Will canned ham ever be the same again? More to the point, could Hormel, owner of the 1937 vintage brand, prevent registration of “Spam Arrest” for anti (electronic) spam software? Ray Coyle serves up a report of the US Trademark Trial and Appeal Board verdict.
Who: The U.S. Trademark Trial and Appeal Board
When: 21 November 2007
Where: United States
Law stated as at: 31 January 2008
Hormel Foods Corp. ("Hormel") is the registered owner of the "Spam" trademark and has sold canned meat under the brand since 1937. Hormel not only uses the trade mark on the packaging of the famous canned meat, but also in a number of other ways designed to promote and strengthen the brand. These include its use on clothing, kitchen utensils and, somewhat surprisingly, screensaver software.
Spam Arrest LLC ("LLC") is a software company that has, since 2001, been marketing a software product designed to help prevent users receiving a very different kind of spam, unsolicited e-mails, under the name of "Spam Arrest". LLC sought and was granted registration of the trademark "Spam Arrest". Hormel claimed that the mark infringed their earlier mark and initiated cancellation proceedings in the U.S courts.
No blanket "SPAM" monopoly
The court accepted that Hormel's registered trade mark had undisputed fame and strength but stressed that this did not entitle them to a monopoly on the use of the mark for all goods and services. The question that the court had to address was how far Hormel's rights extended.
As is the case under English law, Hormel's action would have succeeded if they had convinced the court that there was a likelihood that end-consumers would be confused as to the origin of the products. Hormel argued that the distribution of a Spam screen saver put them in the same market as LLC, but were unable to convince the courts of this. Unfortunately for Hormel, this entire line of argument came to naught once Judge Seeherman had reached the brave conclusion that consumers would be unlikely to confuse software with canned meat.
However, one gets the impression that Hormel never had great expectations for this line of reasoning and were in fact relying on showing "dilution".
In order to succeed, Hormel needed to show that their mark was not only famous and distinctive but was being tarnished by LLC's use. The interesting aspect of this case came to the fore when the court considered this point.
The word "spam" has two clear and distinct meanings, one in respect of canned meat and the second in respect of unsolicited e-mail. The core question that the court had to consider, therefore, was whether use of the mark consistent with the second "generic" meaning could dilute the value of the protected mark being used consistently with the first meaning.
Ultimately, the court held that it would not: "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 under the statute because that mark is not distinctive with respect to the goods which the generic term describes". Essentially, LLC did not infringe Hormel's mark as they did not use the word as a distinctive trade mark. When used in respect of e-mail, the word is merely generic.
Why this matters:
Although this case was decided under U.S. law, a similar concept of "dilution" exists under s.10(3) of the Trade Marks Act 1994. This prohibits the use of another's registered mark where the use would take unfair advantage of, or cause detriment to, the earlier mark. This case sets out clearly how the U.S. courts will approach words that have started out as distinctive trade marks but become generic in another context.
It may be that brand owners initially see it as an advantage when their brand name starts to be used as a generic description for something completely different as it does not initially seem to threaten the mark. Once the mark remains distinctive for the goods, it will remain enforceable. However, as this case illustrates, this type of generic use can have a negative impact on the mark. If a brand owner tries to enforce his rights outside his normal field of operations, he will likely find that those rights have been severely curtailed.