Yesterday, the Trademark Trial and Appeal Board heard oral argument in the cancellation proceeding Hormel Foods brought against Seattle-based Spam Arrest over the registration of SPAM ARREST as a trademark. STL attended the hearing in New York, where the Board presided in a special sitting.
Here’s some case background: Spam Arrest, LLC, makes software that reduces unsolicited commercial email, otherwise known as “spam.” In 2003, it obtained Registration No. 2701493 for SPAM ARREST in International Class 009 for “computer software, namely, software designed to eliminate unsolicited commercial electronic mail.” In doing so, Spam Arrest disclaimed any trademark rights to the word “spam.” It allegedly began using the mark in commerce in 2002.
Hormel Foods Corp. and Hormel Foods, LLC, make the well-known canned meat products sold under the registered trademark SPAM. Hormel allegedly began using SPAM as a trademark in the 1930’s. Since then, it has expanded its and its licensees’ use of SPAM beyond canned meat products to include a wide range of goods, such as t-shirts, video games, a downloadable screen saver, and a Broadway show. It now owns a “family” of SPAM registrations, including SPAMARAMA, SPAMBURGER, and SPAMTASTIC.
In May 2003, Hormel filed a petition to cancel Spam Arrest’s registration on grounds of dilution and likelihood of confusion. In its answer, Spam Arrest denied Hormel’s claims, primarily arguing that “spam” is generic, that the public is not likely to confuse a maker of software with a maker of meat products, and that Hormel had either acquiesced or sat on its rights in allowing the word “spam” to become a synonym for unwanted commercial email. Thereafter, Spam Arrest conceded that Hormel’s trademark is famous.
(Additional background on the case, Cancellation No. 92042134, is available in the Patent and Trademark Office’s TTABVUE database, as well as here and here.)
Friday’s hearing was presided over by TTAB Chief Judge David Sams, Judge Ellen Seeherman, and Judge Gerard Rogers.
Hormel began its argument by stating it coined the term SPAM 70 years ago. Therefore, when the consuming public first heard the term, it exclusively thought of Hormel. Today, it argued, brand awareness of SPAM is “nearly universal,” with “up to 100 percent” of consumers surveyed associating it with Hormel.
Hormel did not dispute that “spam” is generic for unwanted commercial email. Yet, it argued that “44.7 percent” of consumers still have “Hormel and the famous brand come to mind” when encountering “spam” in this generic context.
The board mainly questioned Hormel on dilution and likelihood of confusion. In particular, the board asked whether the generic portion of a mark is even capable of causing dilution. The board also questioned whether consumer confusion is likely when the public has come to associate the brand with Hormel and the generic term with unsolicited commercial email.
On the dilution claim, Chief Judge Sams asked: Both sides conceded it is a generic term. Can you have dilution when a term is generic?
Hormel responded: Yes. “Spam” is not the generic or common name of computer software of any kind. SPAM ARREST is a weak trademark. It is irrelevant that SPAM is disclaimed because you have to consider the entire trademark.
Later, Chief Judge Sams asked: Can anyone use SPAM in a generic sense? Doesn’t your position sound like a right in gross?
Hormel responded: For famous marks, it does get pretty close to a right in gross. Dilution is the appropriate remedy for a mark like SPAM.
On likelihood of confusion, Judge Seeherman asked: Don’t we have two different meanings for the marks?
Hormel: Not really. The brand SPAM when used on all things still carries a meaning quite apart from canned meat. There’s an iconic statement about it. I don’t want to limit the meaning to canned meat.
Judge Seeherman: When the defendant uses SPAM for a product that filters unwanted email?
Hormel: That’s defendant’s intended meaning. But if someone sees SPAM ARREST, the likelihood is that people will think there is some sponsorship or affiliation with Hormel.
Spam Arrest began its argument by stating: This case presents an issue the Board has not considered. May the owner of a famous trademark that’s also a generic term prevent a party from using the mark in the generic sense?
It argued that its registered mark should be considered as a whole, stating: SPAM and SPAM ARREST are not seen as essentially the same.
Spam Arrest also argued that any “whittling away” of SPAM’s distinctiveness occurred “long before Spam Arrest used SPAM” in its trademark because consumers began to associate “spam” with unwanted commercial email fifteen years ago. Spam Arrest likened the public’s association with unwanted email as an ocean and Spam Arrest’s influence on that use as a raindrop in the ocean.
Judge Seeherman asked: Because SPAM has two meanings, does that mean you can’t have dilution?
Spam Arrest: No. When “spam” is used in connection with a generic term, consumers recognize it’s used in connection with obnoxious email. When the word “spam” is used in connection with spam-elimination software, dilution is impossible. Any dilution has already occurred. Spam Arrest doesn’t make a dent in the dilution that has already occurred.
Judge Rogers asked: Hormel seems to refer to “spam” as a slang term. Spam Arrest’s definition doesn’t show the word is slang. Is it still a slang term or is it part of the current lexicon?
Spam Arrest: It’s not a slang term. Hormel’s brief says it’s a generic term. Both sides submitted dictionary defintions saying it means unwanted commercial email.
The Board then questioned Spam Arrest on its contention that Hormel’s survey evidence is unreliable because, among other things, it was based on a mall survey. Judge Seeherman, in particular, asked why that constituted a flaw. Spam Arrest responded that since SPAM products are sold in shopping malls and Spam Arrest’s software is only sold through the Internet, the results were skewed in Hormel’s favor. Judge Seeherman asked if any anti-spam software was sold in malls. Spam Arrest answered that such software was available at stand-alone stores like CompUSA but generally was not available in malls.
Finally, Judge Rogers asked about Spam Arrest’s acquiescence defense. Spam Arrest responded that Hormel had posted a statement on its website (apparently gone now) that it did not object to the public’s use of “spam” as a slang term referring to unwanted email, and has never attempted to stop the public’s use of the term in that way.
Judge Seeherman asked if Hormel had ever told Spam Arrest in particular it could use “spam” as part if its trademark. Spam Arrest responded that Hormel had “told the world” that it was ok to use “spam” as a generic term and that Spam Arrest was a subset of that population. Spam Arrest later conceded this evidence better supported its laches defense.
Both sides argued for 30 minutes (and probably longer). Both made very good presentations. It also was clear that the panel was well-prepared. The case is now in the panel’s hands. My strong suspicion is the panel will uphold the PTO’s decision to register SPAM ARREST and deny Hormel’s petition due to the widespread generic use of the term. That’s how I would decide the case if I were on the panel.
The hearing was attended by approximately 75 persons as part of the Practising Law Institute’s excellent continuing legal education program entitled, “Navigating Trademark Practice Before the PTO 2007: From Filing Through the TTAB Hearing.”
N.B.: Attendees were told not to record the proceeding. Therefore, I had to resort to taking notes as fast as I could. It was a little easier for me to take down Hormel’s argument than Spam Arrest’s because Hormel’s attorney spoke a little slower. It was a little easier to take down questions from Chief Judge Sams and Judge Seeherman than Judge Rogers for the same reason. Though I made every effort to be accurate, the statements in this post attributed to various speakers are likely not perfect. That’s why I generally did not use quotation marks.