To those of us who are old enough to buy liquor without a fake ID, “spam” means something more than junk e-mail. To us, SPAM® is a spiced, chopped-ham product produced by the venerable Hormel meat packing company. The product is packaged in rectangular cans bearing the word “SPAM” in yellow lettering on a blue background. Appearing below the word “SPAM” is a picture of a sandwich comprised of a slice of the meat product on a sesame seed bun. Hormel claims use of this “trade dress” going back to 1937 and further alleges to have sold over 7 billion cans worldwide.
Not a company to hide its light under a bushel basket, Hormel waxes eloquent about its “millions of dollars spent on advertising and promoting the SPAM® brand … [a]s a result of long-standing use, the SPAM brand has become a famous American icon. Its timelessness has earned it roles in films, a fan club and a highly coveted place in the Smithsonian. The SPAM® products even have a dedicated museum – the SPAM Museum …”
While admittedly SPAM is quite tasty if properly cooked, we think it a trifle excessive to have a luncheon meat museum. Nevertheless, it is not surprising that Hormel would take umbrage at a perceived encroachment on this “iconic” trade dress. (Hormel Foods LLC et al. v. Zwanenberg Food Group (USA), Inc.)
In or about October 2010, Zwanenberg had the temerity to commence packaging its PREM® spiced, chopped ham meat product in rectangular cans, whereon the word “PREM” in yellow lettering appears on a blue background. Directly below the word “PREM” is a picture of a sandwich comprised of a slice of the meat product on a sesame seed bun.
Hormel, professing the belief that Zwanenberg’s trade dress was such as to create confusion between PREM® and its own museum-quality meat product, dispatched several of the traditional “cease and desist” letters to Zwanenberg. When its letter writing campaign produced no results, Hormel took the time-honored next step – it sued Zwanenberg, alleging trademark and trade dress infringement, trademark and trade dress dilution, false designation of origin, deceptive trade practices, and unfair competition.
Zwanenberg has yet to file its answer to Hormel’s complaint, so it is far too early to render any prognostications as to the outcome of this trade dress case. There is, however, another issue. It seems that back in 2008, the parties entered into a Custom Manufacturing Agreement whereunder Zwanenberg agreed to manufacture luncheon meat and chopped pork on behalf of Hormel Foods. Pursuant to the terms of this agreement, Zwanenberg agreed that it would not sell “any products which have labels or packaging that may, in Hormel Foods’ reasonable judgment, be confusingly similar to the labels or packaging of any … products sold by Hormel Foods.
So, since Hormel professes a reasonable belief that the Zwanenberg packaging is confusingly similar to its own packaging – and possibly at the behest of outraged SPAM fan club members – it added a claim for breach of contract. The results with respect to this issue are easier to predict.