Ice cream wars: Steve has nothing to do with Steve's
In a way, it's flattering, Judy Herrell says: Yet another ice-cream maker is taking a page from her partner Steve's book and making plans to sell hand-crafted ice cream.
But the latest Steve's Ice Cream is going too far, Judy Herrell continued in an interview with Universal Hub. As that New York-based venture prepares to open up shop in Somerville, it's unfairly playing up a connection to Steve Herrell that doesn't exist, she says.
Steve Herrell has had absolutely nothing to do with the new venture - which bought up the "Steve's Ice Cream" name from whoever owned it after the last Steve's closed in 2006 - and he still retains ownership of the original ice-cream formulas the helped make his little shop in Davis Square a smushing success in the 1970s.
"It's really upsetting to us," she said. It's particularly annoying because the Herrells are planning their own return to the Boston area, where the last Herrell's closed in 2009.
Judy Herrell pointed to things such as the new company's Get to Know Us page, which features a photo of the original shop and begins:
In 1973 Steve's revolutionized American ice cream in Somerville, Massachusetts by custom-blending flavors by hand as customers watched, mixing-in candies, cookies, fruits and nuts in utterly original and personalized combinations. Steve's pioneered the craze for funky mix-in flavors that transformed ice cream in America.
"It's not nice to have your identity stolen," she said. If that venture wants to open up in Somerville, fine, but leave Steve out of it, she said. "They should be Steve's Ice Cream from New York." Plus, she said, the whole "artisanal" thing the new Steve's is emphasizing - one of its partners is Taza Chocolate of Somerville - is hardly new.
"We have been doing that for 30 years, longer, Steve has been doing it for 40 years," she said.
Currently, the Herrells have their own shop in Northampton and one franchisee in Huntington, NY. They also sell their ice cream to several retail outlets in the Pioneer Valley. The Herrells once had several franchises in the Boston area, but the last one closed in 2009.
She said the economy has hindered efforts to recruit new franchise owners in the Boston area willing to make ice cream on site in small batches and to become parts of their communities, but that the couple has been getting more inquiries of late.
She said she and Herrell - divorced, but still working together - are looking at several possible locations, including Brighton, the Longwood Medical Area, Harvard Square, Kendall Square, Central Square and, yes, Davis Square. She said they even talked to the owner of the building that replaced the one that housed the original Steve's. Alas, she said, its current configuration doesn't lend itself to an ice-cream shop.
For the Herrells, this would mark a return to the area that last saw a Herrell's in 2009, when franchisees in Harvard Square and Allston parted ways with the company.
Comments
Interesting...legally using the name, but...
So if they bought the rights to the name Steve's ice cream then what they are doing is legal. However, they should not be implying that this new company actually started in 1973.
Only one thing for Steve Herrell to do: re-open a shop or two in the area!
So he's complaining that he got paid for his name?
Such a problem to have! Is Steve Herrell really complaining that he got paid a bucket of money for his name and brand, and now he's shocked that the new owners are using it?
If he really cares, he should offer to buy the brand back. Otherwise, I say he owes us all a free ice cream cone for listening to him whine.
No, not the name
It's what they consider the attempt to make people think this newest incarnation of the name has anything to do with him, when all it is at this point is the name.
Yeah that
What Adam said.
He should re-claim the Allston Village Herrell's and restore it to its former glory.
ex-husband
While Steve and Judy still work together at Herrell's, they are no longer married -- and according to Judy's Facebook page, she is now remarried to someone else also named Steve (well, Stephan actually).
Fixed
Maybe we need an ice-cream soap opera. Call it "Scoops."
Now fixed
Still says "husband" in first 'grafOK, now it's really fixed.What is it with Families and Ice Cream?
Between this and the Rancatore family, multiple soap operas going on.
Gus Rancatore got his start with Steve, the real one
And is one of the ice-cream people Judy Herrell had only nice things to say about - along with Ben and Jerry (who apparently talked to Steve before starting their own place up north).
I'm puzzled by Judy Herrell's
I'm puzzled by Judy Herrell's complaint and it borders on defamation when she says "It's not nice to have your identity stolen." If the UniversalHub is correct that the new venture bought the name from whoever owned it when the last Steve's closed in 2006, the same of the name and use of the name is legal and happens all the time. Steve Herrell presumably made his money when he sold the name Steve's Ice Cream, and he presumably could have gotten a higher price when he sold the name if it was a permanent sale of the name that didn't revert back to him upon the closing of the 2006 store.
Unless there is an allegation that the name should have reverted back to Steve Herrell or there was a right of first refusal that was violated or something along those lines, it's unseemly for Judy Herrell to complain now. Sales contracts, even those involving a business name, still involve an ancient legal principle you're probably familiar with: no backsies.
Does a trademark lapse if not used?
This one hasn't been used for the past five years. Is it still anyone's property to sell once it becomes disused?
Yes, trademarks do lapse...
Yes, it is possible for a trademark to re-enter the public domain if it is not used in commerce. We call it abandonment. A trademark is always about use, and the owner who stops using it in commerce runs the risk of abandonment.
Federal trademark registration lasts for a period of 10 years. After five years, the owner must file an affidavit of use with the PTO showing the mark's use in commerce. If no affidavit, the PTO will cancel the registration.
It's not that it would become anyone's property to sell, it's that someone would have a hard time stopping a new registration using a mark that was abandoned, or had its registration canceled.
Not the name, the history
Judy Herrell's complaint seems to be not so much the use of the "Steve's Ice Cream" name, which hadn't been Steve's to use for decades now, but the appropriation of the history of Steve's business to the "story" of this new ice cream business - and I can certainly see how that part would feel kind of inappropriate.
Presumably, though, the
Presumably, though, the people who bought the name didn't buy the name, they bought the business. It's just that all that existed of the business at the time was the name.
Nope
No - they bought the trademark (the name.)
http://blogs.villagevoice.com/forkintheroad/2011/03/steves_ice_crea.php
Trademark is the business?
When the only asset a business has is it's name, and the name is sold, is that the same as selling the business? In other words, did the new owners really buy the business which was comprised solely of a name at that point?
I'm inclined to think that when you buy the name, you get the history behind the name. I mean, that's what the name is and that's why they bought it. There was value in the name and the history of the name.
Suppose somebody had bought Steve's (and the name) when he had one measly store open. Could that new owner claim ownership to all the history of Steve's even though they had nothing to do with it? Sure. So, it's not that big a step to situation they're in now.
I'm sorry, but when you sell something, you lose control over it, even if it's your name and everything connected to it.
That's my 2 cents.
Then they can do what they want with it
By buying the name, they effectively bought the brand. The brand dates back to 1973, thus justifying the new Steve's use of that brand's history. If you want an example of how this works, look into Pabst brewing and the Kalmanowitz Trust, which bought the brands of failing breweries throughout the 1970s and 1980s. As a result, the own the entire history of brands including Schlitz, Olympia, Ballantine, Old Style, Schaefer, Stroh's and others. They can use those companies' history in their promotional material, they can sell the brand if they'd like (as they did when a buyer in Providence wanted to relaunch Narragansett) or they can just put whatever's left on the brewery floor into cans and slap the brand on it, as they do with Piel's and Golden Anniversary.
The Herrells have no right to complain if they sold the name. All of that history and "identity" is exactly what they put a price tag on.
Show me exactly where...
...the new owners of these beer brands claim that the originators/creators of those beer brands are still directly involved in them.
These people are claiming that Steve Herrell is involved in their new ice cream shop. He is not. Why is that such a difficult concept for you to get your anonymous little head around?
Not exactly
What the website actually says is that the founder, Not Steve, learned to make ice cream the Steve's way by working in Steve Herrell's store many years ago and now plans to use that method in the Steve's store which they will be opening. That doesn't imply involvement or an endorsment of the new shop by "the" Steve, IMO. I wonder if the Herrells would even bother with this objection if they weren't looking to come back to the same market.
The original text didn't name 'Not Steve'
It just said "founder" which led at least Adam and me to infer "Steve".
Don't Assume
If it originally said the following
then I think that the Steve Herrell was a bit of an assumption on your part and we all know what assumptions do. Did you try clarifying with whoever the current owners are before publishing this story?
We don't even see an attempt
No quote from Stein or "attempts to contact Stein..." clause or anything of that sort. Meanwhile, the folks who go to this place in Brooklyn or on 42nd Street aren't going to know or give a shit about any of this. "Somerville, isn't that in Jersey?"
It doesn't work that way
I bought a couple stepstools from Avenue Victor Hugo when they were selling their fixtures after the store closed. Doesn't mean I have the right to claim my office is now a venerable used bookstore.
They bought the name, not the history.
Funny, it doesn't work that way either
It's not like Stein bought a bunch of freezers and scoops from Steve Herrell, he bought the name Steve's Ice Cream. That's the business. With the business comes the history. ConAgra owns Orville Redenbacher's popcorn. In their case, they get not only the history, but the permission to use his (now deceased) likeness as well. This isn't about selling a "name," it's about selling a "brand." All that history is what makes the brand valuable. It's called brand equity, Stewart, and it's the reason someone would want to buy that brand in the first place -- for rights to the brand, product and established consumer base that comes with it.
Trademarks and trade names ≠ good will
It is my understanding that trademarks (and trade names) are totally separate assets from "good will". Selling a tradename is not at all the same as selling a business as an entirety. Selling a trademark only gives the buyer the same right of exclusivity regarding use of the mark as the original trademark owner possessed. "Good will" (assuming a buiness has any) usuaally costs a whole lot extra.
Name vs Who does Steve work for?
To clarify, we have no issue with Steve's Ice Cream using the name Steve's. They did buy the Trademark! However, they have implied either directly or indirectly that Steve Herrell is now associated with their new company, and are stating that to the press. Steve does not now, nor has ever worked for Steve's ice cream since he sold it in 1977. That is what we take issue with!
What's in a name?
Why is this so hard to understand? The name "Steve's Ice Cream" has been sold (and apparently resold) but not the history of Steve Herrell. It's like whoever bought the rights to the Lennon-McCartney songs from the estate of Michael Jackson producing some music and saying it's produced by McCartney. (Hopefully it wasn't McCartney that bought the rights ...or it blows the analogy.)
The press release was clearly written to make people think, that there was a connection between the man who had originally started "Steve's Ice Cream" with the "Steve's Ice Cream" that was being opened now. The only connection was that Steve sold the name of the store to someone who then sold it to the current owners. Not the recipes, not the "artisanal skills," not the history.
Remember when Jordan's had to have the annoying clarification on all their radio spots? "No longer confused with Jordan Marsh." These folks are obviously trying to confuse themselves with Steve Herrell for the goodwill that would get them from old ice cream fogeys who would waddle down to get some sweet-tasting nostalgia....COME BACK REAL STEVE!! Don't make me drive out to Northampton!!
Confusion = infringement
I'm not sure who owns the trademark for Steve's ice cream (either state/regional or federal) but the textbook of trademark infringement is a concept called "likelihood of confusion." That is, whether consumers will be confused into thinking that the source of goods is synonymous with a particular source. So, for example, if I started selling "Coke brand Beer" I would have a problem because most folks would be confused and think that Coke was now making beer. Coke could then sue for infringement.
Ask Wally Amos
Your McCartney-Jackson analogy is way off. First off, Sony owns the Beatles publishing rights that Michael Jackson held. Those songs were produced by McCartney and Lennon -- who still get writing credits -- but the money for their reproduction and sales goes to Sony. If you used this analogy correctly, not only would the Steve's scenario be decidedly similar, but you'd be reinforcing the position of the brand's current owners.
No. 2, have a Famous Amos cookie. The story of Wally Amos is printed on the back of every bag, even though Amos sold the rights to his cookie empire years ago. It's because he founded the brand, he brought it along and he sold it. His history IS the brand's history much as Steve Herrell's is the history of Steve's. Yes, Steve and Judy, you sold all of that when you sold the brand.
If the new owners of Steve's imply that you and Steve still work there -- well, that's a problem. But if Ben Cohen and Jerry Greenfield decided tomorrow that they were done with Ben and Jerry's, unfortunately Unilever would still have the rights to their history. Same goes for the guys from Nantucket Nectars, which is now owned by Snapple.
Open Uncle Steve's or Herrell's or something else, but don't get mad at people for using something they paid for -- and that you profited from.
Working on it! Thanks!
Working on it! Thanks!
Steve Herrell's Persona
HI Everyone,
Thanks for you comments! If anyone is interested in opening a Herrell's(R) store, please let us know! :)
Our argument stems from their website and info given to reporters, implying that Steve is somehow working with the new Steve's Craft Ice Cream. In both their "Getting to Know Us"section and "FAQ" of their website, they either imply or state Steve's involvement. They never say Steve sold Steve's or that Steve is no longer involved in their business.
Judy Herrell
As for that description
The exact text:
Nowhere in here does it mention Steve and Judy Herrell or make more than passing mention of the original steve. It makes it very clear that David Stein is responsible for this latest incarnation and in no way implies that either of you are still involved.
That text has been changed within the past week
When Adam and I first read it, it did not mention David Stein at all. This led both of us to the erroneous conclusion that Steve was re-entering or re-founding his old company.
Changed within the last few hours, actually
When I wrote my post this morning, I went to the "Get to know us" page on their site and copied the text, which, at the time, didn't mention Stein.
FAQ has also been changed to add David Stein's name
Here. I know Stein's name wasn't in there the last time I looked at it. Had these pages read this way from the beginning, I suspect Judy and Steve would be less concerned.
What it originally said (thanks, Google Cache):
and yeah, they misspelled "Herrell"; that's also fixed now.
It's easy to see the
It's easy to see the confusion, but the original text was referring to someone other than the original Steve. The correction makes this much more obvious.
Reading comprehension isn't what it used to be
So, looking at this "original text," it answers the question "Is this the original Steve's from Boston." The answer is yes, as there is no other Steve's since Herrell sold out and sold the brand.
"Our founder, then a 20-something philosophy student in nearby Cambridge" -- Was Steve Herrell even a philosophy student in Cambridge? Was he 20-something when Steve's was founded? Did he "learn how to do 'expert mix-ins'" in the original Steve's? If the answer to any of these is "no," then it's fairly obvious they're not talking about the same person.
Steve Herrell was born in 1944
so he was "20-something" (28 or 29) when he started the original Steve's in 1973. I don't know whether he was ever a student in Cambridge (but neither would most readers). Where else would he have learned to do 'expert mix-ins' if not in his own store?
Yes, this text was misleading in its original form. I'm glad that they changed it.
Um, Steve wouldn't have "learned" it
What did he do, teach himself? No, Steve "innovated" it or "began doing 'expert mix-ins' (a phrase it seems the new owners are also attempting to brand). Einstein didn't "learn" the theory of relativity, Alexander Graham Bell didn't "learn" how to create a telephone. "Learning" implies the teaching of existing facts and knowledge. Nobody "taught" Steve Herrell how to mix elements into his ice cream. He experimented with it and invented the approach.
UHub, the capital of "better right than helpful," is getting a lot of this story -- and the reading comprehension that could have avoided it -- absolutely wrong.
Teaching yourself is certainly a form of learning
you don't agree?
stubbornness thy name is...
...Anon. Face it Ron, Anon will not admit defeat. Anon cannot see why anyone would ever think the text you recovered could ever be misconstrued in a quick read to result in confusion between Steve Herrell and the founder of the latest incarnation of "Steve's". Anon is convinced that we are all fat simpletons with a vested interest in protecting our old ice cream dealers. Anon is quite possibly an intellectual property lawyer. Or s/he could just be particularly anal.
At any rate I'm ready for a JP Licks run. I just wish there was one in East Boston so I wouldn't have to waddle so far.
What's important...
...is that they changed the text to remove any ambiguity, confusion, etc. Face it, these guys don't exactly have an expert editorial staff writing this stuff. They sit down at a PC and write this stuff, then maybe ask their significant other "Whaddayathink?", then post it. It looks like they reacted to some comments and made some changes. I call that a good thing.
yer right
Very true. And in the end the worst that would have happened had the change not been made to the text (and our far too long discussion of this) would be people going to an ice cream shop and maybe chatting up the counter staff with a "where's Steve?" and getting the reply that actually he's not involved with this store it's just the name. "Oh...." a shrug and then the face quickly buried in a mound of ice cream. end o story.
Even that quote sounds fine
I don't see anything offensive in the quote you gave. It doesn't seem to imply that Steve is involved in any way with the current Steve's.
It is funny how this doc has been changed a few times just today. Trying to make Adam look like a liar. ;-)
They changed thei website! Thanks!
Hi everyone,
According to this post, Steve's Ice Cream changed their website to include the new owners name. It also clarifies the comment made by David Stein that he learned to make ice cream from Steve in the original Steve's. Clearly from this change on their website, it shows that David learned to make ice cream from the Steve's that was owned by the third corporation that owned Steve's Ice Cream, Integrative Resources of NY. They completely changed the recipes the former owner of Herrell's had used. That former owner was famed food guy Joey Crignale, who bought the Steve's Ice Cream store directly from Steve Herrell in 1977.
Funny, we now believe that the last Steve's Ice Cream closed in mid-summer of 2006, and became Sprinkles Ice Cream. So, it seems the New Steve's Ice Cream might not really have the right to use the old history either, because on Non-Use. Thanks for the tip! It's a legal thing!
changing subjects...
Anyone know what's going on with Brighams? Is Deal Metrics still involved with the shop/restaurant business? Did the former Brigham's employees ever get paid/severance?
Federal trademarks
Data for federally registered trademarks is easy to obtain on the web.
[http://www.uspto.gov/trademarks/index.jsp], then click on "Search Marks".
A trademark for "STEVE'S ICE CREAM", as applied to "Ice Cream for Consumption On or Off the Premises", was issued in 1981 to Steve's Ice Cream Inc. of 191 Elm St., Somerville MA 02144. It was renewed in 1987 and again in 2002. The "Last Listed Owner" is The Fresh Ice Cream Company LLC of Holbrook NY. Intermediate owners are not shown on the government's website.
A number of other trademarks for varieties of the name, including the simple word "STEVE'S" and the design using a cone for the apostrophe, have been allowed to lapse over the years, some of them when they were not renewed in 2009. Some of these were for other services such as restaurants. The last listed owner of most of those trademarks was Steve's Homemade Ice Cream Inc. of Lindenhurst NY.
In 2008 The Fresh Ice Cream Company LLC applied for new trademarks on "STEVE'S" and "STEVE'S ICE CREAM". The Trademark Office has indicated that both those trademarks will be issued once the applicant verifies that they've actually begun to use the trademark. (You can't trademark a name unless you're using it. Nor can you renew it if you're not using it.)
In 2010 The Fresh Ice Cream Company LLC applied for a new trademark on "STEVE'S CRAFT ICE CREAMS". This application has been put on hold by the Trademark Office but is still considered "LIVE" until further action occurs.
yes
yes, thanks Charles. I checked to discover that Steve's Ice Cream's last store closed in Mid-summer of 2006. In October of 2006 the sign over that store was changed to Sprinkles Ice Cream and is still doing business with the same owner. Therefore, because of NON-USE, the new Steve's Ice Cream may not really have the right to use the old Steve's Ice Cream history either.
Thanks for the help!