Hewlett Packard Development Company Lp V Vudu Inc

Key Facts

Issues

• The Board analyzed whether there is a genuine issue of material fact regarding likelihood of confusion between applicant's VUDU mark and opposer's VOODOO marks. The Board determined that the marks are phonetic equivalents for the identical arbitrary term, carry the same connotation, and convey very similar overall commercial impressions. The Board found no genuine issue of material fact that the marks VOODOO and VUDU are similar for likelihood of confusion purposes.
• The Board denied summary judgment for International Classes 35, 38, 41, and 42, finding opposer failed to demonstrate absence of genuine issue of material fact regarding relatedness of services. The Board found insufficient evidence to show consumers would find both parties' services on the Internet alone, which is not sufficient to establish absence of genuine issue as to relatedness of goods and services.
• The Board granted summary judgment for International Class 9, finding that opposer's VOODOO mark for personal and gaming computers encompasses computers that would use applicant's computer software for transmission, storage, and playback of audio and video content. The goods are complementary, found in the same channels of trade, and appeal to the same purchasers, creating likelihood of confusion.
• The case will proceed to determine whether registration of applicant's VUDU mark in any of the services classes would result in dilution of the VOODOO marks in opposer's pleaded registrations. This issue remains to be resolved at final hearing.

Holdings

• The Board granted Hewlett-Packard's motion for summary judgment regarding International Class 9 goods, finding likelihood of confusion between the VOODOO and VUDU marks for computer software and personal/gaming computers. The Board denied the summary judgment motion for International Classes 35, 38, 41, and 42 services, as no genuine issue of material fact was established regarding likelihood of confusion for these service classes. The case will proceed to a final hearing on dilution and remaining likelihood of confusion issues.
• For International Class 9, the Board found the marks VOODOO and VUDU are phonetic equivalents for the identical arbitrary term, are complementary goods, and consumers could use applicant's software in opposer's computers, establishing likelihood of confusion. For International Classes 35, 38, 41, and 42 services, the Board found opposer failed to demonstrate absence of genuine issue of material fact as to relatedness of goods and services, requiring further proceedings on dilution and likelihood of confusion for services.

Remedies

Legal Principles

• The document establishes that a motion for summary judgment is a pretrial device intended to save time and expense when a party demonstrates prior to trial that there is no genuine issue of material fact and is entitled to judgment as a matter of law. The opposing party must point to evidentiary conflict created on the record by a counter statement of facts in an affidavit by a knowledgeable affiant. Mere denials or conclusory statements are insufficient. The Board may not resolve issues of material fact but can only ascertain whether genuine disputes exist. Evidence on summary judgment must be viewed in light most favorable to the non-movant with all justifiable inferences drawn in the non-movant's favor.
• The Board determines likelihood of confusion based on factors set forth in In re E.I. du Pont de Nemours, considering 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. The analysis assumes marks are phonetic equivalents for identical arbitrary terms, presented in same display or form of lettering, carry same connotation, and convey very similar overall commercial impressions. For Class 9 goods, the Board found complementary goods analysis supports likelihood of confusion. For Classes 35, 38, 41, and 42 services, the Board found insufficient evidence to establish likelihood of confusion as the services have no obvious relationship to the registered goods and services.

Precedent Name

• G & W Labs. Inc. v. GW Pharma Ltd.
• Squirtco v. Tomy Corp
• Celotex Corp. v. Catrett
• Han Beauty, Inc. v. Alberto-Culver Co.
• Tuxedo Monopoly, Inc. v. General Mills Fun Group
• Octocom Sys., Inc. v. Houston Computers Servs. Inc.
• In re E.I. du Pont de Nemours & Co.
• Apple Computer v. TVNET.Net, Inc.

Cited Statute

Judge Name

• Rogers
• Taylor
• Hairston

Passage Text

• 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).
• 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.
• 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 9 in the involved application, with respect to the issue of likelihood of confusion.