberger
Matthew Yglesias

LINKABLE + THINKABLE
AKMA
Timothy Armstrong
Bag and Baggage
Charles Bailey
Beltway Blogroll
Between Lawyers
Blawg Channel
bk
Chief Blogging Officer
Drew Clark
Chris Cohen
Crawlspace
Crooked Timber
Daily Whirl
Dead Parrots Society
Delaware Law Office
J. Bradford DeLong
Betsy Devine
Dispositive
Ben Edelman
EEJD
Ernie the Attorney
FedLawyerGuy
Foreword
How Appealing
Industry Standard
IP Democracy
IPnewsblog
IP Watch
Dennis Kennedy
Rick Klau
Wendy Koslow
Kuro5hin.org
Elizabeth L. Lawley
Jerry Lawson
Legal Reader
Likelihood of Confusion
Chris Locke
Derek Lowe
Misbehaving
MIT Tech Review
NewsGrist
OtherMag
Paper Chase
Frank Paynter
PHOSITA
Scott Rosenberg
Scrivener's Error
Jeneane Sessum
Silent Lucidity
Smart Mobs
Trademark Blog
Eugene Volokh
Kevin Werbach

ORGANIZATIONS
ARL
Berkman @ Harvard
CDT
Chilling Effects
CIS @ Stanford
CPSR
Copyright Reform
Creative Commons
DigitalConsumer.org
DFC
EFF
EPIC
FIPR
FCC
FEPP
FSF
Global Internet Proj.
ICANN
IETF
ILPF
Info Commons
IP Justice
ISP @ Yale
NY for Fair Use
Open Content
PFF
Public Knowledge
Shidler Center @ UW
Tech Center @ GMU
U. Maine Tech Law Center
US Copyright Office
US Dept. of Justice
US Patent Office
W3C


In the Pipeline: Don't miss Derek Lowe's excellent commentary on drug discovery and the pharma industry in general at In the Pipeline

Copyfight

« E-voting Night(mare) Watch | Main | In Recovery »

November 1, 2004

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

Email This Entry

Posted by Jason Schultz

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.

Comments (6) + TrackBacks (0) | Category: IP Abuse


COMMENTS

1. Paul on November 2, 2004 4:05 PM writes...

I believe there's a MacDonald's Restaurant (not McDonalds) in Scotland that is having a go at McDonald's agressive stance on litigating anything with a Mc-prefix.

I believe it's still going through the process but I hope they win.

Permalink to Comment

2. Matt on November 3, 2004 2:21 PM writes...

Well... it does look like they are arguing dilution, and you are correct in saying that to argue dilution the mark must be (1) famous; and use of the offending mark must have begun after use of the famous mark became famous... however I do not believe you have your dates correct.

Krispy Kreme recieved a federal registration for their mark in 1934 (see http://tess2.uspto.gov/bin/showfield?f=doc&state=dj9dv0.2.28). And while that does not answer whether the mark is famous, it does make a dilution claim possible.

By registering in 1934, Krispy Kreme put the country on notice of their mark, and since Krispy Kream has no federal registration, especially before 1934, they should be on notice of Krispy Kreme's mark. That said, I believe there is also a 31(1) liklihood of confusion isue here. In analyzing a liklihood of confusion, one of the Polaroid factors is the degree of similarity between the marks; and one of the tests for this is the sound of the marks. Both "Krispy Kreme" and "Krispy Kream" sound awfully alike, and a passing glance could easily confuse the spellings.

Further, looking at another Polaroid factor - the proximity of the goods - while ice cream and donuts are indeed different, they are both food; they are both junk food even. Also, Krispy Kream's ice cream might be sold along side the donuts. Maybe KK's store even sells Krispy Kreme donughts?

Finally, another relevant factor is the liklihood that Krispy Kreme will enter the ice crema market. I see that as a strong possibility since again, both donuts and ice cream are junk food.

So anyway, it's my belief that Krispy Kreme has several valid claims against this company and it will be interesting to see what happens.

Permalink to Comment

3. Matt on November 3, 2004 2:31 PM writes...

EDIT to my above post. Apparantly the link was merely a cookie link which later expired. Here is the serial number: 71539529.

Also, apparantly I got my dates confused. KK has indeed had the mark "registered" since 1951. The 1934 date was the date of first use. And while 1951 is relevant in an infringement issue between another registered mark, that is not the case here as Krispy Kream is not registered.

The 1934 date IS relevant though when calculating when Krispy Kreme became famous. If first use was 1951, then 1968-1951=17yrs to become famous. But because first use was 1934, we now have 1968-1934=34yrs to become famous. So that's quite a difference to look at in regards to dilution.

Permalink to Comment

4. Jason Schultz on November 3, 2004 2:31 PM writes...

Actually, if you look at the registration for Krispy Kreme, 1934 is the date of first use in commerce, not the date of registration for constructive notice. Plus, co-existence for so many years weighs against likelihood of confusion.

Permalink to Comment

5. Dr. James Hayes-Bohanan on November 3, 2004 4:24 PM writes...

I have never been to this ice cream stand, but I will go next time I am in that part of Pennsylvania.

I have written to customer@krispykreme.com to complain about this outrage. Krispy Kreme seems to have co-existed with Krispy Kream for decades, without the latter harming the former.

I encourage one and all to give KK a hard time about this.

Permalink to Comment

6. Matt on November 3, 2004 8:17 PM writes...

@Jason

Well, my point regarding 1934 was merely to illustrate that there are 17 additional years to look at when making a determination whether this is a famous mark out not - i.e., having more years under your belt is a better chance to become famous. And constructive notice is irrelevant in a dilution argument.

Regarding LOC though, the co-existance argument is a good one. Though if I were arguing for KK I'd try to focus on the "liklihood" issue - it doesn't matter if there wasn't before, there is now and that's all that matters. But good point nonetheless; I'd sure argue it if representing the defendant.

Permalink to Comment


EMAIL THIS ENTRY TO A FRIEND

Email this entry to:

Your email address:

Message (optional):




RELATED ENTRIES
That Sound You Hear is the Anti-Neutrality Dam Breaking
Having (Mostly) Failed with Authors, Amazon Makes a Pitch for the Readers
And No Kill Switches, Either
Uncle Amazon Knows What's Best for You (and Itself)
Duplitecture
Muddying the Natural (Patent) Waters
Congress Restores Bulk Unlock Rights
When is a Game a Clone?