Posted on 11/28/2004 9:33:30 AM PST by Willie Green
BELSANO, Pa. -- One sells doughnuts, the other sells ice cream.
One's been in business since 1937, the other since 1968.
But most importantly, one makes enough money to have more than 390 stores in 45 states and six countries while the other makes enough to employ a husband and wife full time and help a handful of teenagers each summer earn extra money for college.
And now, the musclebound company, Krispy Kreme Doughnuts Inc., is on the verge of suing Krispy Kream Drive-In for stealing its company name.
(Excerpt) Read more at post-gazette.com ...
A bakery company! All these years I thought I was buying donuts made by an ice cream stand in Pennsylvania.
I'll give you a little hint for free.
What is the FIRST thing you do when you decide to open a business?
Before you fill any paperwork out, before you incorporate and file any tax and/or liability paperwork out, you haul your fanny to the courthouse and begin a Trademark search on any proposed names for your company.
Sorry, no sympathy here. IF Krispy Kreme willfully ignores these people, then Krispy Kreme has willfully invalidated thier Trademark. This means that they can NEVER inforce trademark violations in any regard, in any case, in any country.
Remember when Walt Disney came down on some daycare centers who had Mickey Mouse painted inside? Disny had a choice, either issue a 'cease and desist' to the daycare, or allow Mickey Mouse to become public domain and throw away a multi-million dollar trademark.
IIRC, it was McDonald's who sued dozens of companies named Mc-this and Mc-that, years ago, and forced them to change both company and/or product names, or simply put them out of business.
I'd agree with you on this one, WG.
The (economically failing) donut giant is completely in the right. The ice cream dudes will lose in court and would be well advised to immediately agree to a name change.
I would NOT suggest they change their name to "Karvel" or "Basking Robert's."
Ooops! Did I read "the lawyers over-reacted" ??
Naw .... the scumbag greedy whores would never do that!
"Sorry, but this is clear cut trademark infringement by the Krisy Kream ice cream palour."
Ditto!
So, if I wanted to start a car company, I couldn't name it Fjord?
Of course this is not the first time I have been confused. For years, I refused to buy an Apple computer because I figured, what the heck do The Beatles know about making computers?
I disagree. The fact that it is pronounced exactly the same allows them to use the name recognition of Krispy Kreme to attract business. That name is trademarked. They have violated the law. The fact that they are a small business doesn't give them the right to do it. It's illegal. We are a nation of laws.
My Gawd they were pathetically mediocre. Even Walmart has better doughnuts.
It does seem odd that we go to court over things like misspelled words in a name, but, that's life in the free world.
Krispy Kreme is circling the drain financially right now. If the mom and pop business can just hang in there for a while, they might be able to buy the name outright at the bankruptcy auction.
Not crazy. read other posts. If Krispy kreme ignores it, then they lose their trademark. They have to protect their property.
This is really stupid on Krispy Kreme "DONUTS" part. This is terrible PR, and it is just going to get people mad. If anything, they should have offered Mom & Pop some money and asked them to sell their donuts. For crying out loud, they probably just could have bought the place from them and hired them to run it. Maybe taken the ice cream idea and incorporating into their donut corporation. Crispy Creme sundae anyone? Shhh...Maybe I should contact Crispy Creme and give them the recipe.
So, if I wanted to start a car company, I couldn't name it Fjord?
just dont name it uranus probe
Yeah, but the donut company should have a limitations problem enforcing it against the ice cream parlor.
If I recall correctly, there is not a federal statutory limitation for trademarks, so the most analogous state law limitation is used. I do not know what that would be in Pennsylvania, but I would be surprised if an open and continuous use of the trademark by the ice cream parlor for over 30 years wouldn't put it well beyond any limitations period.
Exactly. They lose legally lose their trademark if they don't fight for it. A lawyers' dream come true.
And their brand name is all they have. Certainly not their cr*ppy diabetes inducing sucrose fried flour.
Exactly. They legally lose their trademark if they don't fight for it. A lawyers' dream come true.
And their brand name is all they have. Certainly not their cr*ppy diabetes inducing sucrose fried flour.
Here's my hint:
"Krispy Kreme Doughnuts Inc., VS Krispy Kream"...might look as being semantics but the name is NOT spelled the same!
If "Krispy Kream Drive-In" had as bad a product as "Krispy Kreme Doughnuts" has, the little guys would have sunk long ago.
"If I recall correctly, there is not a federal statutory limitation for trademarks, so the most analogous state law limitation is used. I do not know what that would be in Pennsylvania, but I would be surprised if an open and continuous use of the trademark by the ice cream parlor for over 30 years wouldn't put it well beyond any limitations period."
I would love to see this happen! I would be laughing at the 'do-nuts' every time I drove by their place.
I have a question, what if this ice-cream shop had started 100 years ago with this name, before the donut shop existed, but they never filed for a trademark on the name. Would the donut shop still have a case if they registered the name 60 years later? Anyone want to speak up?
A Holiday Inn in Niagrara Falls, Canada existed way before the chain of Holiday Inns. The giants came after them to change their name or pay up but a matchbook cover, that's all it took, was found from this small motel that showed they were in existence since way before the American chain of motels. ( I guess they kept lousy records in the early decades)They never took a trademark on the name either.
We stay there when we go to the Falls.
In my free time I like to take virtual vacations by getting on switchboard.com and going to some town I'd like to visit some day and check out what kind of restaurants and shops they have. In little podunk towns all over the country their are ice cream parlors with the words 'Krispy' or 'Kreme' in them. It would be very easy to say that they all did not get their name from attempting to steal it from Krispy Kreme. What is the doughnut giant going to do, go around to every podunk town with legal papers and try to shut down anyone who's name sounds similar?
I think that 'intent' ought to be paramount here. A porn site trying to capitalize on a registered name ought to be hauled into court. Not this little ice cream parlor.
The PR is what will hurt them in terms of public opinion. Back in the 1960's, Col. Sanders sold Kentucky Fried Chicken to an investor's group headed by John Brown (future Rat governor of Kentucky). The aging Colonel was kept on as the TV commercial face of the company, but otherwise he had no involvement with KFC. The Colonel grew restless in retirement, though, and decided to start a new restaurant in his hometown of Corbin, KY. He had no intention of building a new chain. It was just a single restaurant, but he called it Col. Sanders' Kentucky Fried Chicken and served chicken using the legendary herbs & spices that he personally had invented and made famous. The new owners of the KFC conglomerate sued him. It created terrible publicity for them. They eventually dropped the suit in return for the Colonel signing a document pledging that he would run only the one restaurant and not open another one.
There was another interesting suit back in the 30's. White Castle was founded in 1921 as the first hamburger chain. Their burgers were (and still are) the famous little square burgers with mustard, onion, and a pickle (plus cheese if you want the cheeseburger). The success of White Castle led to many copycat chains starting up. The most blatant was White Tower, which not only copied the White Castle menu, but also their building design, which was a small, square white brick building designed to look like a tiny castle. White Castle ignored the copycats as long as they were operating in different geographic regions from them. But their paths crossed when White Castle and White Tower both decided to expand into Ohio. White Castle sued and won. White Tower had to change their menu so that it wasn't so blatently the same as White Castle. They were allowed to keep their name, but I think all future White Tower locations had to have a different enough architecture that the two chains couldn't be confused.
The most successful White Castle copycat was Krystal, founded in Chattanooga in 1932. They copied the White Castle menu, but not the building or name. They also operated exclusively in the South, while White Castle operated in the North and Midwest, so they never seriously crossed paths. Even to this day, the only metro area in America with both White Castles and Krystals is Nashville!
Trademark rights arise out of first use, not first registration. So if the drive-in could prove that they had used the name continuously since before the donut company then the donut company could not stop them from using it, even if the drive-in never registered the name.
Columbus Dispatch
Lesser-known Crispie Creme happy to stay in Chillicothe
Sunday, November 28, 2004
MIKE HARDEN
On Friday, $10 would buy either two dozen doughnuts from Chillicothe’s Crispie Creme or one share of stock in the homonymic national chain.
With Krispy Kreme financials oozing more red than a squashed jelly doughnut, Mike Renison, co-owner of Crispie Creme, allowed that he never had much taste for the sort of expansion experienced by his bigshouldered competitor.
"You could have all of that and you might have a lot of money," Renison mused, "but you’d never have a life."
In 1933, the patriarch of the Crispie Creme clan, Renison’s greatgrandfather, Jack Morris, had a shot at growing the family business. He chose the less traveled road.
Morris calculated that a new doughnut shop was good for about a two-year run before faddish public taste began to wane. He had opened a Crispie Cream in Mulberry, Kan., in 1929, then sold it two years later to move on to Paducah, Ky. Twenty-four months after that, Morris put the Paducah shop on the market, and it was snatched up by Vernon Carter Rudolph.
Rudolph schooled himself in the doughnut trade in Paducah, the fruits of his tutelage ultimately emerging as the now financially ailing Goliath, Krispy Kreme.
Morris never looked back.
By 1954, the two-years-and-acloud-of-dust philosophy of running doughnut shops was beginning to wear thin on Renison progenitors.
Mike Renison’s father, Jim, decided to set down roots in Chillicothe.
When Jim died in 1989, Mike and brother Mark took the reins. Having helped nurture the shop to an output of 500-800 dozen doughnuts a day, they flirted with the allure of franchising.
"But then it would take us away from Chillicothe," Mark observed, "and home. We couldn’t watch our families grow.
"Running a business is like making a batch of doughnuts. There’s so many things that have to be done just right to make it work."
He and Mike decided they could do one thing extremely well only if they didn’t spread themselves too thin.
So there’s just one Crispie Creme.
Krispy Kreme has 429 "factory stores" and more than 20,000 grocery outlets.
The financial picture at Krispy Kreme is so muddled that, according to a report last week, the corporation’s own auditors refused to sign off on financials.
Crispie Cream has one accountant. His name is Steve. He’ll sign off.
Some think Krispy Kreme got too big, bold and fancy too fast.
At Crispie Cream, Mike and Mark still aren’t convinced that they need an intercom for the drive-through.
"Carla can look out the window and see back about two or three cars, and she knows what they’re going to order already," Mike said. "By the time they get to her, she’s got the bag waiting. We don’t need one of those machines you talk into."
The Crispie Cream gang knows its clients by their first names, looks in on ailing regulars and carries crullers to funeral wakes.
Of the last, Mark said of his father, Jim, "My dad would be standing there with the doughnuts when the family opened the door and he’d be crying harder than them." A few days before Jim died, he took his sons aside to give them one piece of advice about running the family business: Don’t let it run you. At the other Krispy Kreme, it isn’t clear which end wags the other.
mharden@dispatch.com
You'll have to stick with "Pinin'", I'm afraid.
Makes sense to me.
Kleenex is still a copyrighted name. But aspirin, like you stated, has passed into the public domain.
Thanks Redhead, I though that Kleenex was one too. When I go to the store I always write down Kleenex, but don't always buy that brand of "facial tissues." LOL Sometimes succes is a problem ;) Now, how about "nylons" ?
Thanks Redhead - interesting.
There as absolutely nothing in Mulberry Kansas today. I used to work at a Limestone Quarry there, 1 diner, and a bunch of old rundown houses, was all there is there.
Maybe 500 people and a bunch of dogs.
Krispy Kreme Doughnuts and Krispy Kream Drive-In are close enough in spelling that it is almost obvious they were doing a take-off (rip-off?) on the older and famous name. There could be a case.
I would be surprised if an open and continuous use of the trademark by the ice cream parlor for over 30 years wouldn't put it well beyond any limitations period."
Actually, according to the article the stand has been open that long, but new owners changed the name 21 years ago.
Having eaten my fair share of White Castles, and visiting Krystals this past summer...there all right. I've never seen mustard on a hamburger before. Now I'm going to have to get to White Castle this week, just because you mentioned them. I've abandoned Dunkin Donuts for Krispy Kreme. However, always rooting for the underdog(the Mom & Pops of the world), I could be headed back to Dunkin Donuts for their French Donuts. I was a Dunkin Donut junkie in my younger years.
There's nothing like the the Colonel's chicken, except for possibly Popeyes. There are none of those close to where I live, but since you seem to have a good history and knowledge of fast food--you may know them. If not, you need to get to a Popeyes and try their beans and rice. As far as the Colonel goes, I'm glad he won his suit and was able to live out his life at doing what he loved. Though, he probably made a bundle when he sold the first time around.
You've made me very hungry.
So, using this arguement; a company called "Gee M" that manufactures motorcycles fits your model exactly. It's spelled differently, and the company does not make automobiles or trucks. You could argue that your last name is Gee, and the 'M' stands for motorcycles.
How long do you think you would be in business before General Motors (GM) shut you down? Trademarks MUST be enforced by the holder; with the penalty of losing the trademark as the result of ignoring a potential trademark violator. If Disney doesn't threaten daycare providers with lawsuits for having pictures of Mickey Mouse and other Disney characters painted on the walls; Disney risks having all Trademark protection on these characters lost into the depths of Public Domain.
According to this site the Donut maker may just simply be wrong!
FROM: http://lawgeek.typepad.com/lawgeek/ip_rights_and_wrongs/
November 01, 2004
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.
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