Is Hormel Losing its Grip on Spam?

(Magilla Marketing) Though the case has no official legal clout in the U.S., some American executives battling Hormel Foods over use of the word spam see positive signs in a tiny UK technology company’s victory over the food giant last week.
NetBop Technologies last week claimed to be the first to get the green light on an EU trademark for a product name containing the word “spam.”
According to NetBop, Hormel Foods, owner of the trademark SPAM for more than six decades, challenged the company in March 2005 for its attempt to trademark BopSpam, a product designed to filter bulk unsolicited e-mail.
Hormel dropped its opposition to the trademark when it became clear in a preliminary hearing that EU patent officials were leaning in NetBop’s favor, a statement from NetBop said.

It is believed to be Hormel’s first defeat on either side of the Atlantic in its rigorous defense of its trademark on SPAM, according to an attorney involved in a battle with the company.
A search on the U.S. Patent and Trademark Office’s Web site shows Hormel to be involved in more than 80 disputes over usage of the word “spam” in company and product names.
One executive embroiled in one of those disputes—David Soares, chief business development officer for anti-spam technology company Spam Cube—said he believes Hormel’s decision to throw in the towel bodes well for his company.
“Hormel Foods is coming to grips with the reality that spam is a generic term for today’s consumer,” said Soares. “We’re not surprised with the [NetBop] verdict.”
Spam Cube, New York, has been battling Hormel for two years.
In documents filed by Hormel with the U.S. Patent and Trademark Office in April 2004, the company claims that Spam Cube’s “mark so resembles [Hormel’s] SPAM trademark” that it might create “the erroneous impression that [Spam Cube’s] goods originate with, are sponsored by, endorsed or approved by, licensed by, affiliated or associated with, or in some other way legitimately connected with [Hormel].”
Not likely, said Soares.
“Our [intellectual property] lawyers insist that spam has become a generic term with respect to unsolicited e-mail,” said Soares. “E-mail spam and SPAM the canned meat product are clearly not mistaken [for one another] especially in today’s digital world.”
Thilo Agthe, an attorney representing Spam Cube from the New York law firm Wuersch & Gering, said proceedings between his client and Hormel have been suspended pending a decision from the U.S. Patent and Trademark Office on a similar dispute between Hormel and anti-spam firm Spam Arrest.
Spam Arrest owns the trademark on its name and Hormel is trying to get it canceled, said Agthe.
“They [Hormel] have opposed every trademark application for software or hardware that is designed to fight unsolicited commercial e-mail,” said Agthe.
He added that though the NetBop in the UK outcome had no official influence on American spam trademark disputes, “everybody over on this side of the pond probably will borrow some of the arguments that were obviously successful in this case. I will be one of them if we ever get to the point where we have to do that.”

If the U.S. Patent and Trademark Office decides in Spam Arrest’s favor and clearly says spam is a generic term for unsolicited e-mail, “then Hormel’s case [against Spam Cube] basically goes away,” said Agthe.

Hormel could not be reached at deadline.