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November 1, 2004

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

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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


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.

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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 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.

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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.

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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.

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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 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.

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


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.

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