17 March 2020TrademarksSarah Morgan

Design agency sues namesake Uber after ‘extreme disruption’

A New York design firm has taken ride-sharing company Uber Technologies to court for trademark infringement, after years of “extreme disruption and burden”.

Über, which was founded in January 1999 by Herta Kriegner, filed suit against the ride-sharing giant on Monday, March 16, at the US District Court for the Southern District of New York after finding out that its own trademark application was under threat.

“While plaintiff was trying to persuade Uber Technologies to address the confusion with no success, it did not file a lawsuit until now because plaintiff was concerned about the expense to do so and understood that Uber Technologies’ business did not compete with plaintiff’s business,” said the design agency’s suit, before adding that the situation has now changed.

Recently, Uber Technologies created a new business division—Uber Design—which provides digital tools, platforms, and guidelines to enable designers to use Uber’s branding. This, said Über, competes directly with its business.

Many of the ride-sharing apps trademark registrations cover services in classes 35 and 42, in direct competition with Über’s own business services and trademark application, according to the claim.

In September 2019, the design agency received an office action response from the US Patent and Trademark Office (USPTO) on its application, indicating among other things that its registrability was at risk of being rejected due to a likelihood of confusion due to similarity to Uber Technologies’ own trademark applications and registrations.

The USPTO’s response, coupled with Uber Technologies entrance into the design market, has prompted the filing.

“As the first user in commerce of the mark, plaintiff Über is the lawful and equitable owner of the mark, and this action is commenced in order to ensure that its brand, business, and goodwill will no longer suffer as a result of Uber Technologies’ willful, wanton, and intentional infringement, deceptive trade practices, and unfairly competitive use of plaintiff’s mark,” said the claim.

Repeated and overwhelming confusion

Since Uber Technologies’ incorporated in 2009 and began using the word “Uber” in its marketing, consumers, employees and contractors of the defendant, and government agencies have “repeatedly and overwhelmingly confused” Über’s business with Uber Technologies’ business, said the design agency.

According to the claim, Uber Technologies’ own employees have arrived at the design agency’s office mistakenly believing it to be their own. The agency has also received “almost daily” calls from angry Uber Technologies consumers, visits from disgruntled consumers, and demands requesting compensation.

New York State Unemployment Insurance and Worker’s Compensation claims, which are directed at Uber Technologies, have also been charged to Über’s insurance.

“Plaintiff has and continues to receive harassing and threatening communications from Uber Technologies consumers and contractors, and numbers of defendant’s employees—including senior executives—have and continue to identify themselves on social media and elsewhere as being employees of plaintiff Über. In other words, the confusion between plaintiff and defendant is rampant and out of control,” said the claim.

Now, the design agency is seeking an injunction, damages and for Uber Technologies to pay for and implement a campaign of corrective advertising.

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