Wednesday, November 28, 2007

TTAB Dismisses "SPAM ARREST" Cancellation Petition

Readers may recall that the final hearing in the SPAM ARREST cancellation proceeding was held in New York City in February 2007 at PLI's annual conference on TTAB practice. The Seattle Trademark Lawyer blog reported on the oral argument (here), and yesterday reported on the outcome (here ). In a 63-page decision, the TTAB dismissed Hormel's petition for cancellation of a registration for the mark SPAM ARREST for "computer software, namely software designed to eliminate unsolicited commercial electronic mail," finding that Hormel had failed to prove its pleaded grounds of likelihood of confusion and dilution vis-à-vis its famous mark SPAM. Hormel Foods Corp. v. Spam Arrest, LLC, Cancellation No. 92042134 (November 21, 2007) [not precedential].

Likelihood of Confusion: Respondent Spam Arrest conceded the fame of the SPAM mark for purposes of Section 2(d), and also conceded that Hormel owns a family of SPAM marks. It was also undisputed, however, that "spam" is a generic term for unsolicited commercial e-mail. "This dichotomy between the fame of petitioner's trademark and the generic meaning of the same term" was crucial to the Board's 2(d) determination.

"because the word 'spam' in respondent's mark will be viewed as having its generic meaning of unsolicited commercial electronic mail, the marks as a whole are different in connotation and commercial impression."

Although the Board gave "great weight" to the fame of the SPAM mark, "that fame does not extend to computer software."

"Simply put, the scope of protection of petitioner's mark, while extremely broad, does not extend to prevent the use of SPAM ARREST for spam filtering software, since consumers will understand SPAM as used in respondent's mark in its generic sense rather than as referring to petitioner's mark(s)."

Dilution: The Board found that Hormel had proven its mark SPAM to be famous for canned meat, for purposes of its dilution claim. However, Hormel failed to prove that its mark is "distinctive" -- i.e., "that the mark has become the principal meaning of the word."

"The evidence shows that 'spam,' in addition to being petitioner's trademark, has a well-recognized meaning as a generic term for unsolicited commercial e-mail .... Thus it does not have the requisite degree of distinctiveness to support a finding of dilution, at least vis-à-vis respondent's use of the term as part of the mark SPAM ARREST for computer software designed to eliminate unsolicited commercial email."

The Board also found that Hormel failed to prove that the involved marks are "essentially the same," as required by Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001), since the marks differ in connotation and commercial impression.

In assessing Hormel's dilution by blurring claim, the Board considered the results of a mall intercept survey. It found the survey report's calculation that "for 44.7% of survey respondents SPAM ARREST brought to mind petitioner or its meat products is not as impressive as it would appear from the conclusion of the report." The number of respondents was "quite small" and the results of a mall survey are not "projectible" because a mall survey "does not use a random sample of the population whose views are sought." It was not clear that the participants constituted the relevant group of purchasers, and the questions asked were questionable. These and other concerns led the Board to conclude that the survey was of "little probative value." Hence, the expert testimony based on those survey results was likewise of little value.

Hormel's dilution by tarnishment claim was given short shrift, being based on a few Internet postings dissing Respondent's software.

In a concurring opinion, Judge Rogers delivered a few more swift kicks to Hormel's survey evidence.

And so, Hormel's petition for cancellation was scraped off the Board's plate and deposited in the trash can.

TTABlog comment: I suspect that few people were expecting a different result. One has to wonder why the decision was not deemed precedential, since the famous-yet-generic dichotomy seems to be an issue of first impression with the Board. My guess is that, with the detailed commentary on Petitioner's survey, the Board did not want to elevate those comments to binding status.

One point that caught my skeptical eye was the Board's treatment of the issue of whether , under the pre-2006 anti-dilution act, actual or likely dilution is the TTAB test when the challenged mark is already in use, The Board had never answered that question, but in footnote 31, it quickly brushed off Respondent's attempt to raise that issue. Rather than discuss the matter, the Board baldly states that "the standard applicable in TTAB proceedings both prior to and after the amendment of the Act was and is likelihood of dilution, whether or not the mark is in use." Oh well, it wouldn't have affected the outcome here anyway.

Text Copyright John L. Welch 2007.


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