On Monday, March 16, 2020, New York design firm Uber, Inc. filed a complaint in the U.S. District Court, Southern District of New York, against the ride-sharing company Uber Technologies, Inc., alleging “willful, wanton, and intentional infringement, deceptive trade practices, and unfairly competitive use” of the design firm’s trademark. The design firm requested relief in the form of damages, an injunction, and for the ride-sharing company to implement corrective advertising in the form of a campaign.
The U.S. Patent and Trademark Office sent an office action response to the design firm in September 2019 related to its trademark application. The office action response notified the design firm that its trademark’s registration could be rejected, citing likelihood of confusion with the ride-sharing company’s trademark applications and registrations related to a new business division, Uber Design. The new business division was formed by the ride-sharing company intending to provide designers with tools, platforms, and guidelines related to the use of the ride-sharing company’s branding. Uber, Inc. filed suit after noticing that many of the ride-sharing company’s registrations apply to services in classes 35 and 42, directly competing with the design firm’s own business services and trademark application.
The complaint alleges that consumers, and even Uber Technologies, Inc.’s own employees, have confused Uber, Inc. for the ride-sharing company. The design firm has received phone calls, visits, and demands from consumers upset with the ride-sharing company. “[T]he confusion between plaintiff and defendant is rampant and out of control.”
Design agency sues namesake Uber after ‘extreme disruption’, World Intellectual Property Review (March 17, 2020)