Hormel Foods of Austin, Minnesota has sold over six billion cans of the meat since its launch in 1937; but spam has become synonymous with unsolicited commercial e-mail messages, a larger number of which are sent across the internet every day.
Now, Hormel is asserting its intellectual property rights against SpamArrest LLC, a spam filtering company based in Seattle which, in its opinion, is damaging its goodwill and reputation. SpamArrest has responded, telling Hormel that it is "acting like a corporate crybaby and ought to can it."
The problems for Hormel began in 1970, when Monty Python ran its now infamous spam sketch about a restaurant which sold spam with everything.
Waitress Terry Jones, in answer to customer Eric Idle's question of what's available, replies, "Well, there's egg and bacon; egg, sausage and bacon; egg and spam; egg bacon and spam; egg, bacon, sausage and spam; spam, bacon, sausage and spam; spam, egg, spam, spam, bacon and spam; spam, sausage, spam, spam, bacon, spam, tomato and spam."
A group of Vikings, seated at another table, begin to chant, "spam, spam, spam, spam...." The conversation continues until the Vikings drown it in song: "Spam, spam, spam, spam. Lovely spam! Wonderful spaaam! Lovely spam! Wonderful spam..."
The very first known unsolicited commercial e-mail attack was back in 1978, sent to users of Arpanet, the predecessor of the internet. It advertised a DEC 10 computer to all Arpanet users in West USA.
It wasn't until 1994 that the term "spam" was coined for junk e-mail. In that year, two lawyers in Phoenix, Arizona flooded newsgroups with an e-mail promoting their services. Someone (nobody seems to know who) compared it to the 1970 Monty Python sketch in which spam was unavoidable.
For the last nine years, Hormel has tolerated the use of the term for junk e-mail, despite holding a registered trade mark for it in more than 100 countries across six continents.
Increasingly, however, when people think of spam, they think of something distasteful. In May this year, software company MessageLabs reported that junk e-mail now accounts for the majority of all internet e-mail (55%).
Hormel has acknowledged that it cannot stop the use of its mark for junk e-mail; but what it does want to do is stop the use the word in other trade marks as Hormel feels that this will impact on the distinctive character and repute of its own mark.
It tried this last year in a UK case against Antilles Landscapes Investments NV which wanted to register the trade mark "SPAMBUSTER" for filtering software services.
The UK Patent Office ruled that users of the Spambuster services would understand the difference between the products and "did not consider that there would be any adverse consequences" to Hormel's mark in relation to its tinned meats. Hormel's invalidity action failed.
Undeterred, Hormel last week asked the US Patent and Trademark Office to overturn SpamArrest's eponymous trade mark, recently granted for use as "computer software, namely, software designed to eliminate unsolicited commercial electronic mail" and another trade mark for SpamArrest that is currently pending, for use in "on-line computer services."
Hormel argues that the public might be confused or might think that Hormel endorses SpamArrest's products. But Brian Cartmell, President and CEO of SpamArrest LLC, countered, "Hormel is acting like a corporate crybaby and ought to can it."
He continued:
"Spam is a common term describing unsolicited commercial e-mail and even Hormel says on its own web site: 'We do not object to use of this slang term to describe UCE, although we do object to the use of our product image in association with that term.' Dozens of companies use the word 'spam' in their legal and commercial names and no one confuses any of us with the Hormel canned meat product."
Seattle lawyer Derek Newman, who represents SpamArrest, added,
"Inexplicably Hormel is challenging anyone who uses the word spam as part of a trade mark. Spam has become ubiquitous throughout the world to describe unsolicited commercial e-mail. No company can claim trademark rights on a generic term. SpamArrest is both our corporate name and an arbitrary trade mark. We are not claiming the right to use the generic term spam alone, but we will protect the name of our of our company and the brand of our product."
The cases are pending before the Trademark Trial and Appellate Board. Hearings have not yet been scheduled.