Comments on: Is Hulu.com Confusingly Similar to LuLu.com?

By: Rick

Rick — Tue, 11 Sep 2007 13:50:07 +0000

Do a search for Lulu on Google video and you’ll see her singing “To Sir With Love.” She’s the only Lulu that should be suing.

By: Ramiro

Ramiro — Mon, 10 Sep 2007 14:49:52 +0000

Lulu.com has common law rights in the mark “lulu” if the company can provide evidence that the mark has acquired secondary meaning. Lulu.com must show that its use of the mark has been continuous and ongoing and the public associates the mark with the goods and services provided.

If “lulu” is considered a “descriptive” mark, lulu.com must show that “lulu” is used to identify the source or sponsorship of the goods and services.

Marks do not have to be registered with the USPTO in order to be protected. However, a registered trademark provides a legal presumption of ownership and exclusivity.

Do you have a copy of the lawsuit? I can read it and provide additional legal analysis.

By: Andrew

Andrew — Mon, 10 Sep 2007 14:08:43 +0000

Would the case really rest of the registered trademarks, though? If they’ve been using the name in practice they would have some rights. But again, I don’t think LuLu has any basis here.

By: Ramiro

Ramiro — Mon, 10 Sep 2007 11:36:27 +0000

A review of the USPTO database reveals that four applications have been filed by Lulu Enterprises, Inc. Three applications were filed for the mark “Lulu” and one for “Lulu.com”. None of applications have registered numbers. Thus, they are not registered trademarks.

By: qb

qb — Mon, 10 Sep 2007 01:34:06 +0000

Ramiro’s post above is a good example of the confusion. It is -hulu- who do not have any registered trademarks under that name.

-Lulu- has several registered trademarks protecting their name related to delivering content over the Internet including videos.

By: Ramiro

Ramiro — Sat, 08 Sep 2007 03:56:35 +0000

This is very interesting for several reasons.

First, lulu.com is not a registered trademark. An application for lulu.com was filed on June 28, 2007 and is pending approval from the US Patent and Trademark Office (USPTO). The application was filed on an “intent to use” (1B) basis. This filing status does not make sense because lulu.com is currently being used for some of the class of services requested in the application.

Second, as the owner of several trademarks, I know that the USPTO will take at least a year to approve the mark and publish it for opposition. Thus, there is no assurance that the mark will be published in the Principal Register, which would make the mark “lulu” a unique and distinctive mark. It could be published in the Supplemental Register, which would mean that the mark is “descriptive”.

I am interested in reading the actual lawsuit to assess the claims being made by the owners of lulu.com. I have not read that a preliminary injunction has been requested. Lulu.com could request an ex parte temporary restraining order and prevent hulu.com from using the domain name for a couple of days until a hearing is set on a motion for a preliminary injunction. However, this could be a mistake since lulu.com is not a registered trademark. Lulu.com could allege common law rights in its ex parte request and not have to provide evidence that the mark has acquired secondary meaning.

In federal court, hulu.com could file a motion to dismiss for failure to state a claim. However, because trademark lawsuits usually involve factual issues, some discovery may be conducted before a motion for a summary judgment is filed.

I look forward to reading how this case is resolved.