Brian Cartmell, CEO of Spam Arrest, passes along the news that Hormel’s preposterous “SPAM trademark” challenge (most recently covered by me here) to the former’s business has been kicked, tin-can like, down the alley of meritless causes. Here’s the opinion.
Some interesting tidbits in this “non-precedential” (ugh) opinion: There’s a lot of technical wrangling regarding who pleaded and who waived what and when. We will leave that to John Welch to sort out. Once again, the now-defunct, preposterous rule regarding the obscure form in which a trademark — which is part of not only the public record but the record of the very agency deciding these cases — comes up, but the TTAB, for a change, acknowledges that everyone in the room has accepted the record as submitted and does not punish anyone for violating its secret-handshake clause.
The board refused to consider the testimony of a trademark “expert” who essentially gave a legal opinion regarding the “fame” of the SPAM mark under the standards of trademark law. The TTAB properly refused to consider what amounted to a legal opinion on the merits from an “expert” — not repeating an error made seemingly every day in District Courts hearing trademark cases.
Here’s the, er, meat of the opinion — the LIKELIHOOD OF CONFUSION analysis:
Here, it is undisputed that petitionerâ€™s trademark SPAM is a famous mark in terms of the likelihood of confusion analysis. At the same time, it is also undisputed that â€œspamâ€ is a recognized word, a generic term for unsolicited commercial email, and that respondent uses and has registered its mark SPAM ARREST for software that blocks spam. This dichotomy between the fame of petitionerâ€™s trademark and the generic meaning of that same term must inform our analysis of the du Pont factors. . . .Because of [the] difference in connotation of â€œspamâ€ in the respective marks, the marks as a whole are different in connotation and commercial impression. Further, we consider these differences to outweigh the similarities in appearance and pronunciation resulting from the common element â€œspam.â€ . . . . Moreover, respondentâ€™s mark SPAM ARREST differs from petitionerâ€™s family of SPAM marks for the same reasons, i.e., the difference in meaning and commercial impression. In addition, SPAM ARREST does not have the same overall look as the members of petitionerâ€™s family of SPAM marks. Although petitioner claims that its family of marks consists of the word SPAM followed by a second word, we disagree. . . .
[A Spam executive] testified that â€œpretty much it seems anything we can put SPAM on will sell.â€ As a result, consumers are likely to view many very different items that bear the mark SPAM as being related to petitionerâ€™s luncheon meat. However, when used in connection with computer software to filter unsolicited commercial email, the word â€œspamâ€ would be viewed as having its generic meaning of unsolicited email, and therefore such computer software would not be viewed as a collateral product of petitionerâ€™s. . . .
It is because of the fame of this mark that petitioner has successfully expanded its mark to use on collateral products, i.e., has used it as a merchandising
mark by which consumers purchase other products because of the very fact that SPAM is printed on them. There is no question that, as a famous and therefore strong mark, SPAM is entitled to a broad scope of protection. However, the fame of the mark does not entitle petitioner to a monopoly on the use of SPAM as a trademark for all goods and services. If the du Pont factor of fame were interpreted in such a manner, owners of famous marks would essentially have a right in gross in a term. . . . Thus, although the fame of petitionerâ€™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 petitionerâ€™s SPAM and SPAM-derivative products and services. In fact, as discussed below with respect to the du Pont factor of the number and nature of similar marks in use on similar goods or services, the evidence shows that petitionerâ€™s mark is not a strong mark for such goods. What the third-party use shows in this case is that, in the field of email filtering/spam blocking solutions, the trademark SPAM is not a strong mark because the term â€œspamâ€ is used by so many third parties for its generic meaning. This du Pont factor favors respondent.
After considering all of the du Pont factors on which we have evidence or argument, we find that petitioner has failed to prove that respondentâ€™s mark SPAM ARREST for â€œcomputer software, namely software designed to eliminate unsolicited commercial electronic mailâ€ is likely to cause confusion with petitionerâ€™s mark SPAM and its SPAMderivative marks for its various goods. In particular, because the word â€œspamâ€ in respondentâ€™s mark will be viewed as having its generic meaning of unsolicited commercial electronic mail, the marks as a whole are different in connotation and commercial impression. Differences in the marks alone can be dispositive in finding no likelihood of confusion.
The Board also dismissed Hormel’s dilution claim on the ground that the SPAM mark, while famous for canned meats, is not “distinctive,” writing:
The evidence shows that â€œspam,â€ in addition to being petitionerâ€™s trademark, has a well-recognized meaning as a generic term for unsolicited commercial email; the term isused by consumers, the media, Congress, state legislatures and those who sell solutions for such unwanted email. Thus, it does not have the requisite degree of distinctiveness to support a finding of dilution, at least vis-Ã -vis respondentâ€™s use of the term as part of the mark SPAM ARREST for computer software designed to eliminate unsolicited commercial email. . . .
[A]lthough it may be unfortunate for petitioner that its mark has become a generic word for unsolicited commercial email, that is what has happened. As a result, SPAM is not a distinctive mark of petitioner and its goods and services when it is used in connection with email, or with goods or services that deal with unsolicited commercial email. In other words, the fact that â€œspamâ€ has become a generic term for unsolicited commercial email is what diluted the distinctiveness of petitionerâ€™s mark, and this dilution occurred prior to respondentâ€™s adoption of the mark SPAM ARREST.
Congratulations to the esteemable Derek Newman of Newman & Newman, who won it for the yay team!
UPDATE: Read John Welch, too.