Krispy Kreme trademark looming

The Pittsburgh Post-Gazette reports in the article Doughnut giant might sue over name that a battle is underway over the trademark Krispy Kreme. Krispy Kreme Doughnuts Inc., which has been in business since 1937 (and registered their trademark in 1951) is unhappy with the use of "Krispy Kream" by Krispy Kream Drive-In, which has been located in Belsano, Pennsylvania since 1968.

The Drive-In company serves ice cream, and no doughnuts. Krispy Kreme Doughnuts has been expanding their business nationwide over the past few years, and started opening shops in Pennsylvania in 2001. An employee of Krispy Kreme Doughnuts recently spotted the Krispy Kream ice cream store. A cease and desist letter ensued, which will likely lead to a lawsuit being filed by the doughnut company.

I think that Krispy Kreme might have a tough time against Krispy Kream. I think it is quite clear that the two marks are similar, that both uses are for similar goods/services, and that Krispy Kreme has been in business longer (and using the mark longer) than Krispy Kream. There is one good defense for Krispy Kream: the doctrine of laches. This doctrine basically states that someone cannot wait forever when bringing a lawsuit. It usually has to be an unreasonable delay in enforcing trademark rights.

How can Krispy Kream successfully argue that Krispy Kreme waited too long? I think their strongest argument is that Krispy Kream has been in business since 1968. They have been in business for 34 years, and it is likely that they have been listed in phone books, newspaper articles, the Internet, and in advertising material. All of these are items that are easily searchable, and are also items that are searched during a trademark search or a trademark watching service. One would expect that Krispy Kreme would want to keep their mark safe, and would be searching nationwide for infringing marks- even in states where they did not have restaurants.

As Krispy Kreme has been in Pennsylvania since 2001, one would assume that they would notice a business in their state with a very similar name. It looks like Krispy Kreme either ignored Krispy Kream, or Krispy Kreme was not watching their trademarks closely enough. Either way, I think that Krispy Kream (ice cream) should likely prevail against Krispy Kreme (doughnuts). Krispy Kreme waited too long to enforce their rights, and this is a classic example of when the doctrine of laches can be used in a trademark lawsuit.

If Krispy Kream is successful, then they will likely be able to continue using their name in their geographic area, and not out of that region- that's where Krispy Kreme Doughnuts has stronger trademark rights. This may cost a little money for Krispy Kream ice cream to take on, but will should ultimately be successful. Some states also provide that the losing party pay the costs/fees of the winning side in a lawsuit- I'm not sure about Pennsylvania (I'm a California attorney).

USTPA: Confusing solicitation for trademark monitoring services

A client who has filed a trademark application before the United States Patent and Trademark Office (USPTO) received a notice from the United States Trademark Protection Agency (USTPA) about an electronic trademark monitoring service. Trademark watch services follow trademark filings in the US and abroad, and notify trademark holders of similar marks. Their threshold for "similar" is a lot lower than that of the USPTO, so you often get notices for marks that are not really that similar- they just want to make sure you get your money's worth. Anyone with a valuable trademark should have their marks watched through such as service.

The problem I have is that USTPA is perhaps going too far with their solicitations. It looks more like correspondence from the USPTO than from a private company. The header states that it is "Form 104B 01/02 - Supplementary," and names USTPA in full. The font does look similar to the font on correspondence from the USPTO in trademark matters. The letter quotes trademark laws, and warns about allowing similar marks to exist- stating that they may weaken your mark. The letter does not state at all that USTPA is not associated with the USPTO in any form.

The client contacted me because they thought that this was indeed an official communication from the USPTO. The trademark application was filed before the USPTO with the contact info of my law firm as the correspondence address- and the USTPA used the info pertaining to the applicant to contact our client. I have received solicitations for trademark watch services before, and have forwarded them to my clients. I feel that this letter is almost deceptive, and in the end, also too expensive. They charge $395 per year. There are other services that can do so for less money, including your current trademark attorney.



Click on the image of the solicitation from USTPA to view a larger image.

Excel trademark battle brewing

Software company Microsoft, which makes the ubiquitous Windows operating system and office productivity suite Office, is suing a company over the use of the term "excel." As anyone who has used Microsoft Office knows, there are several programs included in the suite: Word (word processor), Excel (spreadsheet), and Outlook (email/calendar). There are other programs bundled into more expensive versions of Office, including PowerPoint (presentations).

According to the article Microsoft in battle over trademark, Microsoft has been using the name "Excel" since 1985, and now has sued someone for trademark infringement. Savvysoft Inc. makes a product called TurboExcel, which claims to speed up using Excel by up to 300% [wow!]. The company picked the mark after researching its availability. Finding no pending applications or registrations, the company went forward.

Ooops. Microsoft does not like it when people pick names similar to their own. The company now known as Linspire found this out when they called themselves "Lindows." They produced a version of Linux aimed to be as easy to use as Windows. Let's just say it was a nasty court battle around the world, and Lindows settled for being paid a bunch of money to change their name.

Lacking a federally registered trademark, Microsoft filed one for Excel in April, and is now suing Savvysoft Inc. A very important component in trademark disputes is who was using it first, and Microsoft claims all the way back to 1985.

Savvysoft is likely to face a huge barrage of legal filings from Microsoft, and they will likely change their name. This is the cheap option. Fighting might take a long time, and a lot of money, and might not be successful.

I decided to do a little research on behalf of Savvysoft. Turns out that Microsoft has filed trademark applications for some of their office products, but not others. I could not locate a federal trademark application for "Office" and "Word." I found one for "PowerPoint," which was filed back in June 1987. An application for "Outlook" was filed in February 1996. Both "PowerPoint" and "Outlook" have become federal registrations.

The question I ask now is why does a large company such as Microsoft, which has billions of dollars hanging around, wait to file trademark applications on its major products? It is possible to obtain common law trademark rights. To do so, you need to get your product identified with the mark you are using, so that people see your mark and associate your product. This can be tough. Usually this is accomplished by placing the small TM by the name. I recommend any company or person that wants to obtain trademark rights to place a TM by a name or logo that they use as a trademark (and have not yet filed a federal trademark application). While you can obtain common law trademark rights without putting the small TM next to your mark, it is very simple to do so, and it really helps show that you are using it as a trademark.

Looks like the legal people at Microsoft decided not to take this path. Not only did they not file a trademark application on "Excel," they also did not think it necessary to even put a little TM by the name. Here is a screenshot from my version of Excel (Office XP). Some identifying info has been deleted:



I suspect they might start using the little TM now, but it's a little late. My research from the USPTO also returned a few trademark registrations for goods and services using the mark "Excel." Trademarks for similar goods are usually more likely to be a bar to an application. In this case, Microsoft's application for "Excel" is in international class 9. I looked, and there are several registrations in class 9 for "Excel," including one for computer related products that has an earlier use date than Microsoft. This might get interesting if Microsoft is unable to obtain a federal registration...

Spam trademark

One of my favorite news site, The Register, is carrying a story about Hormel and their trademark "Spam." We all know and love spam, that meat product comprised mostly of "pork shoulder meat with ham meat added." My high school used to make "spam & cheese," and it wasn't that bad.

Well things were going well for Hormel and their spam trademark, until unsolicited postings started on the Internet. Originally spam described postings to Usenet newsgroups, and were generally off-topic. Once people started getting lists of email addresses, the joy we know as "unsolicited email" or "unsolicited bulk email" became a problem. Basically any unwanted email or web traffic is known no as spam.

Which brings us to our friends Hormel. They've decided to support their mark in the UK. Once you obtain a trademark, you need to protect your rights. You need to defend against infringers, and also need to defend against dilution of your mark. Trademark dilution occurs to famous marks when they begin to obtain a generic meaning. If the trademark holder does nothing to protect against this, then it is possible they can lose their trademark. A very common method of protecting against dilution is to advertise your mark. I recall seeing ads for Xerox, reminding people of two things. First, you make photocopies, and not Xeroxes, of documents. Second, Xerox has more than one "r": the registered trademark ® symbol. Other companies that protect their marks in this method are Kleenex (as opposed to facial tissue) and Coca-Cola (in some areas "a coke" means "a soda").

It seems kind of strange that Hormel is protecting against unsolicited email. Dilution generally occurs when people use a trademark to distinguish something similar- such as using Xerox instead of photocopy, or "google" instead of "Internet search." I don't think people use "spam" to refer to a meat product, instead it's something completely different- a computer related item. It could also be that Hormel is just looking for a nice way to increase sales in the UK by drawing attention to their product in a different manner. It has been a long time since Monty Python did their spam skit...