Re: TTAB Dismisses Hormel's Petition to Cancel SPAM ARREST Trademark
Michael Scheidell wrote: [mss: I looked on the list, didn't see this mentioned.. maybe SpamAssassin(tm) can reapply for a registered trademark now.] On Nov. 21, the Trademark Trial and Appeal Board _dismissed_ http://seattletrademarklawyer.com/storage/Hormel%20Foods%20v.%20Spam%20Arrest%20-%20TTAB%20Decision.pdf _Hormel Foods Corp.’s_ http://www.hormelfoods.com/ petition to cancel the trademark _registration_ http://seattletrademarklawyer.com/storage/SPAM%20Registration.pdf owned by Seattle-based _Spam Arrest, LLC_ http://www.spamarrest.com/, for SPAM ARREST, with the word “spam” disclaimed, for “computer software, namely software designed to eliminate unsolicited commercial electronic mail.” Hormel had argued Spam Arrest’s mark was not entitled to registration based on a likelihood of confusion with and dilution of Hormel’s family of famous SPAM trademarks. Spam Arrest responded that “spam” is a generic term, which in connection with the word “arrest” is not likely to cause confusion or dilute Hormel’s marks. TTAB Judges David Sams, Ellen Seeherman, and Gerard Rogers unanimously sided with Spam Arrest: “The word ‘spam’ is a recognized generic term for unsolicited commercial email. There are various stories about how this term came to be adopted, including that it was a term used on computer game-playing sites to describe different types of abusive behavior, and that it is an acronym for ‘sending public announcement messages.’ However, the widely-reported origin, which appears in Merriam-Webster’s Collegiate Dictionary, 11th ed. © 2003, is that it is derived from ‘a skit on the British television series /Monty Python’s Flying Circus/ in which chanting of the word Spam overrides the other dialogue.’ Whatever its origin, ‘spam’ is well recognized today as the generic term for such email.” This finding permeated the Board’s opinion. With respect to Hormel’s likelihood of confusion claim, for example, the Board found even though the parties’ marks contained the identical term, “spam,” Spam Arrest’s mark left a different overall commercial impression: “Although petitioner’s mark SPAM was derived from ‘spiced ham,’ it must be considered an invented word rather than a suggestive term, and therefore it has no meaning other than that of a trademark for petitioner’s goods. On the other hand, because ‘spam’ is a generic term for unsolicited commercial email, and applicant’s goods are identified as ‘computer software, namely, software designed to eliminate unsolicited commercial electronic mail,’ as it is used in respondent’s mark SPAM has the connotation of the generic term, referring to unsolicited email, and the entire mark has the connotation of software that stops or filters spam/unsolicited commercial email. Because of this difference in connotation of ‘spam’ in the respective marks, the marks as a whole are different in connotation and commercial impression.” The Board also found that while “SPAM” is famous for canned meats, Hormel failed to establish that its mark’s fame extended to anti-spam software: “Thus, although the fame of petitioner’s mark certainly favors petitioner herein, petitioner has not shown how that fame has carried over to computer software designed to eliminate unsolicited commercial electronic mail, or that consumers would associate such software with the source of petitioner’s SPAM and SPAM-derivative products and services.” The Board concluded: “After considering all of the _du Pont_ http://en.wikipedia.org/wiki/United_States_trademark_law factors on which we have evidence or argument, we find that petitioner has failed to prove that respondent’s mark SPAM ARREST for ‘computer software, namely software designed to eliminate unsolicited commercial electronic mail’ is likely to cause confusion with petitioner’s mark SPAM and its SPAM-derivative marks for its various goods.” With regard to dilution, Hormel took the position that the use of “spam” is acceptable when it is used as an ordinary, generic term, but that it is not acceptable when SPAM is used as part of a trademark. The Board rejected that argument as being too fine a point: “Although we understand the distinction that petitioner is making, we do not believe that this is a significant difference, or one that is drawn by the statute or the case law. If a term is generic, others should have the right to use it, even as a disclaimed term in a trademark, to describe the goods or services with which the mark is used. And as we stated in our discussion of likelihood of confusion, respondent is using the term ‘spam’ in the mark SPAM ARREST in its generic sense, and that is the meaning that would be perceived by consumers. “This is not to suggest, however, that simply because a mark has a generic meaning in other contexts it can never be considered distinctive in terms of proving dilution. We are saying only that, when a trademark has an
Re: TTAB Dismisses Hormel's Petition to Cancel SPAM ARREST Trademark
mouss wrote: If I understand, spam is a generic word. I am also convinced that arrest is a generic word. Now accepting spam arrest as a trademark is beyond me, as is all this trademark and patent stuff... You can use generic words in trademarks (ie: Windows). However, the fact that your mark is generic will prevent you from trying to claim infringement against someone using it in a market outside the one you've registered the mark for. You can only do that if your mark is considered unique and non-generic.
Re: TTAB Dismisses Hormel's Petition to Cancel SPAM ARREST Trademark
Matt Kettler wrote: mouss wrote: If I understand, spam is a generic word. I am also convinced that arrest is a generic word. Now accepting spam arrest as a trademark is beyond me, as is all this trademark and patent stuff... You can use generic words in trademarks (ie: Windows). However, the fact that your mark is generic will prevent you from trying to claim infringement against someone using it in a market outside the one you've registered the mark for. You can only do that if your mark is considered unique and non-generic. thanks for the explanation, Matt!
Re: TTAB Dismisses Hormel's Petition to Cancel SPAM ARREST Trademark
Matt Kettler wrote: You can use generic words in trademarks (ie: Windows). However, the fact that your mark is generic will prevent you from trying to claim infringement against someone using it in a market outside the one you've registered the mark for. You can only do that if your mark is considered unique and non-generic. Let's see, vista is a generic word, windows is a generic word, so Microsoft would have no grounds for claiming infringement against a glazier registering Vista Windows as a trademark... John. -- -- Over 3000 webcams from ski resorts around the world - www.snoweye.com -- Translate your technical documents and web pages- www.tradoc.fr
Re: TTAB Dismisses Hormel's Petition to Cancel SPAM ARREST Trademark
John Wilcock wrote: Matt Kettler wrote: You can use generic words in trademarks (ie: Windows). However, the fact that your mark is generic will prevent you from trying to claim infringement against someone using it in a market outside the one you've registered the mark for. You can only do that if your mark is considered unique and non-generic. Let's see, vista is a generic word, windows is a generic word, so Microsoft would have no grounds for claiming infringement against a glazier registering Vista Windows as a trademark... Yep: http://vistawindowmfg.com/ They've been on the web since 2001, so Microsoft would have even less of a case there. Of course, having no grounds doesn't always stop companies from filing suit anyway..
Re: TTAB Dismisses Hormel's Petition to Cancel SPAM ARREST Trademark
John Wilcock schrieb: Matt Kettler wrote: You can use generic words in trademarks (ie: Windows). However, the fact that your mark is generic will prevent you from trying to claim infringement against someone using it in a market outside the one you've registered the mark for. You can only do that if your mark is considered unique and non-generic. Let's see, vista is a generic word, windows is a generic word, so Microsoft would have no grounds for claiming infringement against a glazier registering Vista Windows as a trademark... scnr: He would be soon out of business cause people would expect his products to break easily?. John. -- Grüsse/Greetings MH Dont send mail to: [EMAIL PROTECTED] --
Re: TTAB Dismisses Hormel's Petition to Cancel SPAM ARREST Trademark
mouss wrote: If I understand, spam is a generic word. I am also convinced that arrest is a generic word. Now accepting spam arrest as a trademark is beyond me, as is all this trademark and patent stuff... Yep. We recently had a trademark application rejected by the EU Common Trademark people with the reasoning that it consisted of two words, both of which were generic or common words. /Per Jessen, Zürich
Re: TTAB Dismisses Hormel's Petition to Cancel SPAM ARREST Trademark
There was no SPAM before Hormel invented it and it most certainly can be trademarked - just like threepeat. For at least five years that I know of, Hormel didn't object to anyone using spam as long as it was not all upper-case, and published such in their trademark use section. Looking at Spam Arrest's website, they are all over the map with their spelling of spam. I don't blame Hormel. Spam Arrest should make up their mind, even if it's just for good marketing sense. Per Jessen wrote: mouss wrote: If I understand, spam is a generic word. I am also convinced that arrest is a generic word. Now accepting spam arrest as a trademark is beyond me, as is all this trademark and patent stuff... Yep. We recently had a trademark application rejected by the EU Common Trademark people with the reasoning that it consisted of two words, both of which were generic or common words. /Per Jessen, Zürich
Re: TTAB Dismisses Hormel's Petition to Cancel SPAM ARREST Trademark
Jared Hall wrote: There was no SPAM before Hormel invented it and it most certainly can be trademarked - just like threepeat. For at least five years that I know of, Hormel didn't object to anyone using spam as long as it was not all upper-case, and published such in their trademark use section. They tried. IIRC, there was a stroy with dspam two years ago. I don't blame them. The name has been adopted and widely used: they had no chance at this. Looking at Spam Arrest's website, they are all over the map with their spelling of spam. I don't blame Hormel. Spam Arrest should make up their mind, even if it's just for good marketing sense.
Re: TTAB Dismisses Hormel's Petition to Cancel SPAM ARREST Trademark
On Thu, 29 Nov 2007, mouss wrote: I don't blame them. The name has been adopted and widely used: they had no chance at this. Actually, they did have a chance early on; I heard that they didn't object so long as the term was not capitalized. Allowing that loophole is what allowed the term to become generic. -- John Hardin KA7OHZhttp://www.impsec.org/~jhardin/ [EMAIL PROTECTED]FALaholic #11174 pgpk -a [EMAIL PROTECTED] key: 0xB8732E79 -- 2D8C 34F4 6411 F507 136C AF76 D822 E6E6 B873 2E79 --- Bother, said Pooh as he struggled with /etc/sendmail.cf, it never does quite what I want. I wish Christopher Robin was here. -- Peter da Silva in a.s.r --- 26 days until Christmas
