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).