In November, the Trademark Trial and Appeal Board thwarted the efforts of Hormel to prevent software maker Spam Arrest from using the word spam as part of its “SPAM ARREST” trademark. Hormel Foods Corp. v. Spam Arrest, LLC, Cancellation No. 92042134 (TTAB November 21, 2007). The Board confronted the problem that the word spam is a famous mark for a meat product and at the same time is also a generic word for unsolicited commercial email. Ultimately, the Board found no likelihood of confusion and no dilution because, although the marks contain an identical word, the meanings of the marks are very different in connotation and commercial impression. Until now, Hormel has successfully kept the United States trademark registry free from other spam-based trademark registrations. Spam Arrest is now the only other company to register a trademark that contains the word spam.
Hormel coined the term SPAM in 1937 in connection with its well-known processed meat product. Hormel actively objects to and polices others’ use of the word as a trademark, but does not object to the use of spam to describe unsolicited commercial email.
Spam Arrest registered the mark SPAM ARREST for computer software designed to eliminate unsolicited commercial electronic mail, and disclaimed the word spam. Hormel moved to cancel this registration based on likelihood of confusion and dilution of its SPAM trademark.
For likelihood of confusion purposes, the parties and the Board agreed that the SPAM mark for Hormel’s canned meat and related products is famous. They also agreed that spam is a generic word for unsolicited commercial email. Although the Board considered all of the likelihood of confusion factors, a unique analysis applied to the generic use of a word that is also a famous mark.
The Board determined that the fame of the SPAM mark entitles Hormel to broad protection, but not a monopoly on use. Specifically, SPAM’s fame does not extend to computer software. The use of the word spam in SPAM ARREST is derived from the generic meaning, not from the famous meaning. Therefore, there is no likelihood that consumers are going to be confused into thinking that Spam Arrest computer software is related to SPAM meat product.
Hormel’s dilution claim focused on dilution by blurring. To succeed on a claim of dilution, among other things, a mark must be found to be famous and distinctive. Hormel’s dilution claim failed because, the wellrecognized alternative meaning of spam diminishes the distinctiveness of SPAM. The Board found that “when a trademark has an alternative generic meaning, and it is being used in a second mark to project that generic meaning, there can be no dilution of the original mark … because that mark is not distinctive with respect to the goods which the generic term describes.” In the field of email filtering, SPAM ARREST does not dilute Hormel’s rights because it projects the generic meaning of spam, describing unsolicited commercial email. While this is good news for companies that make spam filtering software, it remains to be seen how this dilution principle will be applied to other terms that are famous for one meaning and generic for another.
The Trademark Trial and Appeal Board’s decision in this cancellation action is not precedential. Given Hormel’s aggressive defense of its SPAM trademark rights, Hormel will likely appeal the decision and continue its efforts to stop others from using spam as a part of their trademarks. Nonetheless, Hormel’s failure in this cancellation action opens the door for others to use marks containing the word spam in connection with email filtering software. Whether or not that door gets slammed shut remains to be seen.
