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Spam heads to court
by Erin Galbally, Minnesota Public Radio
July 2, 2003

SPAM and other products made by Hormel Foods, based in Austin, Minnesota. (MPR file photo)

SPAM luncheon meat traces its history back to the era of Franklin Roosevelt and the trenches of World War II. But over the past decade, the word spam has taken a second meaning as a term for junk e-mail. Now a Seattle-based technology company is attempting to use the word spam in its corporate name. Hormel Foods, SPAM's manufacturer, is fighting back.

Rochester, Minn. — The trouble started roughly six months ago, when the software company Spam Arrest filed papers to trademark its name. The technology company specializes in blocking junk e-mail popularly known as spam. Hormel Foods, which manufactures SPAM the luncheon meat, sent the company a warning, telling them to drop their use of the trademark-protected name. But Spam Arrest refused.

If you ask most people on the street, they're going to say junk e-mail as opposed to the luncheon meat as their first description of what spam is. I think they're overstepping their bounds. - Brian Cartmell, CEO of Spam Arrest

"I think if you ask most people on the street, they're going to say junk e-mail as opposed to the luncheon meat as their first description of what spam is," says Brian Cartmell, the CEO of Spam Arrest. "So I think they're overstepping their bounds."

Cartmell says his company's use of the word has nothing to do with Hormel's product. Hormel officials disagree. In two legal challenges filed with the U.S. Patent and Trademark Office, Hormel argues it has carefully protected and invested in the brand name SPAM.

Further, Hormel argues use of the name by other companies could potentially harm its business. It also outlines concern the public could confuse the meat product with the technology company.

Douglas Wood, who practices intellectual property law in New York, says trademark law exists for a reason.

"That's why marks like Coke and Kodak -- and others that are fanciful names and fanciful words -- that were developed, then have a huge secondary meaning in consumers' minds and are subject to a great deal of protection," explains Wood. "That's what the federal law that was passed five years ago was meant to address. To find ways, particularly with the advent of the Internet, to protect these so-called famous marks."

That's what the federal law that was passed five years ago was meant to address. To find ways, particularly with the advent of the Internet, to protect these so-called famous marks. - Douglas Wood, intellectual property lawyer

Even so, Wood estimates Hormel has only a 50-50 chance of prevailing. He points to a recent case involving Victoria's Secret and a male lingerie specialty store called Victor's Secret. Victoria's Secret sued, using the trademark infringement argument. But Wood says ultimately the company lost in court.

"The court in that case was saying, even though they may have a famous mark, Victoria's Secret, and may have a particular association as soon as you hear it, Victor's Secret was not enough -- the confusion or potential damage to the their mark -- to constitute infringement," says Wood. "So it's not a slam-dunk as it were."

Minnesota-based Hormel acknowledges one of its most famous brand names has taken on new meaning. On its official SPAM Web site, the company outlines what it considers acceptable use of the word. It says it doesn't object to the use of spam to describe unsolicited commercial e-mail. But the company does object to the use of pictures of its product used in association with the e-mail term.

No one from Hormel Foods could be reached for comment and the company has not issued a public statement on the case.

Hormel's trademark lawsuit against Spam Arrest will be heard by the Trademark Trial and Appeals Court in Washington D.C. So far no date has been set.

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