SpamArrest leaves bitter taste for Hormel

CNN Money reports that the US Trademark Trials and Appeals Board (the appeal body of the USPTO) has allowed the trade mark SPAMARREST to proceed to registration, despite objections from Hormel, the makers of SPAM pork luncheon meat. The Board found that consumers were clever enough not to be confused, and that SPAMARREST would not dilute Hormel’s trade mark. The main plank of the lack of dilution finding was that Spam had become the generic word for junk email, and the TTAB held that where a word has become generic, traders in that field shouldn’t be stopped from using the term for what it is generic for, even if the term remains a viable trade mark in its original field of use. The TTAB tied this on to the requirement in US dilution law that the trade mark must be distinctive before it qualifies for dilution protection.

The IPKat isn’t sure about the TTAB’s reasoning. If a mark has a second meaning, there’s no reason why it can’t remain distinctive (take APPLE for example), though certain uses may not lead to the use of the word being associated with the trade mark owner. What this does go to show though is that trade mark law is firmly in the hands of consumer perception. The fact that consumers have taken the SPAM mark for themselves and granted it a different meaning is decisive, however unfair that may seem to Hormel, who invented the word.

Read the full TTAB decision here.