Thursday, April 21, 2005

TTAB Denies Leave To File Amicus Brief in "SPAM ARREST" Cancellation Proceeding

Hormel Foods Corporation and Hormel Foods, LLC, owners of 10 registrations for the mark SPAM for a variety of meat products and collateral items, are seeking to cancel a registration owned by Spam Arrest LLC for the mark SPAM ARREST for "computer software, namely, software designed to eliminate unsolicited commercial electronic mail."

Spam Arrest moved for summary judgment on all pleaded grounds (likelihood of confusion, dilution, genericness, and mere descriptiveness), and on its affirmative defenses of laches and estoppel.

Along came SpamCop.Net, seeking leave (here) to file an amicus brief in support of Spam Arrest's summary judgment motion. The Board ruled, more or less, that Three Amigos is one too many. Hormel Foods Corp. v. Spam Arrest LLC, Cancellation No. 92042134 (March 31, 2005) [not citable].

The Board observed that "[t]he privilege of being heard amicus rests in the discretion" of the Board.

"In determining whether to grant leave, the Board considers whether the proposed brief will aid the Board in resolving issues of law, whether the moving party is effectively seeking a role in the proceeding beyond arguing questions of law, and whether the moving party is asserting prejudicial and partisan arguments of fact."

Noting that SpamCop is party to a proceeding in which the Petitioners here oppose registration of the mark SPAMCOP on essentially the same grounds as asserted here, the Board denied Spamcop's motion:

"Unquestionably, SpamCop's brief represents an improper attempt to intervene and persuade the Board to subscribe to a factual position that would unduly prejudice the petitioners in this case and in the related opposition proceeding as well."

The Board also denied Spam Arrest's summary judgment motion, finding genuine issues of material fact as to the commercial impression of the SPAM ARREST mark, the fame of the SPAM mark in relation to goods other than meat products, the relatedness of the goods, the genericness and/or descriptiveness of the SPAM ARREST mark, the alleged economic harm due to the supposed dilution of the SPAM mark, and the alleged acquiescence of Hormel.

Comment: The TTABlog wonders why Hormel has standing to raise the issues of genericness and/or mere descriptiveness of the SPAM ARREST mark. Hormel doesn't claim to use the SPAM mark in connection with computer software or anything like it. If SPAM ARREST does not dilute the SPAM mark and doesn't cause confusion, what harm can Hormel claim? Others in the computer field would have standing to challenge registration of a generic or merely descriptive term, but why Hormel?

Text ©John L. Welch 2005. All Rights Reserved.


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