Trademark Office Rejects Hormel’s Claim Against Spam Arrest

In a stinging loss, meat company Hormel’s effort to have anti-spam firm Spam Arrest’s trademark registration canceled has been dismissed.

This is a huge letdown for a company that has rigorously defended its SPAM trademark against dozens of firms. However, because of an odd accompanying decision, what this means to all the other technology firms battling Hormel over use of the word spam is unclear.

A three-judge panel on Nov. 21 unanimously decided in favor of Spam Arrest, which argued that the word spam in relation to e-mail is a generic term that is not likely to dilute Hormel’s Spam trademarks.

However, inexplicably, the panel said this decision does not set precedent, placing into uncertainty dozens of other similar disputes between Hormel and technology firms using the word spam in their company and/or product names.

Hormel for years has been battling to keep technology firms from using the word spam. As part of that battle, it has filed at least 80 trademark disputes.

Many of the firms on the receiving end of Hormel’s wrath were observing the dispute between the meat giant and Spam Arrest, figuring a decision in anti-spam company’s favor would automatically mean the end of their disputes with Hormel.

The decision that the ruling sets no precedent, however, apparently means the other disputes do not automatically go away.

Thilo Agthe, an attorney representing anti-spam firm Spam Cube in a trademark dispute with Hormel, said he is “slightly disappointed” by the no-precedent portion of the ruling.

“Since there were some changes to the rules in the TTAB, we can cite non-precedential rulings in our filings with the TTAB, but they’re not necessarily binding,” said Agthe, whose firm is Wuersch & Gering in New York.

However, he said: “It’s quite clear that the Trademark Trial and Appeal Board has recognized spam as a generic term for unsolicited commercial e-mail.”

Meanwhile, Hormel’s only recourse against Spam Arrest is to sue for trademark infringement in federal court. The company did not respond to a request for comment by deadline.

Though this is Hormel’s first loss in the U.S. over use of the term spam, it is not its first defeat worldwide. The company in 2006 threw in the towel in a battle with tiny UK technology firm NetBop Technologies over its attempt to trademark BopSpam when it became clear in a preliminary hearing things were not going Hormel’s Way.