Plaintiff Uber, Inc. has filed a complaint against rideshare giant Uber Technologies, Inc. for “trademark Infringement, reverse confusion, unfair competition and false designation of origin, deceptive trade practices, and unjust enrichment.” Uber, Inc. specifically complained of unauthorized use of its trademark, “UBER” by Uber Technologies.
Uber, Inc. is a creative and consulting services agency; it was incorporated in 1999. Uber uses this mark on its website and through advertising, as well as through distributing its work among other sources. In 2019, Uber filed an application for trademark registration with the USPTO.
Uber Technologies is a tech company offering technology services for ride-sharing, food delivery and other services. It was incorporated in 2010. Uber Technologies has and continues to use the word “‘Uber’ as an abbreviation of its full business name” in its marketing and advertising.
Uber, Inc. alleges that individuals and entities have repeatedly confused its company for Uber Technologies. For example, confusion has included “Uber Technologies’ own employees arriving at Plaintiff’s office mistakenly believing it to be their own, Plaintiff receiving almost daily calls from angry Uber Technologies consumers, visits from disgruntled Uber Technologies consumers, demands from Uber Technologies’ employees, contractors and affiliates requesting compensation or seeking customer support, and New York State Unemployment Insurance and Worker’s Compensation claims directed at Defendant which are charged to Plaintiff’s insurance.” The plaintiff alleges that this has damaged, disrupted and burdened its business. It has also received unwanted communications and interference with its business operations. Uber, Inc. also alleges that AI assistants such as Siri confuse the two companies. Further, a credit report for the company gave it an “F,” confusing it with Uber Technologies. “This credit report has Plaintiff’s correct address, but the business name is incorrectly listed as Uber Technologies, Inc., mistakenly lists an Uber Technologies driver as an employee of Plaintiff, and identifies Plaintiff as having liens and judgments against it (which it does not).” Uber had to add another tab to its website to differentiate between the two companies. Uber has attempted multiple times to contact Uber Technologies to resolve this problem, however, nothing has been done to remedy the issue.
Uber Inc. did not file a lawsuit until now because their businesses were not competing, however, Uber Technologies recently launched a new division called Uber Design, which will provide “digital tools, platforms, and guidelines to enable consumers to utilize Uber Technologies in ways that compete directly with Plaintiff’s business.” Uber, Inc. believes that the new Uber Design will add to the confusion as was demonstrated by the USPTO. Plaintiff argues that Uber Technologies will likely seek a trademark for Uber Design, which will only add to the infringement.
Uber, Inc. alleges that since it used the “UBER” mark first, it is “the lawful and equitable owner of the Mark.” Meanwhile, Uber Technologies promotes and advertises itself using the term “Uber.” Plaintiffs state that “the word ‘Uber’ has become the sole moniker by which Uber Technologies identifies itself in the marketplace, attached only to other words to indicate other services it provides.” The word “Uber” has become synonymous with Uber Technologies. The plaintiff alleges that the car service has not marketed itself using the term “Uber Technologies,” instead preferring to use “Uber.” In 2015, Uber Technologies attempted to pay Uber, Inc. $80,000 to change its business name, “despite the fact that Plaintiff has senior rights in the Mark” by over a decade. Uber, Inc. counteroffered requesting $800,000, explaining the costs and damages suffered from the confusion, and that costs would increase if this was not fixed. Uber Technologies responded that it would pay at most $120,000 on the condition that the plaintiff changes its name. Uber rejected this offer. In 2019 Uber Technologies received a cease and desist letter from Uber.
The plaintiff is seeking a preliminary and permanent injunction, an award for damages, for Uber Technologies to pay for and implement a clarifying corrective campaign, an award for costs and fees, and other relief as determined by the Court.
The suit was filed in the New York Southern District Court. Uber is represented by Leichtman Law.