Hormel Sues Over SpamArrest Name

slammin'j writes "According to this article from the Star Tribune, Hormel has filed a lawsuit against Spam Arrest LLC. for endangering "substantial goodwill and good reputation" of their meat product, Spam. If Hormel wins, it could be bad news for umpteen companies that make use of the word spam in their name."

To late foo!

[dankjones]

They haven't done anything to protect their name, they have no right to start harvesting litigous funds now.

Hormel will probably lose.

[earthforce_1]

IANAL disclaimer - The judge will probably rule there is no confusion between the two. Spam has taken on an entirely different generic meaning w.r.t email, that is unlikely to be confused with the popular luncheon meat. Hormel should have enforced their trademark much earler to stop the alternative usage of the word "Spam". This is almost certainly too little, too late.

Sounds legit to me...

[swordboy]

Isn't one supposed to check [uspto.gov] for this kind of stuff prior to creation? I just started my own business and spent significant time on the patent/trademark website.

Spam spam spam spam eggs and spam!

[m00nun1t]

So are they going to go after Monty Python as well? :)

Oh for pete's sake

[The Tyro]

Don't they realize that this makes their trademark MORE commonly known, and probably increases their sales?

Now honestly, apart from college students (and most of them probably prefer Ramen noodles), who actually eats spam regularly? Don't they realize that people might hear the term, see their can on the grocery store shelf and think "oh, so that's what it was named for... wonder what it tastes like?"

You'd think they'd appreciate the free publicity.

Common Usage

[Thorofin]

Hopefully they won't win because the name spam has gone from a trademark into common usage. IANAL, but had they sued the first few people to use spam to describe unsolicited email, they might have had a chance.

Re:Is this a change in position?

[kindbud]

It's not a change in position. The company in question is using Hormel's mark in commerce, not just in conversation like we are using it here.

I'm not an avid Spam eater but...

[Craig Nagy]

They were very accepting about the use of the word until Spam Arrest tried to trademark the name; so don't jump all over them about waiting until now to say anything.

From the article: "...challenged Spam Arrest's applications to trademark its company name"

Re:SPAM IS good...

[douglas jeffries]

as i understand, it was short for "spiced ham". but your suggestion seems far more accurate :-)

Commonly used term

[Datoyminaytah]

The term "SPAM", when used to refer to "unsolicited commercial electronic mail", is so commonly used that it is even used in the names of laws, such as the "Anti-Spam Act of 2003".

http://www.spamlaws.com/federal/108hr2515.html

Will Hormel also sue the U.S. Congress?

While I'm all for companies defending their trademarks, I think Hormel has waited just a LITTLE bit too long on this one.

Re:To late foo!

[rifter]

Heck, should have RTFA. It looks like they are only suing because Spam Arrest tried to Trademark Spam. in that case I think they are in their rights because otherwise the UCE company could try to stop them selling their meat-like substance as Spam.

Re:To late foo!

[arkanes]

Unless Hormel starts marketing either email filters or bulk email software, I don't see how it's an issue. Trademarks only cover things withing a specific trade.

Re:Good reputation?

[tuckerclerico]

Well, if spam would taste better -- and be better for you -- Hormel wouldn't have the problem. It's Hormel's own fault. If you're in the business of making prefabricated meat -- despite the fact that said meat is made from pork shoulder and ham -- and packaging the meat so that it's easily purchased at WalMart, Target, and any other trashy store that has no business selling food in the first place (except food, that is, that's sealed tight and involves pull tabs and lots of excess meat juice when the pulltab is popped), then you pretty get what you deserve.

Re:I read, but

[ReconRich]

Regardless, trademarks must be "vigorously defended" or they slip into the public domain. This may just be an attempt on the part of Hormel to ensure that SPAM does not slip into the public domain.

-- Rich

Re:To late foo!

[DeadSea]

A trademark is only good for a certain area and a certain product. There can be an AbsobestWidgets(TM) in Boston and another unrelated AbsobestWidgets(TM) in Phoenix. Delta(TM) can be an airline and an unrelated Delta(TM) can sell faucets. AbsobestWidgets(TM) in Phoenix could not open a new store in Boston without a name change. Delta airlines could not start selling faucets without a name change.

The exception to this is famous marks. Marks that everybody knows and everybody associates with a specific company. Trademarks such as Pepsi, Levis, and McDonalds fall in this category. If you saw a new product under one of these names, you would automatically assume that the product came from the famous company, not from some new entity.

Is spam a famous mark? Yes. But it is also now a famous generic term for email. Hormel should be able to stop anybody from selling a food product under the mark of SPAM. But because spam for email is generic, they should not be able to stop a company against unsolited email from including the generic term for unsolited in their name. In this context it is very unlikely to cause any confusion. Nobody will think that A computer program that deletes unwanted email named SpamDoerAwayWith was made by the makers of the meat.

Hormal not bad guys here

[cigarky]

Hormel are not being "bad guys" here. Hormel is not trying to keep you from using the word spam in your private conversations. They do want to keep another proprietary, for-profit company from holding a trademark on a name they they have used, developed and marketed to the public for many years. If they do not show due diligence in protecting their trademark, they lose right to that trademark. Even if the court rules against them, they made due diligence to protect the trademark. I think Hormel has been pretty cool about letting people use the term and has not been hassling people but must make efforts to protect their trademark.

The SPAM Example

[yintercept]

I agree that Hormel has been generous in allowing use of their name for unsolicited email.

When Hormel loses the battle, and every variation of the word spam can be registered by others as a trademark, then Hormel will be held up as yet another example of why companies should not be generous with use of their trademarks, and why they have to be aggressive in suing over property rights issues.

Personally, I hope Hormel wins and that spamArrest will have to come up with a different name for their product. But is it more likely to be yet another example of how nice companies lose.

Case Closed

[FrankNputer]

From the SPAM corporate website:

We do not object to use of this slang term to describe UCE, although we do object to the use of our product image in association with that term. Also, if the term is to be used,

it should be used in all lower-case letters to distinguish it from our trademark SPAM, which should be used with all uppercase letters.

Now, given that Spam Arrest is NOT trying to trademark "SPAM Arrest", then by the companys' own admission they don't have a case.

Let's give Hormel some credit here

[djembe2k]

The Cease and Desist in this case referenced in the parent post is for the use of images of cans of SPAM by an individual on his website, not just the term. They also threw in some stuff about domain names that use "spam" in them and so on, which is probably just typical lawyerly overkill. (By the way, does anybody know the outcome of this 5-year old case?)

People keep saying that Hormel hasn't been defending their trademark, but it seems to me that they have established a clear policy on their site about how the feel about their trademark, and they've stuck consistently to it. In short, if you use "spam" generically, they don't care. If you use it in a way that associates it with their product (i.e. images of the product, or SPAM in all caps as they always do it), they'll come after you.

In this case, somebody wants to trademark the name, and they are fighting that. It seems reasonable that two trademarks containing the word "spam" could be more of a threat than widespread, non-trademarked generic usage. Their position seems reasonable and consistent. Maybe wrong, maybe right, but reasonable.

And I think that they should be given a lot of credit for this. It they were really sending out C&D letters consistently for years and years, they'd be one more of the many companies regularly mocked and griped about on /., but they haven't been. They've only taken legal action in rare cases that are more likely to affect them directly. They're using common sense, and keeping their lawyers in check, but not signing away their rights. Let's give them some credit.