United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88825583
Mark: HULU
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Correspondence Address: RM 1603 BLOCK 4 YINGYUEMINGXUAN BUILDING DONGGUAN GUANGDONG 534523 China
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Applicant: HULU CREATION COMPANY, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 09, 2021
The Office has reassigned this application to the undersigned trademark examining attorney.
This Office action is in response to the applicant’s communications dated October 19, 2929. In a previous Office action dated May 28, 2020, the trademark examining attorney refused registration for the following: Prior-Filed Pending Application, Section 2(d) Refusal – Likelihood of Confusion, Specimen Refusal.
The following refusal(s)/requirement(s) have been satisfied: Specimen Refusal.
· SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is HULU for “Barbecue grills; Deep fryer, electric; Kitchen sinks; Electric coffee makers; Electric kettles; Electric thermo pots” in International Class 11, and Cooking pots and pans; Cups and mugs; Kitchen containers; Lunch boxes; Trash containers for household use; Vacuum bottles” in International Class 21.
The cited registrations are:
5860518: HOOLOO for “Appliances for domestic use, namely, temperature controlled wine cellars; Coils as parts of distilling, heating or cooling installations; Commercial cooking ovens; Distillers for chemical processing; Distilling units; Manually-operated plumbing valves; Portable thermoelectric cooling and heating unit for food and beverages; Stills not for scientific purposes; Thermostatic mixing valves; Water distilling units” in International Class 11.
6531036: HULU for, in relevant part, “Pens; stationery; non-magnetically encoded gift cards; notebooks; pencils; writing implements” in International Class 16, “All-purpose sport bags; athletic bags; backpacks; beach bags; book bags; gym bags; handbags; knapsacks; overnight bags; tote bags; umbrellas” in International Class 18, and “Clothing, namely, bandanas, shirts, sweaters, sweat pants, sweatshirts, t-shirts, headwear, namely, hats, caps” in International Class 25.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); TMEP §§1207.01 et seq.
Comparison of Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Here, as to U.S. Registration No. 5860518, the wording in the marks sounds similar as the wording HOOLOO and HULU could be pronounced similarly. The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the compared marks are confusingly similar. In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007) (citing Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732, 156 USPQ 523, 526 (C.C.P.A. 1968)); TMEP §1207.01(b)(iv).
Applicant’s incorporation of stylistic elements does not avoid the similarity between the marks. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
As to U.S. Registration No. 6531036, the wording marks share the identical term HULU in common, thus the marks look and sound similar.
While registrant’s mark contains very slight stylization, as stated above, wording is afforded greater weight in the analysis. In addition, applicant’s mark appears in standard characters and could therefore be used in a manner similar to that of the registrant.
Based on the foregoing, the applied-for mark and registered mark are sufficiently similar to find a likelihood of confusion.
Comparison of Goods and/or Services
In addition, as to U. S. Registration No. 5860518, the previously attached Internet evidence, consisting of screenshots from the webpages of Kitchen Aid, Cuisinart, and MCA Corporation/Magic Chef establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark, and the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Therefore, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009).
Because the applicant’s applied-for mark and the registered mark are similar and the goods and/or services are related, registration is refused for a likelihood of confusion under Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
RESPONSE GUIDELINES
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Katie Foss/
Examining Attorney
Law Office 125
571-272-4067
katherine.foss@uspto.gov
RESPONSE GUIDANCE