Hewlett-Packard Development Company, L.P.v.Vudu, Inc.

Trademark Trial and Appeal Board

Oct 26, 2009

No. 91185393 (T.T.A.B. Oct. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451

THIS OPINION IS A
PRECEDENT OF
THE T.T.A.B.
DUNN

Mailed: October 26, 2009

Opposition No. 91185393

Hewlett-Packard Development
Company, L.P.

v.

Vudu, Inc.

Before Hairston, Rogers, and Taylor, Administrative
Trademark Judges:

By the Board:

This case comes up on opposer’s motion for summary
judgment on the pleaded claim of priority and likelihood of
confusion. The motion has been fully briefed.
Hewlett-Packard Development Company, L.P. (hereafter,
HP or opposer) opposes registration by Vudu, Inc.
(hereafter, Vudu or applicant) of the mark VUDU, which is
the subject of application Serial No. 771127451, on the

1 Application Serial No. 77112745 seeks registration for:
(International Class 9) set top boxes, peripherals and
software for use in the transmission, storage and playback of
audio and video content; computer software for use in computers
for the transmission, storage and playback of audio and video
content; software for use in televisions for the transmission,
storage and playback of audio and video content.
Opposition No. 91185393
grounds of dilution and priority and likelihood of confusion
with opposer’s pleaded registrations for the VOODOO marks
shown below.2

VOODOO

Registration No. 2988445 Registration No. 3038749

Applicant filed an answer denying the salient allegations of
the notice of opposition.

(International Class 35) providing consumer information used
in the selection and purchase of audio and video content.
(International Class 38) audio and video broadcasting
services, broadcasting audio and video content over global
computer networks, video-on-demand transmission services, pay-
per-view video and audio transmission services.
(International Class 41) providing information in the area
of audio and video programming.
(International Class 42) providing a website featuring
temporary use of non-downloadable software allowing website users
to store and playback audio and video content for entertainment
purposes.

2 HP’s Registration Nos. 2988445 and 3038749 list the same
goods and services:
(International Class 9) computer systems, namely, personal
and gaming computers.
(International Class 40) custom manufacture of computers for
others.
(International Class 42) custom design of computers for
others, technical support services, namely, providing information
and assistance concerning the use and function of computer
hardware and software; and, information services, namely,
providing information on computer systems, computer design,
technology and the industry to the public via connection to the
global computer network.
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Opposition No. 91185393
A motion for summary judgment is a pretrial device,
intended to save the time and expense of a full trial when a
party is able to demonstrate, prior to trial, that there is
no genuine issue of material fact, and that it is entitled
to judgment as a matter of law. See Fed. R. Civ. P. 56(c);
Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548
(1986); Franpovi SA v. Wessin, 89 USPQ2d 1637, 1638 (TTAB
2009). The party opposing the motion must point to an
evidentiary conflict created on the record at least by a
counter statement of a fact or facts set forth in detail in
an affidavit by a knowledgeable affiant. Mere denials or
conclusory statements are insufficient. Sweats Fashions
Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d
1793, 1795 (Fed. Cir. 1987). The Board may not resolve
issues of material fact, but can only ascertain whether
genuine disputes exist regarding such issues. The evidence
on summary judgment must be viewed in a light most favorable
to the non-movant and all justifiable inferences are to be
drawn in the non-movant's favor. See Lloyd's Food Products,
Inc. v. Eli's, Inc., 987 F.2d 766, 767, 25 USPQ2d 2027, 2029
(Fed. Cir. 1993).

STANDING AND PRIORITY
As opposer has submitted status and title copies of its
pleaded registrations, there is no genuine issue that
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Opposition No. 91185393
opposer has established its standing to bring this action,
and priority of use is not an issue. King Candy Company v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974); L.C. Licensing Inc. v. Berman, 86 USPQ2D
1883, 1887 (TTAB 2008).

LIKELIHOOD OF CONFUSION
The Board determines likelihood of confusion based on
the factors set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973).
The likelihood of confusion analysis considers all du Pont
factors for which there is evidence of record but “may focus
... on dispositive factors, such as similarity of the marks
and relatedness of the goods.” Han Beauty, Inc. v. Alberto-
Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir.
2001). For purposes of our likelihood of confusion analysis
on the summary judgment motion, the most pertinent of
opposer’s marks is its VOODOO mark in standard characters
(Registration No. 2988445) and therefore we will confine our
discussion to this mark. That is, if we find that there is
no genuine issue that there is likelihood of confusion with
respect to this mark, there is no need for us to consider
opposer's other mark, and if we find that there is no
likelihood of confusion with respect to this mark, a
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Opposition No. 91185393
fortiori there can be no likelihood of confusion with
respect to the other mark.
Here, applicant does not dispute that its VUDU mark and
opposer’s VOODOO mark sound the same and have the same
connotation (Opposition to Motion for Summary Judgment, p.
6, “HP’s mark directly recalls the mysterious religion,
while VUDU’S mark merely suggests it”).3 Furthermore, both
applicant’s mark and opposer’s mark employ standard
characters; thus, neither party is limited to any particular
depiction of its mark. Jockey Int’l Inc. v. Mallory &
Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992). Therefore,
our analysis must assume that both parties may employ the
same stylization or display of the letters in the involved
marks. Id. As a result, applicant’s argument and evidence
regarding the differences in how the parties presently
display their marks is immaterial and does not raise a
genuine issue. Squirtco v. Tomy Corp, 697 F.2d 1038, 216
USPQ 937, 939 (Fed. Cir. 1983)(“[T]he argument concerning a
difference in type style is not viable where one party
asserts rights in no particular display. By presenting its
mark merely in a typed drawing, a difference cannot legally
be asserted by that party”). In sum, there is no genuine
issue that the marks are phonetic equivalents for the

3 The purported difference in how immediately the respective
marks convey their common connotation does not alter the fact
that the connotation is the same.
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Opposition No. 91185393
identical arbitrary term, are assumed to be presented in the
same display or form of lettering, carry the same
connotation, and convey very similar overall commercial
impressions. Accordingly, there is no genuine issue of
material fact that the marks VOODOO and VUDU are similar for
likelihood of confusion purposes.
In this case, consideration of the issue of whether the
goods and services are related or not leads to different
results in our analysis of likelihood of confusion.
Therefore, we discuss the classes separately. G & W Labs.
Inc. v. GW Pharma Ltd., 89 USPQ2d 1571, 1574 (TTAB
2009)(“[A] multiple-class application can be viewed as a
series of applications for registration of a mark in
connection with goods or services in each class, combined
into one application ….”).

International Class 9
Opposer has registered its VOODOO mark for, inter alia,
“personal and gaming computers” and applicant seeks
registration of its VUDU mark for, inter alia, “computer
software for use in computers for the transmission, storage
and playback of audio and video content.”4 Because the

4 In the context of likelihood of confusion, it is sufficient
if likelihood of confusion is found with respect to use of the
mark on any item that comes within the description of goods in
the application or registration. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
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Opposition No. 91185393
identification of goods in opposer’s registration is not
limited to specific types of personal and gaming computers
or to specific channels of trade, it must be presumed that
opposer's computers encompass computers which would use
applicant's computer software for use in computers for the
transmission, storage and playback of audio and video
content. Indeed, applicant does not dispute opposer’s
contention (Motion for Summary Judgment, p. 8) that
consumers could use applicant’s software in opposer’s
computers.
Applicant’s opposition to summary judgment does not
address the relationship between HP’s personal and gaming
computers and each item listed in its International Class 9
goods. Applicant merely argues that there is no
relationship between HP’s personal and gaming computers and
its set-top boxes because the set-top boxes have a
specialized application, and allow consumers to stream high
quality video content to their televisions. This
restriction may be implicit in the identification of other
goods or services in applicant’s identification, but is not
reflected in the identification of the computer software
referenced above. The authority is legion that the question
of registrability of an applicant's mark must be decided on

1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398
(TTAB 2007).

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Opposition No. 91185393
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant's goods, the
particular channels of trade or the class of purchasers to
which sales of the goods are directed. Octocom Sys., Inc.
v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990)(citations omitted). Based on
the identifications of goods in Class 9 of applicant’s
application and opposer’s pleaded Registration No. 2988445,
there is no genuine issue of material fact that the goods of
the parties may be used together for the same purposes, may
be found in the same channels of trade, and may appeal to
the same purchasers.
Because there are no genuine issues of fact regarding
the similarities of the terms VOODOO and VUDU, because, by
their descriptions, applicant’s particular type of software
for computers and opposer’s personal and gaming computers
are complementary goods, and because applicant has not
denied opposer’s contention that these goods are
complementary, we find that opposer is entitled to entry of
summary judgment as a matter of law. Opposer’s motion for
summary judgment is granted in regard to International Class
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Opposition No. 91185393
9 in the involved application, with respect to the issue of
likelihood of confusion.5

International Classes 35, 38, 41, and 42
In addition to personal and gaming computers, opposer
has registered its VOODOO mark for:
(International Class 40) custom manufacture
of computers for others.
(International Class 42) custom design of
computers for others; technical support services,
namely, providing information and assistance
concerning the use and function of computer
hardware and software; and, information services,
namely, providing information on computer systems,
computer design, technology and the industry to
the public via connection to the global computer
network.

In addition to its International Class 9 goods, the opposed
application includes the following services:
(International Class 35) providing consumer
information used in the selection and purchase of
audio and video content.
(International Class 38) audio and video
broadcasting services, broadcasting audio and
video content over global computer networks,
video-on-demand transmission services, pay-per-
view video and audio transmission services.
(International Class 41) providing
information in the area of audio and video
programming.
(International Class 42) providing a website
featuring temporary use of non-downloadable
software allowing website users to store and

5 The parties are reminded that the Board’s decision granting
partial summary judgment is interlocutory in nature and may not
be appealed until a final decision is rendered in the proceeding.
See Copeland's Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 12
USPQ2d 1562 (Fed. Cir. 1989).
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Opposition No. 91185393
playback audio and video content for entertainment
purposes.

As set forth above, opposer as movant for summary judgment
must demonstrate that there is no genuine issue of material
fact regarding likelihood of confusion as to each separate
class of the opposed application, and the evidence must be
viewed in a light most favorable to the non-movant. On
their face, the recitations of services in the application
have no obvious relationship to the goods and services in
the pleaded registration. Opposer presented no evidence on
this point, and in its motion urging the Board to find a
likelihood of confusion between applicant’s services and the
goods and services listed in its pleaded registration,
opposer alleges only that consumers could find both parties’
services on the Internet. However, countless products and
services can be found on the Internet and in the
circumstances of this proceeding, this is not sufficient to
show the absence of a genuine issue as to the relatedness of
the goods and services.
Upon careful consideration of the arguments and the
scant evidence presented by the parties, and resolving all
reasonable inferences in the non-movant’s favor, the Board
finds that opposer has failed to carry its burden of
establishing that it is entitled to judgment as a matter of
law in regard to International Classes 35, 38, 41, and 42.
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Opposition No. 91185393
At a minimum, opposer has failed to demonstrate the absence
of a genuine issue of material fact as to the similarity of
opposer’s goods and services and the International Classes
35, 38, 41, and 42 services in the opposed application.6
In view thereof, opposer’s motion for summary judgment
on the issue of likelihood of confusion is denied with
respect to the services in International Classes 35, 38, 41,
and 42. As noted, opposer's motion for summary judgment
with respect to the goods in Class 9 is granted.
This case will go forward on the issue of whether
registration of applicant’s mark in any of the services
classes would result in dilution of the marks in either of
opposer’s pleaded registrations, as well as on the issue of
whether there is a likelihood of confusion between opposer’s
marks for the goods and services in its registrations and
applicant’s mark and its services in International Classes
35, 38, 41, and 42.
Proceedings herein are resumed, and dates are reset
below.

6 The parties should note that evidence submitted in support
of or in opposition to a motion for summary judgment is of record
only for consideration of that motion. Any such evidence to be
considered at final hearing must be properly introduced in
evidence during the appropriate trial period. See Levi Strauss &
Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
In the alternative, the parties may seek Accelerated Case
Resolution (ACR) by stipulating, inter alia, to facts on which
they agree and to procedures that will allow the parties to make
their presentations on the merits of the remaining issues without
the need for a formal trial procedure. See Eveready Battery Co.
v. Green Planet Inc., 91 USPQ2d 1511 (TTAB 2009).
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Opposition No. 91185393
Expert Disclosures Due 12/16/09
Discovery Closes 1/15/10
Plaintiff's Pretrial Disclosures 3/1/10
Plaintiff's 30-day Trial Period
Ends
4/15/10
Defendant's Pretrial Disclosures 4/30/10
Defendant's 30-day Trial Period
Ends
6/14/10
Plaintiff's Rebuttal Disclosures 6/29/10
Plaintiff's 15-day Rebuttal Period
Ends
7/29/10

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.l25.
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.
***
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