Hormel Back on The Spam Offensive

Anonymous Howard writes "After an xapparent setback in litigation, Hormel Foods is again pursuing actions against entities and organizations over the 'spam' trademark. According to the web site of DSPAM, an open-source statistical anti-spam filter, "Anti-spam software manufacturers may be in for a rude awakening. Hormel Foods Corporation and Hormel Foods LLC have recently filed for extensions to oppose or to cancel many new and existing spam-related trademarks and are even filing a few technology trademarks of their own. The DSPAM project, a popular open source and freely available spam filtering application, has already received two such notices of opposition from the trademark trial and appeal board. The complete history can be viewed here. This came about a year after the software's user community scrounged up the fee to file for a trademark...""

SPAM vs spam

[kill-hup]

I seem to recall Hormel being somewhat okay with the use of the word "spam" sans caps. IIRC, "SPAM" is a trademark but "spam" is not.

'DSPAM', as a company name, would seem to be a perfect example of what Hormel has *not* tolerated...

Trademarks

[Tristandh]

Aren't trademarks only there to protect a certain brand from being used by others in similar types of industry? Fighting off unwanted commercial e-mail and selling pig's intestines as food are way different playing fields, so I don't see how Hormel has a case...
Of course, IANAL, so correct me if I'm wrong...

Re:SPAM vs spam

[kill-hup]

(replying to myself)

Quick Google search found Hormel's "SPAM and the Internet" [spam.com] page.

Their official stance

[zerocool^]

from: http://spam.com/ci/ci_in.htm [spam.com]

SPAM and the Internet

You've probably seen, heard or even used the term "spamming" to refer to the act of sending unsolicited commercial email (UCE), or "spam" to refer to the UCE itself. Following is our position on the relationship between UCE and our trademark SPAM.

Use of the term "spam" was adopted as a result of the Monty Python skit in which our SPAM meat product was featured. In this skit, a group of Vikings sang a chorus of "spam, spam, spam . . . " in an increasing crescendo, drowning out other conversation. Hence, the analogy applied because UCE was drowning out normal discourse on the Internet.

We do not object to use of this slang term to describe UCE, although we do object to the use of the word "spam" as a trademark and to the use of our product image in association with that term. Also, if the term is to be used, it should be used in all lower-case letters to distinguish it from our trademark SPAM, which should be used with all uppercase letters.

This slang term, which generically describes UCE, does not affect the strength of our trademark SPAM. In a Federal District Court case involving the famous trademark STAR WARS owned by Lucasfilm Ltd., the Court ruled that the slang term used to refer to the Strategic Defense Initiative did not weaken the trademark and the Court refused to stop its use as a slang term. Other examples of famous trademarks having a different slang meaning include MICKEY MOUSE, to describe something as unsophisticated and CADILLAC, used to denote something as being high quality. It is only when someone attempts to trademark the word "spam" that we object to such use, in order to protect our rights in our famous trademark SPAM. We coined this term in 1937 and it has become a famous trademark. Thus, we don't appreciate it when someone else tries to make money on the goodwill that we created in our trademark or product image, or takes away from the unique and distinctive nature of our famous trademark SPAM. Let's face it. Today's teens and young adults are more computer savvy than ever, and the next generations will be even more so. Children will be exposed to the slang term "spam" to describe UCE well before being exposed to our famous product SPAM. Ultimately, we are trying to avoid the day when the consuming public asks, "Why would Hormel Foods name its product after junk e-mail?"

Position Statement on "Spamming"

We oppose the act of "spamming" or sending UCE. We have never engaged in this practice, although we have been victimized by it. If you have been one of those who has received UCE with a return address using our website address of SPAM.com, it wasn't us. It's easy and commonplace for somebody sending UCE to simply adopt a fake header ID, which disguises the true source of the UCE and makes it appear that it is coming from someone else. If you have or do receive UCE with this header ID, please understand that it didn't come from us.

Other "spam" Websites

This is the one and only official SPAM Website, brought to you by the makers of the SPAM Family of products. All of the others have been created by somebody else. We are not associated with those other websites and are not responsible for their content. As a Company, we are opposed to content that is obscene, vulgar or otherwise not "family friendly." We support positive family values and you can count on us for "safe surfing" by your children.

Also, from their Legal and Copyright page:

4. Enforceability. If any of the above terms are unlawful, unenforceable, or void, such term(s) will be deemed severable and will not affect the validity or enforceability of the remaining terms.

5. Trademark Information. The following trademarks used or which are planned to be used in this site, whether registered or unregistered, are owned by Hormel Foods: SPAM; HORMEL; SPAMBURGER; SPAMTA

Re:Lets see...

[Anonymous Coward]

Especially since the word spam as it relates to email came from the product (via Monty Python).

Re:Eeeeewwwww!

[jacksonj04]

Actually, SPAM (the food) stands for Spiced Pork and Ham. Spam (the email) became associated with SPAM after a Monty Python sketch with a load of Vikings chanting SPAM repeatedly. Lots of SPAM = pointless and unwanted = spam.

Re:Eeeeewwwww!

[Anonymous Coward]

Wrong on two points. Hormel's "Potted Meat Product" (not kidding, I own a can) is the parts that are leftover from other processing. SPAM is actually pretty decent meat -- pork and ham -- and leftovers from SPAM go into other products.

Second, Hormel has always allowed the use of "spam" to refer to email. They are only trying to protect the use of "SPAM," which is their trademark and which they have worked to protect for many years.

Re:Eeeeewwwww!

[operagost]

That's how spam email got its name; spam email is the least desirable kind of email; Spam meat is the least desirable kind of meat.

It's pretty well established that "spam" got its name from a Monty Python bit. I hereby revoke your geek card.

It's also not "by products," if you will. It's pork shoulder, which is a perfectly good part of the pig. Or bad, depending on your opinion of pork.

Re:You're stupid then

[atomic-penguin]

First Spam is made from beef, not pork.

Quoted from the can... "Ingredients: Pork with Ham, Salt, Sugar, Sodium Nitrite." See picture [deskpicture.com].

Re:Spam

[AndroidCat]

McDonald's are trialling a new breakfast meal made of Spam in their restaurants in Hawaii. [ananova.com] (Story dated 2002.) In that case, Spam would definitely be an increase in the food quality.

Nice Classification and famous marks

[Christian Engstrom]

Aren't trademarks only there to protect a certain brand from being used by others in similar types of industry?

Yes, that's correct.Trademarks are divided into 45 different classes of goods and services. The system is called the "Nice Classification [wipo.int]", since the original version of it was agreed on at some conference in Nice, France. This system is nowadays used in almost all countries in the world.

Under normal circumstances, marks in different classes are allowed to co-exists even if they are identical. For marks that are not entirely identical but merely very similar, like "Spam" vs. "SpamArrest", even more so.

For really well known marks, like Coca-Cola or IBM, there is an exception to this rule, which is called "Kodak protection" after the landmark case that is considered to have established the principle.

But in this case, where the original "Spam" trademark is so strongly tied to just one very specific product, I'd be very surprised if a court would find the "Spam" should enjoy Kodak protection. It's also quite debatable if "Spam" was ever that famous.

And even if there was a time when it could perhaps be argued that "Spam" was more frequently used to denote the "food" product, nowadays the meaning "junk email" is so widely established that I can't see how the owners of the origial "Spam" trademark could hope to be successful in their claims.

But perhaps they have some reasons for trying to pursue what to me looks like a very weak case indeed.

IANATML, but I've worked in the trademarks business for 25 years developing phonetic trademark search systems.

Re:Isn't going to work

[NineNine]

They are not trying to do that. They're trying to stop commercial entities from using their name.

Answering my own question: It's mostly fat.

[Futurepower(R)]

According to a SPAM facts web page [claremont.edu], SPAM is mostly fat:

"Nutrition Information For SPAM (original style):

* Calories Per Serving: 170
* Calories Per Serving From Fat: 140"

Trademarks should never trump common speech

[Random BedHead Ed]

Trademarks work the way they do for a reason: because people want protection of their business and product names, but are not allowed to enforce the way the public uses language. A trademark holder gets a monopoly on a term that is not commonly in use for the purpose to which they have applied it. If the term does happen to go into common useage, they lose it. Trademarks should never be used to enforce how we use words.

This is why Bayer was forced to give up its trademarks on the words "aspirin" and "heroin." It's why Kodak ended up trying really hard to prevent their trademark from being used as a generic term for photographs after years of pushing their product that way. It's why Microsoft shouldn't have a trademark on the term "windows" when applied to a window-based GUI, and why Hormel should give up and either rename their product or accept that they have no case.

Of course this main "generic term" point is tangential. A case like this shouldn't even come to proving that spam is a generic term because the technology-related use of the word is in a diffierent industry from Hormel's anyway. If DSPAM were to go into the food business (ha, ha - I called SPAM "food"), then Hormel would have a case against them. But even as a "product" name, DSPAM should be in the clear because the term is applied to a different industry entirely.

Surely both points together mean that if DSPAM's lawyers cost the same as Hormel's, DSPAM would win.

They are required to do this

[nasor]

Don't forget, under U.S. law a company is required to defend its trademarks from use by other parties, or they can lose the trademark. That's usually the reason for trademark lawsuits like this that strike everyone as silly and mean-spirited.

Re:Lets see...

[Anonymous Coward]

This isn't like domain names. You cannot register a trademark unless you use it or plan to use it in the designated markets.

Re:Eeeeewwwww!

[wingsofchai]

I'm sorry, but English comedy comes in at slightly more bland than English food.

Alarming...sometimes, bizarre...frequently, hilarious...depends on your sense of humor, bland...never.

Re:Eeeeewwwww!

[cp.tar]

Actually, SPAM (the food) stands for Spiced Pork and Ham. Spam (the email) became associated with SPAM after a Monty Python sketch with a load of Vikings chanting SPAM repeatedly. Lots of SPAM = pointless and unwanted = spam.

First of all, a quick search from the nifty little dictionary applet that sits in my Gnome toolbar got me this:

"WordNet (r) 2.0"
Spam n

1. a canned meat made largely from pork
2. unwanted e-mail (usually of a commercial nature sent out in bulk) syn: junk e-mail

• v : send unwanted or junk e-mail

"Virtual Entity of Relevant Acronyms (Version 1.9, June 2002)"
SPAM
Send Phenomenal Amounts of Mail (Usenet, EMP, telecommunication-slang)

Also, from what I'd heard - although I'm not a native English speaker, let alone an American, so I might be wrong - SPAM originally means just SPiced hAM, although most of the other explanations found here sound just as plausible.

Furthermore, I do not recall the details of the Monty Python sketch, but I do seem to recall reading of a really really annoying radio commercial for Spam, which was sung to "My Bonnie Lies Over the Ocean", but with slightly altered lyrics. I believe it went something like this (quoted from memory):

SPAM SPAM SPAM SPAM SPAM SPAM SPAM SPAM
SPAM SPAM SPAM SPAM SPAM SPAM SPAM SPAM
SPAM SPAM SPAM SPAM SPAM SPAM SPAM SPAM
SPAM SPAM - SPAM SPAM
SPAM SPAM SPAM SPAM SPAM SPAM SPAM SPAM - SPAM SPAM...

You get the picture...