NO CAN DO

The IPKat informs his readers of a plucky attempt by Hormel (of the canned pork luncheon meat fame) to obtain a CTM for SPAM for

Class 36 - Economic consultancy, particularly in combination with network services; providing of expertise, engineering services and computer programming; economic consulting services.
Class 38 - Services to avoid or suppress unsolicited e-mails.
Class 42 - Creation and maintenance of computer software; technical consultancy, particularly in combination with network services; providing of expertise, engineering services and technical consulting services.

The examiner, and later the Second Board of Appeal rejected the application on descriptiveness and non-distinctiveness grounds.

The goods were aimed at a specialist public who were computer specialists.

Hormel did not dispute that SPAM means, inter alia, ‘unsolicited commercial e-mail sent to a large number of users’ or ‘irrelevant or inappropriate messages sent on the Internet to a large number of users’, as stated by the examiner. However it contended that the word SPAM also has other meanings (e.g. ‘sort of canned spicy ham’ or a ‘movie character’) which would be more evident to the relevant consumer.

Both a search of dictionaries and an internet search demonstrated that, contrary to Hormel’s contention, the general public would be familiar with SPAM as a term to designate unsolicited commercial email. Thus, the term SPAM would, a fortiori, be understood by professionals and those with a knowledge of computers as unambiguously indicating that the goods or services were intended to guarantee SPAM-free communication. Thus the word SPAM seemed particularly suitable to describe a characteristic of the services applied for, which was essential to the user.

The fact that the term SPAM had other meanings didn’t prevent it from describing the services in question.

The term also couldn’t be registered for the services that it wasn’t directly descriptive of because the headings used by Hormel for those services were wide, and could encompass services for which SPAM was descriptive, and those for which it wasn’t.

The IPKat says that there’s a double air of artificiality about this decision. Although SPAM is described as being descriptive of the services, it is in fact descriptive of what they are trying to prevent. More fundamentally, the IPKat suspects that Hormel has no plans to go into the email filtering business, and instead is trying to get registration of SPAM for all things techie to stop others using the term for junk emails (though he’s not quite sure how this would work in practice based on a registration for services to stop spam).