Spam vs spam - final faceoff

Here's some from a story about Austin-based Hormel Foods and its case against the software company called Spam Arrest:

Can a brand be “diluted” and can spam e-mail be confused with Spam the meat product?

Those questions are at the core of the Hormel Foods versus Spam Arrest LLC case. The Trademark Trial and Appeal Board has slated the final hearing of the four year court battle for Friday in Virginia.

Seattle, Wash.-based Spam Arrest is a software company that provides e-mail management services, i.e. blocking unwanted advertising e-mails that are commonly called spam.

Hormel Foods, which makes the Spam canned meat product line, contends Spam Arrest’s trademark “dilutes the distinctive quality” of its products.

“You can’t own a word in the English language,” retorts attorney Derek Newman, who represents Spam Arrest. “This is like Apple Computer Co. trying to prevent an apple juice maker from using apple in its name.”

The federal board’s decision on the case will be made at a later date. However, Newman does not think that will be the end of Hormel versus Spam Arrest.

“I think we will win and they will appeal,” he said.

Hormel did lose a similar case in 1995 when it took the makers of the “Muppets Treasure Island” movie to court over the use of a puppet character named “Spa’am.” A judge dismissed the case saying, “The American public can tell the difference between a puppet and a lunchmeat.”

The Spam Arrest trademark case and Hormel’s approach to it are novel enough that the Practicing law Institute in New York has chosen the hearing as centerpiece for a trademark course. Attorneys in the two-day class, which costs $1,295, will watch the hearing live by video.

Hormel was not available for comment for this article. However, beside the dilution comment, Hormel’s claim also says, “…the marks have developed and represent valuable, substantial, and exclusive goodwill and reputation inuring to the benefit of petitioners. This goodwill and reputation is harmed by the use and registration of the mark Spam Arrest.”

Brian Cartmell, CEO of Spam Arrest, scoffs at Hormel’s comments and has previous called the Fortune 500 company “a corporate crybaby.”

“Not one person confuses our anti-spam service with Hormel’s canned meat – the average American consumer is smarter than that,” he said.

Comments

[Alan]

Spam Arrest's lawyers have a weak argument. "Spam" (as junk mail) is colloquialism, not a word already in the English language. The difference between Apple, Inc, and SPAM is that SPAM was a trademark *created* by Hormel. The Muppet character was permissible because it was used in a parodying manner. Spam Attack is using another's trademark with the intent to profit from that trademark.

[taxpayer]

I concur with Alan. Spam Arrest is clearly using Hormel's trademark with the intent to profit.

[AbeFroman]

This is a silly case. SPAM is a trademark and a colloquialism. It is both (and in my opinion, both are unwanted in my home).

They may win this fight...and maybe they're right, but where do you stop?

The Apple Juice argument is dumb, I think. Instead, Apple Computers and Apple Records. There's little confusion, even though Apple Computers now is in the music business.

No one cares about labels, so no one confuses the two.

No one cares about SPAM vs SPAM...it's not something that's top of mind, so no confusion will take place.

SPAM's always been fast on the attack...which, when you make a popular but inferior product, I guess you have to be.

[AbeFroman]

p.s. Sure they'll profit from it...but would they be better to call the product something that wouldn't imediatly identify it's use? Is it Spam Arrest's fault that Spam is the accepted name for unwanted e-mail?