Hormel Fairly Chill About ‘Spam’ Trademark, Still Missing Business Opportunities

Hormel, the foodstuffs company that makes Spam, amongst other items, has made it onto our pages before. And not for good reasons. Ages ago, the company attempted to sue anti-spam proprietors, arguing that its “Spam” trademark somehow translated into the world of IT and email. Separately, the company also bullied a Canadian brewery into changing the name of one of its brews, Damn Skippy, claiming to be concerned as to customer confusion over its Skippy peanut butter brand, despite Skippy no longer being sold in Canada at the time. So Hormel has shown itself to be an aggressive trademark enforcer on occasion.

In this specific instance, in which a chef in Minnesota paid homage to Spam on her restaurant’s menu, it never got far enough. Instead, chef Ann Kim changed the name of her menu items to remove any reference to Hormel’s product instead. Kim created her own “spam” in house and served it in two dishes, including a fried rice dish and a “Spam ‘n Cheese” sandwich. The names of those dishes and the ingredient lists have since been changed after Hormel reached out, not with a cease and desist letter, but which questioned if she was using Hormel Spam in her dishes.

“We did not get an official cease and desist letter. It was an inquiry email asking if we were using the official Spam product,” Rachael Crew, a spokeswoman with Kim’s Vestalia Hospitality group, said in a statement. “Based on Hormel’s email, we knew it would come next. So we proactively changed the ingredient name to Ann’s Ham.”

The online and printed menus now reflect the change, including the renaming of the sandwich to “Ann’s ham ‘n’ cheese.” Kim did not respond to requests for comment.

Now, would Hormel have sent a C&D if those changes hadn’t been made? We can’t be sure, of course, but that would seem at least somewhat likely given Hormel’s history. Still, I would consider Hormel’s statement on the matter not overly aggressive nor maximalist.

“From time to time, we come across instances of others using our trademarks without licensing agreements. We understand that people are inspired by our iconic products and may even create replicas, usually unaware of any trademark violation that may have occurred,” the statement read. “Typically, we try to give people the benefit of the doubt and simply ask if they are aware of our trademarks and what our process is for the use of our trademarks.

“The issue is, if trademark owners don’t police their trademarks, they may lose them. So, we do this in order to prevent that from happening and work with [the] business to try and remedy the situation without too much hassle.”

It should be pointed out that this reflects the company’s recent stance on its trademark enforcement. The further you go back in history, the more you find Hormel acting very much like a trademark bully. This softer tone is certainly preferred.

But that last bit of the quotation is precisely the problem. Yes, there is a requirement in trademark law to enforce marks or risk losing them… if there is indeed the potential for customer confusion or a risk of the term becoming generic. But, as we’ve pointed out ad nauseum in the past, there are other options beyond simply shutting other uses down. The most common of those options is cheaply licensing the term is an option, thereby endorsing the use as official.

But instead, Hormel now gets to not be the trademark bully and still get its way, merely as a chilling effect result of its own enforcement history. Words are one thing, after all, while actions tell the true story.