Hormel Sues Over Spam Design Trademark

The Austin-based food manufacturer claims that Zwanenberg Food Group has refused to stop using packaging that infringes on a trademarked design used for Hormel's Spam products.

Austin-based Hormel Foods Corporation on Wednesday sued Zwanenberg Food Group after Zwanenberg allegedly refused to stop using packaging that is “confusingly similar” to the packaging used for Hormel's Spam products.

According to the complaint, which was filed Wednesday in U.S. District Court in Minnesota, the dispute over Zwanenberg's similar packaging started in October 2010 when Hormel issued a cease-and-desist letter to Zwanenberg.

Shortly after the cease-and-desist letter was issued, Zwanenberg agreed to stop using its yellow and blue packaging design and changed its packaging to a red and white design.

Zwanenberg said in a letter to Hormel that it did not agree that its design infringed on Hormel's trademarked design but still agreed to modify the design and thus alleviate Hormel's concerns because it did not have “significant equity in the current design.”

Although it seemed like the dispute had come to an end, Zwanenberg then began manufacturing a meat product for sale and export to the Philippines that had a “modified” yellow and blue packaging design-which, like the original yellow and blue design, is confusingly similar to the design used for Hormel's Spam products, according to Hormel.

Hormel said in court documents that it contacted Zwanenberg via e-mail to inquire about the “modified” packaging. Zwanenberg allegedly responded to the e-mail by saying that its “modified” yellow and blue packaging was different than the packaging that it agreed to stop using under the cease-and-desist letter.

Hormel issued a second cease-and-desist letter to Zwanenberg in March 2011, but Hormel said that Zwanenberg has refused to stop using the packaging.

“Despite Hormel Foods' repeated demands, Zwanenberg has refused to cease using the ['modified' yellow and blue design], necessitating this lawsuit,” the suit said.

Hormel is asking that the court demand that Zwanenberg stop using the “modified” yellow and blue design. The company is also seeking unspecified damages and attorneys' costs and fees.

A Friday morning phone call to a Zwanenberg representative was not immediately returned.

Hormel is among the state's 15-largest public companies based on its revenue, which totaled $7.2 billion in its most recently completed fiscal year.