Board dismisses Spam lawsuit

Staff

Published Thursday, November 29, 2007

By Bryan Clapper, AlbertLeaTribune.com

AUSTIN — Hormel Foods may appeal a decision by the U.S. Patent and Trademark Trial and Appeal Board allowing a Seattle-based software company to call its e-mail filtering program “Spam Arrest,” a company spokeswoman said this morning.

“Although we understand and accept that the term ‘spam’ has taken on new meaning in recent years, it is important to remember that we created the Spam brand name more than 70 years ago and have invested significantly to build, support and protect the brand,” Julie Craven, Hormel vice president of corporate communications, said. “We are reviewing all our options at this time, including an appeal.”

The Austin-based maker of the Spam family of canned meat products contested the Spam Arrest trademark in March 2003 with the trademark office, saying the software’s name “so resembles (Hormel’s) Spam trademark and their Spam family of marks as to be likely, when applied to (Spam Arrest’s) services, to cause confusion, mistake, or to deceive as to the source of origin” of the software.

However, the three-judge panel that makes up the Trademark Trial and Appeal Board wrote in the Nov. 21 decision that Spam Arrest’s use of the word “spam” is allowable because “spam” is used in two different contexts: as an “invented word” in Hormel’s usage, but in regards to a generic term for unsolicited commercial e-mail in Spam Arrest’s usage.

“Because of this difference in connotation of ‘spam’ in the respective marks, the marks as a whole are different in connotation and commercial impression,” the judges wrote. “We consider these differences to outweigh the similarities in appearance and pronunciation resulting from the common element ‘spam.’”

Spam Luncheon Meat was introduced in 1937, and 6.3 billion cans of the product have been produced since then, according to court documents. Hormel Foods owns several Spam-derived trademarks, including Spamarama, Spamburger, Spam Jam and Spamtastic. The court’s decision makes Spam Arrest the first company other than Hormel to own a trademark that includes the word “spam.”

“We are obviously very disappointed with the U.S. Patent and Trademark Court’s decision in this matter, as we feel we presented a strong case to the court to protect the rich history of one of America’s truly iconic brands,” Craven said.

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