Seattle Trademark Lawyer

On Friday, the Puget Sound Business Journal ran a story about a Trademark Trial and Appeal Board case involving Maple Valley, Wash.-based McSweet LLC. McSweet, which has sold MCSWEET-branded pickled cocktail onions for almost 20 years, decided to apply to register its mark with the Patent and Trademark Office. That’s when McDonald’s Corp. stepped in to oppose. McDonald’s alleges that MCSWEET infringes and dilutes its family of famous MCDONALD’S trademarks, including MC, MCCAFE, MCPIZZA, MCRIB, MCMUFFIN, MCFLURRY, and others. McSweet denies the allegations.

The article says McDonald’s offered to consent to allow McSweet to continue to use MCSWEET if McSweet dropped its application to register the mark. McSweet reportedly refused.

The article quotes me as saying: “If you have a famous trademark like McDonald’s, it casts a long shadow that others have to avoid with their trademarks.”

The parties’ testimony periods close in September.

The case cite is McDonald’s Corp. v. McSweet LLC, Opposition No. 91178758 (TTAB).  

In 2005, Lloyd Lifestyle Limited and Lloyd IP Limited filed an opposition proceeding with the U.S. Trademark Trial and Appeal Board opposing Tukwila, Wash.-based Soaring Helmet Corp.’s intent-to-use application to register NITRO as a word mark for “motorcycle helmets and protective clothing.” Lloyd IP Limited and VSJ Limited separately petitioned to cancel Soaring Helmet’s registration for NITRO RACING, also a word mark used in connection with “motorcycle helmets and protective clothing.”

On Dec. 11, the TTAB ruled in favor of Lloyd in both proceedings.

TTABlogger John Welch describes the decision as follows:

“In a battle over the marks NITRO and NITRO RACING for motorcycle helmets and protective clothing, the Board ruled in favor of Opposer/ Petitioner Lloyd Lifestyle in finding that Applicant/Registrant Soaring Helmet was not the owner of the marks at the time it applied for registration. Consequently, the Board sustained Lloyd’s opposition and granted its petition for cancellation.

“Plaintiffs and Defendant were using the same Chinese factory to make their respective helmets, which led to the original contacts between the parties. Plaintiffs claimed that it developed the NITRO products for sale in Europe and, when Defendant expressed an interested in selling the products in the USA, Plaintiffs agreed that they could sell NITRO brand products made by approved manufacturers. Plaintiffs also claimed that it directed Defendants to register the mark in the USA on Plaintiffs’ behalf. Defendant asserted that Plaintiffs expressed no interest in the USA, and that Defendant, by using and registering the marks in the USA, became the owner.

“Because there was no written agreement between the parties, the Board had to decide which version of the story was supported by the evidence. It found Plaintiff’s account to be ‘more reliable and more credible’ and Defendant’s testimony to be ‘argumentative, internally contradictory and otherwise less than clear.’”

The case cite is Lloyd Lifestyle Ltd. v. Soaring Helmet Corp. (Opp’n No. 91164265 and Cancellation No. 92045075) (TTAB 2007).

This morning, the Seattle Times wrote about the Hormel v. Spam Arrest decision as part of its “Sunday Buzz” feature. As discussed here, Seattle-based Spam Arrest won the proceeding, enabling it to keep its federal registration for SPAM ARREST in connection with software that fights unsolicited commercial email.

The decision involving Spam Arrest marked the “first and only” win a software company has had over Hormel, the maker of SPAM canned meat, over the everyday use of the word “spam” in a trademark to refer to unsolicited commercial email. 

The article quotes me as saying this is the first time I can think of in which a trademark became a common word not through genericide (as happened with aspirin and escalator) but through mutation. Spam Arrest doesn’t use “spam” to refer to canned meat — a proprietary use Hormel retains — but to mean unsolicited commercial email.

“Hormel has tried to put the genie back in the bottle” by attacking anti-spam software companies’ use of the term, but the Trademark Trial and Appeal Board’s decision found Hormel “does not have a monopoly over ordinary English words, which the trademark board found spam was.”

Hormel’s hometown newspaper, the Star Tribune, describes the dispute here. The TTABlog discusses it here.

On Nov. 21, the Trademark Trial and Appeal Board dismissed Hormel Foods Corp.’s petition to cancel the trademark registration owned by Seattle-based Spam Arrest, LLC, for SPAM ARREST, with the word “spam” disclaimed, for “computer software, namely software designed to eliminate unsolicited commercial electronic mail.”

Hormel had argued Spam Arrest’s mark was not entitled to registration based on a likelihood of confusion with and dilution of Hormel’s family of famous SPAM trademarks. Spam Arrest responded that “spam” is a generic term, which in connection with the word “arrest” is not likely to cause confusion or dilute Hormel’s marks.

(For more background, see STL’s report on the Feb. 23 hearing, which I was fortunate enough to attend.)

TTAB Judges David Sams, Ellen Seeherman, and Gerard Rogers unanimously sided with Spam Arrest:

“The word ‘spam’ is a recognized generic term for unsolicited commercial email. There are various stories about how this term came to be adopted, including that it was a term used on computer game-playing sites to describe different types of abusive behavior, and that it is an acronym for ‘sending public announcement messages.’ However, the widely-reported origin, which appears in Merriam-Webster’s Collegiate Dictionary, 11th ed. © 2003, is that it is derived from ‘a skit on the British television series Monty Python’s Flying Circus in which chanting of the word Spam overrides the other dialogue.’ Whatever its origin, ‘spam’ is well recognized today as the generic term for such email.”

This finding permeated the Board’s opinion. With respect to Hormel’s likelihood of confusion claim, for example, the Board found even though the parties’ marks contained the identical term, “spam,” Spam Arrest’s mark left a different overall commercial impression:

“Although petitioner’s mark SPAM was derived from ‘spiced ham,’ it must be considered an invented word rather than a suggestive term, and therefore it has no meaning other than that of a trademark for petitioner’s goods. On the other hand, because ‘spam’ is a generic term for unsolicited commercial email, and applicant’s goods are identified as ‘computer software, namely, software designed to eliminate unsolicited commercial electronic mail,’ as it is used in respondent’s mark SPAM has the connotation of the generic term, referring to unsolicited email, and the entire mark has the connotation of software that stops or filters spam/unsolicited commercial email. 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 Board also found that while “SPAM” is famous for canned meats, Hormel failed to establish that its mark’s fame extended to anti-spam software:

“Thus, although the fame of petitioner’s mark certainly favors petitioner herein, petitioner has not shown how that fame has carried over to computer software designed to eliminate unsolicited commercial electronic mail, or that consumers would associate such software with the source of petitioner’s SPAM and SPAM-derivative products and services.”

The Board concluded: “After considering all of the du Pont factors on which we have evidence or argument, we find that petitioner has failed to prove that respondent’s mark SPAM ARREST for ‘computer software, namely software designed to eliminate unsolicited commercial electronic mail’ is likely to cause confusion with petitioner’s mark SPAM and its SPAM-derivative marks for its various goods.”

With regard to dilution, Hormel took the position that the use of “spam” is acceptable when it is used as an ordinary, generic term, but that it is not acceptable when SPAM is used as part of a trademark. The Board rejected that argument as being too fine a point:

“Although we understand the distinction that petitioner is making, we do not believe that this is a significant difference, or one that is drawn by the statute or the case law. If a term is generic, others should have the right to use it, even as a disclaimed term in a trademark, to describe the goods or services with which the mark is used. And as we stated in our discussion of likelihood of confusion, respondent is using the term ‘spam’ in the mark SPAM ARREST in its generic sense, and that is the meaning that would be perceived by consumers.

“This is not to suggest, however, that simply because a mark has a generic meaning in other contexts it can never be considered distinctive in terms of proving dilution. We are saying only that, when a trademark has an alternative generic meaning, and it is 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.”

Consistent with this finding, the Board found that Hormel had failed to prove its mark is distinctive when consumers encounter the mark in the context of unsolicited commercial email or products or services that address that problem. The Board also found that Hormel had failed to prove dilution by blurring or dilution by tarnishment.

The Board designated its 63-page decision as not having precedential value.

The case cite is Hormel Foods Corp. v. Spam Arrest, LLC, Cancellation No. 92042134 (TTAB 2007).

On Sept. 10, the Eastern District of California found that Nikepal International, Inc.’s use of NIKEPAL in connection with laboratory goods and services dilutes by blurring Nike, Inc.’s NIKE trademarks under the Trademark Dilution Revision Act’s likelihood of dilution standard. For this reason, the court also reversed the Trademark Trial and Appeal Board’s dismissal of Nike’s opposition to Nikepal’s registration of NIKEPAL. On Sept. 18, the court amended its findings of fact and conclusions of law, which are available here. (STL previously discussed the court’s order on summary judgment here.)

Nike has used NIKE in connection with athletic shoes, apparel, and sports equipment since the 1970s. It owns ten federal registrations for the NIKE word mark alone, and 19 others involving the word NIKE. It is the largest athletic seller of athletic footwear and apparel in the world.

Nikepal has used NIKEPAL in connection with glass syringes and other laboratory goods and services since 1998. It has two part-time employees. It operates entirely through its Web site, www.nikepal.com, email, and the telephone. In 2000, it applied for a trademark registration for NIKEPAL for “import and export agencies and wholesale distributorships featuring scientific, chemical, pharmaceutical, biotechnology testing instruments and glassware for laboratory use, electrical instruments, paper products and household products and cooking appliances.”

After a bench trial, Judge Garland Burrell, Jr., found that NIKE was famous, since “[b]y the 1990s, Nike had spent in excess of a billion dollars for promotion of NIKE products in the United States”; sales of NIKE products reached the billion dollar per-year level before Nikepal adopted the mark; and NIKE is registered on the Patent and Trademark Office’s principal register.

The TDRA defines dilution by blurring as an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” 15 U.S.C. § 1125(c)(2)(A). The court concluded Nike had established dilution by blurring under each part of the TDRA’s six-factor test because: “The parties’ marks are nearly identical”; NIKE is inherently distinctive; Nike’s use of NIKE is substantially exclusive; NIKE is readily recognized; Nikepal’s owner was aware of NIKE before he adopted his company’s name; and Nike’s survey evidence showed that 87% of the people in Nikepal’s own customer pool associated the stimulus “Nikepal” with NIKE.

The court entered a permanent injunction preventing Nikepal from using the term “Nike” or any term confusingly similar thereto alone or as part of any trademark, domain name or business name under which Nikepal offers goods or services in commerce.

The court also reversed the TTAB’s decision dismissing NIke’s opposition to the registration of the NIKEPAL mark on the ground that Nike had presented new evidence, namely, a survey showing “the vast majority of the survey respondents, representing a significant segment of Nikepal’s target customer group, associate Nike and/or its products and services when they encounter NIKEPAL, thus perceiving the two marks as essentially the same.” This, the court found, compelled reversal of the TTAB’s decision.

The case cite is Nike, Inc. v. Nikepal Int’l, Inc., 05-1468 (E.D. Calif.).