LuLu.com owner goes after Hulu.com for trademark infringement.
LuLu.com is a self-publishing site. Hulu.com is a soon-to-be-released video site backed by News Corporation and NBC Universal. Is that confusing? According to the owner of LuLu.com, it is. LuLu.com has initiated legal action against HuLu.com, noting that both sites contain “digital content” and have similar domain names, according to a story in the Guardian.
It seems that LuLu.com believes that if you have a four character domain that is one letter off from LuLu.com (and there are about 100 such domains), and you publish some sort of content on your web site (or may in the future), then you are infringing on its trademark:
Bob Young, the chief executive of Lulu.com, described the branding of the rival Hulu service as a threat to the Lulu franchise and $10m invested in it.
“This is what trademark law is all about,” he told MediaGuardian.co.uk.
“But the big problem is that neither of us know where our businesses are going in the future.
“The odds are we’ll both end doing something other than what we started out to do.
“It is highly likely that in five years time, 80% of our revenues will come from completely different products and services.”
My take is that LuLu.com is either:
-In financial trouble and looking to get cash from a settlement
-Really proud of itself to think that NBC and New Corp want to play off its “good name” (how many of you have seriously heard of LuLu.com before?)
-Looking to get some free publicity
Domainers usually side with the little guy going up against Goliath, but in this case the tables are turned. If LuLu.com were to be successful, how would this be applied to a three letter domain? ABC.com could claim that NBC.com was “confusingly similar”.
Hopefully a judge will quickly toss this out.
Ramiro says
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.
qb says
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.
Ramiro says
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.
Andrew says
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.
Ramiro says
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.
Rick says
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.