Darrell Sapp, Post-Gazette Chrissy and Jack Hoover stand in front of the Krispy Kream sign at their mom-and-pop ice cream stand on Route 422 in Belsano. Krispy Kreme Doughnuts is threatening to sue them over trademark infringement. Their ice cream stand had the Krispy Kream name when they bought it. The shop originally opened in 1968 under a different name. Jack Hoover is holding a ceramic ice cream cone bank that they use for display purposes. Click photo for larger image.

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.

The entire dispute came about by happenstance, when an employee with Krispy Kreme Doughnuts was in Western Pennsylvania visiting various markets. The employee traveled Route 422 through Cambria County, and drove right past the small ice cream stand, Krispy Kream Drive-In. By the end of September, the owners of the ice cream shop had received a certified letter, asking them to stop using the name.

"I said, 'Oh, boy, Krispy Kreme found us,' " said Chrissy Hoover, the owner of the ice cream stand, when she opened the letter. "We were kind of shocked."

Hoover, who has had the stand with her husband, Jack, for 21 years, thinks the whole dispute is ridiculous.

"They say we're going to confuse people," Hoover said. "Out of the hundreds of people that came that day, not one was confused."

The names are spelled differently, she contends, and at her shop, they don't sell doughnuts.

But to trademark experts, neither of those things necessarily matters.

The doughnut giant registered its name as a trademark in 1951, and under federal law, that means it can't be used in business by anyone else.

Because both companies sell food, and because both names sound the same, that could be enough for a trademark infringement, said Thomas Maronick, a professor of marketing at Towson University. The standard for proving trademark infringement, he said, is confusion.

"Are consumers likely to be confused when they see the name and hear the word?" Maronick asked.

In this case, he thinks, they would, even if Krispy Kreme Doughnuts shops and the Krispy Kream Drive-In don't look the same

Protecting the trademark

A company spokeswoman, Amy Hughes, would not talk about specifics in the potential trademark infringement case with the ice cream stand, except to say that Krispy Kreme's name is its brand, and it must be protected.

The company has had battles over trademark infringement in the past, including a recent case where the company sued Entenmann's for using the trademarked phrase "original glazed" on their doughnut boxes.

"We have to protect our trademark, regardless of what the situation is," Hughes said.

There have been many cases in the United States where corporate giants take on small, privately owned businesses over potential trademark infringement.

Victoria's Secret officials sued a mom-and-pop store in Kentucky, named Victor's Little Secrets, which sold lingerie and adult novelties, claiming the smaller store's name would dilute the lingerie giant's brand. In that case, the owners of Victor's Little Secrets won, because the court found Victoria's Secret had not proved dilution of the company name.

Similarly, Ringling Bros. and Barnum & Bailey Circus sued the Utah Travel Council in federal court in 1996 for the slogan, "The greatest snow on earth," because it sounded too similar to their famous mantra, "The Greatest Show on Earth." Utah won after the court said the circus failed to show dilution to its brand.

On the other hand, Hasbro Inc., the maker of the popular children's board game, Candyland, sued an adult Web site, called Candyland.com, claiming it had a trademark on the name, "Candyland." In that one, Hasbro prevailed, and the site was shut down.

The Krispy Kream Drive-In, open from spring to fall about 10 miles from Ebensburg, has the retro look of a 1950s car-hop. A large, faded sign out front shows a little boy eating an ice cream cone. There are carports to protect customers from the rain, and they must walk up to one of three windows to order.

The shop serves eight rotating flavors of hard ice cream, and can produce its soft ice cream in any of 30 flavors, including pina colada. Its best-seller is vanilla.

Besides sundaes, ice cream cones and milkshakes, Krispy Kream Drive-In also sells some food, such as chicken sandwiches, hot dogs and burgers.

A popular place
On any sunny summer Sunday, people are lined up four and five deep. It's the only ice cream shop for 10 miles around.

The couple bought the stand in 1983, when Jack Hoover was the milkman servicing that stop. They got it as a source of additional income. Since then, it has become their only income. They've done well with it, Chrissy Hoover said, and expanded it with a miniature golf course 12 years ago.

Krispy Kream Drive-In has helped put the Hoovers' two children, who began working at the shop when they were 11, through college, and each year, the Hoovers employ eight to 10 high school students to work there. Chrissy Hoover brags that out of those students, they've produced several successful young people, including doctors and lawyers.

Krispy Kreme Doughnuts Inc., famous across the country for its "original glazed" doughnuts, was founded in Winston-Salem, N.C., in 1937 and entered Eastern Pennsylvania in 1956. Stores didn't open in Western Pennsylvania until 2001. Now, there are highly popular Krispy Kreme stores in Pittsburgh, Erie, Greensburg and Altoona, as well as gas stations and grocery stores throughout the region which sell their products.

One of the things the chain is noted for are signs that light up at each store, announcing to passing customers that the doughnuts are hot and freshly made.

The company went public in 2000 and had third-quarter revenue, released last week, of $170 million, a net loss of $3 million. Over the first three quarters of the year, it lost $21.7 million, which the company has blamed on falling sales at some stores and higher costs.

It's also under investigation by the federal Securities and Exchange Commission for possibly inflating its profit estimates after it repurchases franchise stores and converts them into company-owned stores.

Despite the odds against them, the Hoovers hope to prevail.

Initially, the doughnut company attorneys gave the ice cream shop 10 days to comply with their requests. Later, after correspondence between the two parties, Krispy Kreme said it was willing to offer them a "liberal time period" to phase out the use of the name.

No matter how much time they're given, though, the Hoovers aren't budging.

Their attorney, Gary A. Jubas, doesn't believe the ice cream stand is a threat to the doughnut company, and he hopes that will help his case.

"Anyone in Cambria County driving past that custard stand would not confuse that with Krispy Kreme Doughnuts," Jubas said. "The No. 1 thing is, we're not intending to deceive anyone."

He is even willing to have his clients place a sign on the property that says they aren't affiliated with Krispy Kreme Doughnuts.

"It's a family-grown business," Jubas said. "They deserve to keep that name."

The case hasn't reached the courts yet, but the Hoovers expect it will. They plan to fight as far as they can.

There are many reasons they say they don't want to change the business name. After 36 years with it, that's how it's known in the community; it would be a hassle to have to change their logo on everything, as well as on their business licenses; and it would cost a lot of money.

"We're not rich people," Chrissy Hoover said. "We can't afford what they can afford to do to us."

Jubas knows that seeing the case through court also could be expensive, but he's willing to do what he can to help.

"If I have to work for ice cream, that's how it's going to be."