Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA274426
`ESTTA Tracking number:
`03/25/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91185393
`Defendant
`Vudu, Inc.
`D. Peter Harvey
`Harvey Siskind LLP
`Four Embarcadero Center, 39th Floor
`San Francisco, CA 94111
`UNITED STATES
`mstratton@harveysiskind.com, pharvey@harveysiskind.com,
`clee@harveysiskind.com
`Motion for Summary Judgment
`Matthew A. Stratton
`mstratton@harveysiskind.com, pharvey@harveysiskind.com,
`clee@harveysiskind.com
`/Matthew A. Stratton/
`03/25/2009
`Opp MSJ.090325.FINAL.pdf ( 18 pages )(66847 bytes )
`Lichty.Decl.with exhibits.090325.pdf ( 15 pages )(1207919 bytes )
`MAS.Decl.with exhibits.090325.pdf ( 9 pages )(554818 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
`
`In the Matter of Application Serial No. 77112745 for the mark VUDU, filed on February
`21, 2007, and published in the Official Gazette on March 25, 2008.
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`
`
`Opposition No. 91185393
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`
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`APPLICANT’S OPPOSITION TO
`OPPOSER’S MOTION FOR
`SUMMARY JUDGMENT
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`HEWLETT-PACKARD DEVELOPMENT
`COMPANY, L.P.
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` Opposer,
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`Applicant.
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` v.
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`VUDU, INC.,
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`OPPOSITION TO MOTION FOR SUMMARY JUDGMENT OPPOSITION NO. 91185393
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`TABLE OF CONTENTS
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` Page
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`I.
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`II.
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`III.
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`INTRODUCTION .........................................................................................................1
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`STATEMENT OF FACTS ............................................................................................1
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`A. Opposer ....................................................................................................................1
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`B. Applicant..................................................................................................................2
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`C. Procedural History ...................................................................................................3
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`ARGUMENT.................................................................................................................3
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`A. Opposer’s Burden on Summary Judgment ..............................................................3
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`B. A Likelihood of Confusion Is Not Present ..............................................................4
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`(1) Standard .......................................................................................................4
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`(2) The Marks Are Not Sufficiently Similar .....................................................5
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`(3) The Goods Are Not Sufficiently Related.....................................................7
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`(4) The Marks Have Different Channels of Distribution ................................10
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`(5) The Parties’ Goods Are Not Bought on “Impulse” ...................................10
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`(6) HP’s VOODOO Mark Is Not Famous .......................................................11
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`(7) HP Has Shown No Actual Confusion........................................................11
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`IV.
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`CONCLUSION............................................................................................................11
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`TABLE OF AUTHORITIES
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`CASES
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`Page(s)
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`Anderson v. Liberty Lobby, Inc.
` 477 U.S. 242, 248 (1986)...............................................................................................................4
`
`Arrow Fastener Co., Inc. v. Stanley Works
` 59 F.3d 384, 399 (2d Cir. 1995)...................................................................................................10
`
`Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co.
` 408 F. Supp. 1219, 1225 (D. Colo. 1976)......................................................................................9
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`Carnival Brand Seafood Co. v. Carnival Brands, Inc.
` 51 U.S.P.Q.2d 1929 (11th Cir. 1999) ............................................................................................9
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`Champagne Louis Roederer, S.A. v. Delicato Vineyards
` 148 F.3d 1373, 1375 (Fed. Cir. 1998)....................................................................................................5
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`Cognis Corp. v. DBC LLC
` 73 U.S.P.Q.2d 1766 (T.T.A.B. 2004) ........................................................................................4, 7
`
`Cunningham v. Laser Golf Corp.
` 222 F.3d 943-44 (Fed. Cir. 2000) ..................................................................................................3
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`General Mills, Inc. v. Kellogg Co.
` 824 F.2d 622, 627 (8th Cir. 1987) .................................................................................................6
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`In re Bed & Breakfast Registry
` 791 F.2d 157, 159 (Fed. Cir. 1986)................................................................................................5
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`In re British Bulldog, Ltd.
` 224 U.S.P.Q. 854 (T.T.A.B. 1984) ................................................................................................6
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`In re E.I. du Pont de Nemours & Co.
` 476 F.2d 1357, 1361 (C.C.P.A. 1973) .................................................................................4, 5, 10
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`In re General Motors Corporation
` 23 U.S.P.Q.2D (BNA) 1465 *9 ...................................................................................................10
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`In re Omaha National Corp.
` 819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987) ...............................................................8
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`In re Sears, Roebuck and Co.
` 2 U.S.P.Q.2d 1312 (T.T.A.B. 1987) ..............................................................................................6
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`In re Sydel Lingerie Co., Inc.
` 197 U.S.P.Q. 629 (T.T.A.B. 1977) ................................................................................................6
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`Machine Head v. Dewey Global Holdings Inc.
` 61 U.S.P.Q.2d 1313 (W.D. Pa. 2001) ............................................................................................9
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`McGregor-Doniger, Inc. v. Drizzle, Inc.
` 599 F.2d 1126, 1139 (2d Cir. 1979)...............................................................................................9
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`Nabisco, Inc. v. PF Brands, Inc.
` 191 F.3d 208 (2d Cir. 2000).........................................................................................................11
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`Opryland USA Inc. v. The Great Am. Music Show
` 970 F.2d 847, 849-50 (Fed. Cir. 1992) ..........................................................................................4
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`Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.
` 748 F.2d 669, 674 (Fed. Cir. 1984)................................................................................................6
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`The Sports Authority, Inc. v. Prime Hospitality Corp.
` 89 F.3d 955 (2d Cir. 1996).............................................................................................................4
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`Victor Comptometer Corp. v. Shakespeare Co.
` 184 U.S.P.Q. 634 (T.T.A.B. 1974) ................................................................................................9
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`Vornado, Inc. v. Breuer Electric Mfg. Co.
` 390 F.2d 724 (1968).......................................................................................................................6
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`
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`RULES
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`Federal Rules of Civil Procedure, Rule 56 (2008)...........................................................................4
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`OPPOSITION TO MOTION FOR SUMMARY JUDGMENT OPPOSITION NO. 91185393
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`I.
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`INTRODUCTION
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`In its motion for summary judgment, Opposer Hewlett-Packard Development Company,
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`L.P. (“Opposer” or “HP”) seeks an order refusing registration of Applicant VUDU Inc.’s
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`(“VUDU” or “Applicant”) Application Serial No. 77112745 for the mark VUDU. Specifically,
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`HP asserts that its registration for the mark VOODOO for “personal and gaming computers” and
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`related services prevents Applicant from registering VUDU for “set-top boxes” and related
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`services that stream video content from the internet to consumers’ televisions. The parties’
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`markedly dissimilar goods and services, let alone the significant differences between the
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`appearances of the marks, require denial of HP’s motion.
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`This is especially true at this early stage of the proceedings where HP has not responded
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`to VUDU’s discovery requests, which it propounded in December 2008. After HP requested an
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`additional thirty days to respond to VUDU’s requests— a request that VUDU granted—HP
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`instead used that time to draft this motion. In the interim, VUDU responded to HP’s discovery
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`requests. HP has since told VUDU that it will not be responding to VUDU’s requests pending
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`the Board’s consideration of this motion.
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`In light of the significant differences between the parties’ marks and their respective
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`goods and services—as well as HP’s dubious unwillingness to participate in the discovery
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`process—VUDU respectfully urges the Board to deny HP’s motion.
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`II.
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`STATEMENT OF FACTS
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`A.
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`Opposer
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`VoodooPC (“Voodoo”), founded in 1991, is a Canadian manufacturer of gaming and
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`other high-performance personal computers. Declaration of Edward Lichty (“Lichty Decl.”), ¶ 7.
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`In 2006, Voodoo was acquired by HP, a major manufacturer of printers, personal computers, and
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`related technology. Id. A handful of personal computers continue to be sold by HP under the
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`VOODOO brand. Voodoo’s personal computers are not your ordinary desktops and laptops.
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`They are custom-built, ultra-luxury, highly expensive personal computers. Id. at ¶¶7-8.
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`For example, the “Voodoo Omen” personal desktop computer is Voodoo’s flagship
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`model. It is built “using a personalized, co-creation process” so that “every owner of a Voodoo
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`Omen becomes an architect and a designer.” Lichty Decl. ¶7. Consumers can select wood,
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`leather, or glass exterior panels to personalize their computer. Id. The Voodoo Omen is priced
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`starting at $7,000, although the top-of-the-line configuration sells for approximately $20,000. Id.
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`It was initially available to consumers by invitation only. Id. The “Voodoo Envy 133” is
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`Voodoo’s customizable notebook computer, priced starting at $2,099. Id. Also affiliated with
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`the VOODOO brand is the “HP Firebird” desktop personal computer (with “Voodoo DNA”),
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`starting at $1,799. Id.
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`By contrast, personal computers offered under more mainstream brands are priced
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`substantially below VOODOO-brand computers. Lichty Decl. ¶8. For example, desktop
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`computers sold under the HP brand are priced in approximately the $299-599 range, while HP-
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`brand laptops are priced in the $449-1199 range. Id.
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`B.
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`Applicant
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`VUDU is a technology company founded in 2004. Lichty Decl. ¶2. Id. VUDU’s
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`products allow consumers to stream high quality video content to their televisions. Id. This is
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`possible with the “VUDU Box,” a set-top box that receives video content from the internet and
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`transmits it to a user’s home television. The VUDU Box potentially replaces a user’s DVD
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`player. The VUDU Box and related backend internet functionality allow users to rent or
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`purchase movies and television shows directly from their homes, without a trip to the video
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`rental store. The first VUDU Box was available for purchase in October 2007. Id.
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`VUDU offers two models of set-top boxes. Lichty Decl. ¶4. The basic VUDU Box,
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`which comprises approximately 80% of VUDU’s total box sales, retails for $149. Id. The more
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`advanced VUDU XL box retails for $499. Id. VUDU primarily sells its set-top boxes through
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`major electronics retailers, such as Best Buy, although VUDU’s basic box is also available for
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`purchase at VUDU’s website. Id at ¶5.
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`VUDU rents standard definition movies to consumers for $0.99-$3.99 per title. Lichty
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`Decl. ¶4. High definition movies are rented for $3.99-$5.99 per title. Id. Television episodes
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`may be purchased for $1.99. Id. VUDU does not require a monthly subscription or contract. Id.
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`C.
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`Procedural History
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`On February 21, 2007, VUDU filed Application Serial No. 77112745 for the mark
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`VUDU. Declaration of Matthew A. Stratton (“Stratton Decl.”), ¶2. The USPTO published the
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`mark in the Official Gazette on March 25, 2008. Id. On July 23, 2008, HP filed its Notice of
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`Opposition to the registration of the VUDU mark. Id.
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`On December 22, 2008, VUDU propounded discovery requests to HP. Stratton Decl., ¶3.
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`On January 13, 2009, HP propounded its discovery requests to VUDU. Id. On January 14,
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`2009, HP requested an additional month to complete its responses. Id. VUDU granted HP’s
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`request, extending the deadline to February 25, 2009. Id. On February 12, 2009, VUDU
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`responded to HP’s discovery requests. Id.
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`Rather than respond to VUDU’s discovery requests, however, HP instead used its
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`extension of time to prepare this motion for summary judgment. Stratton Decl., ¶4. On
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`February 24, 2009, attorneys for HP took the position that its pending motion stayed HP’s
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`obligation to respond to VUDU’s discovery requests and notified counsel for VUDU that HP
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`would not be responding. Id.
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`III. ARGUMENT
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`A.
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`Opposer’s Burden on Summary Judgment
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`HP bears the burden of proving a likelihood of confusion by a preponderance of the
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`evidence. See Cunningham v. Laser Golf Corp., 222 F.3d 943-44 (Fed. Cir. 2000). To succeed on
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`its motion for summary judgment, HP must provide sufficient evidence to establish that there is no
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`genuine issue of material fact and that HP is entitled to judgment as a matter of law on the issue of
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`likelihood of confusion. See Fed. R. Civ. Pro. 56 (2008). This is a daunting standard. By contrast,
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`to defeat HP’s motion for summary judgment, VUDU need only show a genuine issue of material
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`fact sufficient to allow a reasonable trier of fact to decide the issue of likelihood of confusion in
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`VUDU’s favor. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Opryland USA Inc.
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`v. The Great Am. Music Show, 970 F.2d 847, 849-50 (Fed. Cir. 1992).
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`When analyzing the facts submitted on this motion, the Board must view all evidence in the
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`light most favorable to VUDU and must draw all reasonable inferences in VUDU’s favor. Anderson
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`v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Opryland, 970 F.2d at 850; Cognis Corp. v. DBC
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`LLC, 73 U.S.P.Q.2d 1766 (T.T.A.B. 2004) (“The evidence must be viewed in the light most
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`favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant’s
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`favor.”); The Sports Authority, Inc. v. Prime Hospitality Corp., 89 F.3d 955 (2d Cir. 1996) (reversing
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`district court’s entry of summary judgment where material issues of fact existed with respect to
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`some of the relevant du Pont factors). Here, numerous disputed facts exist, requiring the dismissal
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`of HP’s motion.
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`B.
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`Opposer Has Not Shown, and Cannot Show, Likely Confusion
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`(1)
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`Standard
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`In determining whether a likelihood of confusion exists sufficient to prevent registration,
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`the Board considers the relevant factors set forth in In re E.I. du Pont de Nemours & Co., 476
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`F.2d 1357, 1361 (C.C.P.A. 1973)), specifically:
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`(1)
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`(2)
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`(3)
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`The similarity or dissimilarity of the marks in their entireties as to
`appearance, sound, connotation and commercial impression.
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`The similarity or dissimilarity and nature of the goods or services as
`described in an application or registration or in connection with which a
`prior mark is in use.
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`The similarity or dissimilarity of established, likely-to-continue trade
`channels.
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`(4)
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`(5)
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`(6)
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`(7)
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`(8)
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`(9)
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`The conditions under which and buyers to whom sales are made, i.e.
`“impulse” vs. careful, sophisticated purchasing.
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`The fame of the prior mark (sales, advertising, length of use).
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`The number and nature of similar marks in use on similar goods.
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`The nature and extent of any actual confusion.
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`The length of time during and conditions under which there has been
`concurrent use without evidence of actual confusion.
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`The variety of goods on which a mark is or is not used (house mark,
`“family” mark, product mark).
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`(10) The market interface between applicant and the owner of a prior mark
`[…].
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` (11) The extent to which applicant has a right to exclude others from use of its
`mark on its goods.
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`(12) The extent of potential confusion, i.e., whether de minimis or substantial.
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`(13) Any other established fact probative of the effect of use.
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`Id. at 1361. While no precise formula for determining confusion exists, courts have held that even a
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`single factor may tip the scales in favor of finding no likelihood of confusion. See Champagne
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`Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375 (Fed. Cir. 1998).
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`In its motion, HP tacitly concedes that the majority of the applicable du Pont factors favor a
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`finding of no likelihood of confusion. It focuses instead on only three of the thirteen factors to
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`assert the absence of any genuine issue of material fact. HP’s Motion for Summary Judgment (“HP
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`MSJ”) at 5-9. These factors are the similarity of the marks, the nature of the goods and services,
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`and the trade channels. Id. As shown below, HP’s arguments fall far short of the necessary
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`standard.
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`(2)
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`The Marks Are Not Sufficiently Similar
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`The likelihood of confusion analysis begins with a review of the similarity or dissimilarity
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`of the marks in their entireties as to appearance, sound, and meaning. In re Bed & Breakfast
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`Registry, 791 F.2d 157, 159 (Fed. Cir. 1986). Marks that are identical in sound or appearance used
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`on even related goods may create different commercial impressions so that no likelihood of
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`confusion exists. See e.g., In re Sears, Roebuck and Co., 2 U.S.P.Q.2d 1312 (T.T.A.B. 1987); In re
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`British Bulldog, Ltd., 224 U.S.P.Q. 854 (T.T.A.B. 1984); In re Sydel Lingerie Co., Inc., 197 U.S.P.Q.
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`629 (T.T.A.B. 1977). The mere fact that the marks at issue share elements, even dominant elements,
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`does not compel a conclusion of likely confusion. General Mills, Inc. v. Kellogg Co., 824 F.2d 622,
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`627 (8th Cir. 1987) (“OATMEAL RAISIN CRISP” not confusingly similar to “APPLE RAISIN
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`CRISP”).
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`While VUDU and VOODOO may sound the same, the similarities end there. HP’s
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`VOODOO is the standard spelling of the African religion “voodoo,” while VUDU’s spelling is
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`unique and non-standard. The commercial effect is that HP’s mark directly recalls the mysterious
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`religion, while VUDU’s mark merely suggests it. Another effect is that the two marks share only
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`two letters, the “v” and the “d.” The VUDU mark is visually more compact, with only four letters
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`compared to VOODOO’s six. Further, when the marks appear in non-stylized type, VUDU is
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`always displayed with all capital letters (i.e., “VUDU”), while Opposer’s mark is always displayed
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`with only a capital “v” (i.e., “Voodoo”). Lichty Decl. ¶¶6,8. The result is a different commercial
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`impression. Further, the differences are even more pronounced when the marks are displayed in
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`stylized type:
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` --vs---
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`HP’s trade dress, which is dramatically different from VUDU’s, confirms that the
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`commercial impressions of the parties’ marks are disparate. “Ordinarily, for a word mark we do not
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`look to the trade dress [to determine the commercial impression of the trademark], which can be
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`changed at any time. But the trade dress may nevertheless provide evidence of whether the word
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`mark projects a confusingly similar commercial impression.” Specialty Brands, Inc. v. Coffee Bean
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`Distributors, Inc., 748 F.2d 669, 674 (Fed. Cir. 1984) (citing Vornado, Inc. v. Breuer Electric Mfg.
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`Co., 390 F.2d 724 (1968)). Here, HP’s VOODOO word mark constitutes a limited part of the
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`company’s overall dark trade dress, dominated by the company’s primal, tattoo-laden image of a
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`menacing face.
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` For example, of the two computers presently displayed at www.voodopc.com, the “Voodoo
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`Envy 133” laptop, displays only the primal face at the center of the laptop’s lid, unaccompanied by
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`words. Only after opening the laptop will the user find the word “Voodoo.” Similarly, the “HP
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`Firebird” desktop is merely labeled on one side of its housing with the phrase “Voodoo DNA”—and
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`otherwise dominated by a dark and highly-stylized images of a firebird. Images of the Voodoo
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`Omen are no longer displayed on the website. Given the apparent limited use of the word “voodoo”
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`on computers affiliated with that brand, it appears that the commercial importance of the word is
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`diminishing. By contrast, VUDU’s uses its stylized “VUDU” mark throughout its products and
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`website, the mark itself suggesting a less dark and more magical tone than the ominous VOODOO.
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`When considering HP’s trade dress and pattern of use of VOODOO, consumers are especially
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`unlikely to confuse the source of such personal computers with set-top boxes that bear the VUDU
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`mark.
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`Given that the evidence must be viewed in the light most favorable to VUDU, the Board
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`should find that this factor favors Applicant. At the very least, the Board should find that genuine
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`issues of material fact exist regarding this factor, such as whether “Voodoo” is substantially similar
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`in appearance to “VUDU” or whether the marks, as used, create confusingly similar commercial
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`impressions. Cognis, at 1768 (“At a minimum, there exists a genuine issue of material fact with
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`regard to the similarity or dissimilarity between the parties’ marks.”)
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`(3)
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`The Goods Are Not the Same, Nor Are They Sufficiently Related
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`Conceding that the parties’ respective goods are not the same, HP argues that the goods
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`described in VUDU’s application “overlap” and “are related” to HP’s. HP MSJ at 8. In fact,
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`personal computers—let alone the ultra-luxury computers sold under the VOODOO mark—are
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`unrelated to set-top boxes, and HP’s allegation of “overlap” is impossibly strained.
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`Initially, HP argues that, based on an expansive and technical definition of “set top box”
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`proffered by www.wikipedia.com, a personal computer can be a set-top box because both provide
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`“a signal permitting the display of content on a television.” HP MSJ at 7-8. Following this logic,
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`many different types of consumer electronics would similarly be “set-top boxes.” These would
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`include DVD players, video game consoles, and even remote control devices. HP’s argument
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`ignores the fact that the ordinary, reasonable consumer does not think in such theoretical abstracts.
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`See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987). Clearly,
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`an ordinary consumer does not think a remote control (or personal computer) is a set-top box.
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`HP also notes that some personal computer can, with the proper cables, be connected to a
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`television. HP MSJ at 8. And, because a personal computer can display content, therefore HP’s
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`VOODOO computers must be similar to the VUDU Box because, with the correct cables, they too
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`can display content on a television. Id. Again, such logic is highly strained. Under HP’s definition,
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`a digital camera is similar to the VUDU Box because both—with the correct auxiliary cables—can
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`be connected to a television to display content.
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`Instead, consumers realize that a personal computer is uniquely capable of many different
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`functions. Consumers purchase personal computers for word processing, exploring the internet,
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`organizing and storing electronic files, playing video games, viewing/listening to media, etc. For
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`this reason, the price of a personal computer is many times more than lesser devices capable of only
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`one or two of those functions, such as DVD players, personal digital assistants (PDAs), portable
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`music players (i.e., iPods), video game console—and the VUDU Box. In the case of personal
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`computers sold under the VOODOO mark, the difference could be thousands of dollars. By
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`contrast, the VUDU Box is designed around one simple function: to deliver video and audio content
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`(often movies) from the internet to the user’s television. Accordingly, the basic VUDU Box is
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`priced at $149. It simply defies reason that a consumer would mistakenly associate a high-
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`performance, luxury personal computer, potentially sold for $20,000, with a set-top box that streams
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`movies for a mere $149.
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`OPPOSITION TO MOTION FOR SUMMARY JUDGMENT OPPOSITION NO. 91185393
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`Currently, HP only uses its mark in connection with a single product: luxury personal
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`computers. Further, HP’s motion cites no evidence that HP intends to expand the use of it mark into
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`other types of goods of services, such a movie-streaming set-top boxes or video-on-demand devices.
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`See Machine Head v. Dewey Global Holdings Inc., 61 U.S.P.Q.2d 1313 (W.D. Pa. 2001) (granting
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`summary judgment finding no likelihood of confusion for senior user’s expansion of MACHINE
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`HEAD from sounds effects generation services to MACHINE HEAD rock music group’s album);
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`(McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1139 (2d Cir. 1979)) (finding it unlikely
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`that maker of golf jackets would expand into women’s coats); Big O Tire Dealers, Inc. v. Goodyear
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`Tire & Rubber Co., 408 F. Supp. 1219, 1225 (D. Colo. 1976) (upholding jury verdict rejecting the
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`expansion of car tires to snowmobile tires even though defendant had made token use of
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`snowmobile tires). Similarly, VUDU has no plans to manufacture or sell personal computers.
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`Lichty Decl. at ¶11.
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`Even if evidence did exist that HP intended to enter the commercial space occupied by
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`VUDU, it would not necessarily allow HP to extend its trademark rights over those of VUDU.
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`Trademark rights do not extend to every possible use of the underlying good. See Victor
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`Comptometer Corp. v. Shakespeare Co., 184 U.S.P.Q. 634 (T.T.A.B. 1974) (“A prior user in a
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`particular segment of a broad merchandise field should not be permitted to extend the use of the
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`same or similar mark to goods distinctly different from those with which he entered the market if
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`the result could be a conflict with the valuable intervening rights established by another through
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`extensive use and/or registration of the same or similar mark for like or similar goods.”).
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`Accordingly, viewing the evidence in the light most favorable to VUDU, the Board should
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`find that this factor favors VUDU. At the very least, genuine issues of material fact—such as
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`whether luxury personal computers are similar to media-streaming set-top boxes—preclude
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`summary judgment. See Carnival Brand Seafood Co. v. Carnival Brands, Inc., 51 U.S.P.Q.2d 1929
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`(11th Cir. 1999) (finding that genuine issue of material facts exist concerning the zone of expansion
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`of shrimp products).
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`OPPOSITION TO MOTION FOR SUMMARY JUDGMENT OPPOSITION NO. 91185393
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`(4)
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`The Marks Appear in Different Channels of Distribution
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`In three sentences, HP states that because both the VUDU Box and HP’s VOODOO-brand
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`computers are available on the internet, the goods travel in the “same” channels of trade. HP MSJ at
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`8-9. Given that nearly anything and everything is available for purchase on the internet, HP’s
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`argument is meaningless. HP might as well argued that the goods at issue are both sold at “stores,”
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`and therefore travel in the same channels of trade.
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`Given that HP has offered no credible evidence suggesting the parties’ respective goods
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`travel in similar channels of trade, the Board must find that this factor favors VUDU, and no
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`likelihood of confusion.
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`HP offers no evidence, or makes further arguments, under the remaining du Pont factors.
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`Therefore, each must be presumed to favor VUDU and require the denial of HP’s motion. Still,
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`several remaining du Pont factors further highlight the lack of likelihood of confusion between the
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`parties’ marks and are reviewed below:
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`(5)
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`The Parties’ Goods Are Not Bought on “Impulse”
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`This factor “recognizes that the likelihood of confusion between the products at issue
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`depends in part on the sophistication of the relevant purchasers.” Arrow Fastener Co., Inc. v.
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`Stanley Works, 59 F.3d 384, 399 (2d Cir. 1995). Due to the cost of the parties’ goods—and HP’s
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`VOODOO-brand, luxury computers in particular—consumers are unlikely to make “impulse”
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`purchases that risk source confusion.
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`Consumers of expensive goods are presumed to make more careful, sophisticated purchase
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`decisions than consumers of expensive “impulse” goods. See In re General Motors Corporation, 23
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`U.S.P.Q.2D (BNA) 1465 *9 (“in view of the substantial cost of a new automobile, the consumer
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`typically makes a purchasing decision based on style, performance and price rather than on impulse
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`or whim...”). Here, HP’s VOODOO-brand of personal computers is presumed to appeal to a
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`discerning set, given the great expense of these machines. This is especially true of the Voodoo
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`Omen desktop computer, priced at some $7,000-20,000 and initially available by invitation only. A
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`more mainstream desktop computer retails for $299-599, with no invitation necessary. Presumably,
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`OPPOSITION TO MOTION FOR SUMMARY JUDGMENT OPPOSITION NO. 91185393
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`a rational consumer would conduct significant research before purchasing such an extravagant
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`personal computer. Only the wealthiest consumers could afford to buy such an item on a whim.
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`The basic VUDU Box, though a small faction of the cost of a VOODOO-brand computer,
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`still retails for $149—itself a respectable sum and worthy of research before purchase.
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`In either case, consumers of these products are unlikely to purchase them on impulse and
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`therefore this factor favors a finding of no likelihood of confusion.
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`(6) HP’s VOODOO Mark Is Not Famous
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`HP does not assert that its VOODOO mark is famous. Nor could it, given the proliferation
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`of the many VOODOO and VOODOO-formative marks in use. A search on the USPTO’s
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`Trademark Electronic Search System (TESS) returned 23 registered or applied-for VOODOO
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`marks and 123 records of registered or applied-for VOODOO-formative marks. Stratton Decl. ¶5.
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`Accordingly, the Board should find that this factor favors VUDU.
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`(7)
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`HP Has Shown No Actual Confusion
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`HP’s VOODOO mark has coexisted with the VUDU mark for nearly two years. Lichty
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`Decl. ¶2. Despite this coexistence, HP is unable to show even one instance of consumer confusion.
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`This suggests no likelihood of confusion exists between the two marks:
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`The presence or absence of actual confusion can be highly effective in
`showing a high, or a low, likelihood of confusion if there has been ample
`opportunity for consumer confusion. If consumers have been exposed to two
`allegedly similar marks in the marketplace for an adequate period of time and
`no actual confu