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Archived updates for Thursday, November 29, 2007

TTAB: No Dilution of Famous Mark through Projection of Generic Meaning

In Hormel Foods Corp. v. Spam Arrest, LLC, Cancellation No. 92042134 (November 21, 2007, not precedent) the U.S. Trademark Trial and Appeal Board considered "the dichotomy between the fame of petitioner’s trademark and the generic meaning of that same
term:"


While we have given great weight to the fame of petitioner’s mark, that fame does not extend to computer software for filtering spam. 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). . . .

[Furthermore, with regard to dilution,] when a trademark has an alternative generic meaning, and it is being used in a second mark to project that generic meaning, there can be no dilution of the original mark under the statute because that mark is not distinctive with respect to the goods which the generic term describes. This would be the case whether the trademark owner invented a mark and the mark subsequently became a generic term, as is the case here, or the trademark owner chose an ordinary word that is arbitrary for its goods and through its efforts caused the mark to become distinctive for those goods.
Leran more about "where the SPAM meets the road," here.
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