Uber’s expansion into ads hits a TM hurdle

Uber Inc. v. Uber Technol., Inc., No. 20-cv-2320 (PKC)
(S.D.N.Y. Feb. 24, 2021)

Uber Inc. has offered design and marketing services under
the name “Uber” since 1999. Uber Technologies, the one you know about, was
incorporated in 2010. As it grew and expanded into new services, Uber Inc. “found
itself on the receiving end of customer complaints, misdirected product
shipments, legal and regulatory correspondence, and other communications
intended for Uber Technologies.” And Defendants began saying that they planned
to expand into the display-advertising business: putting ads on a vehicle’s
digital signage, a rider’s mobile app, and on digital screens like electronic
billboards. Uber Inc. also alleged that its 2019 application to register a
trademark was stalled based on a description of services that overlapped with a
pending, competing ITU application filed by Uber Technologies in connection
with advertising, marketing and promotional services, including “promoting
third party goods and services.”

The court declined to dismiss the Lanham Act/NY law
complaint, with the exception of the duplicative unjust enrichment claim.

Uber Inc. describes its business as including graphic design
like logos, stationery and brochures; promotional events and mailings; and
consumer-oriented campaigns, like magazine advertisements. It’s allegedly been
retained by well-known brands, including BMW and Macy’s, and by companies
headquartered throughout the United States, and promotes itself mainly through
the websites http://www.uber-inc.com and http://www.uber.nyc. 

Meanwhile, Uber OOH [Out of Home], whose corporate
relationship to Uber Technologies was a bit unclear, describes itself as “The
Official Uber Advertising Network.”

Starting in 2012, Uber Inc. received an increasing number of
calls and communications intended for Uber Technologies. Confusion allegedly
grew more frequent with time, becoming “constant” in the last three years.

[O]ne of plaintiff’s customers sent
plaintiff a large payment that was intended for Uber Technologies, while
separately sending a payment to Uber Technologies that was intended for
plaintiff. A vendor mistakenly granted Uber Technologies access to plaintiff’s
account, resulting in plaintiff’s temporary inability to access its own account
and giving Uber Technologies access to plaintiff’s business information.
Plaintiff alleges that it has stopped attending trade shows and sometimes does
not answer calls due to overwhelming call volume intended for Uber

This really does seem like a good candidate for “junior
should pay senior to change its name,” and in 2015 Uber Technologies offered
Uber Inc. $80,000 to do so. Uber Inc. counteroffered with $800,000, and
rejected Uber Technologies’ $120,000 response, believing that they were still
in different fields. But in 2019, Uber Technology allegedly began preparatory
steps to enter the advertising business.

In 2020, a site published under the “Uber OOH” name allegedly
stated that the company would assist clients in creating advertising.

Unsurprisingly, the complaint plausibly alleged reverse
confusion. Even with differences between the parties’ core services, the
complaint plausibly alleged Uber Technology’s advertising-related expansion
plans put it in competitive proximity to Uber Inc’s graphic design and
marketing services. Though the complaint failed to identify instances of actual
confusion among “prospective customers who were seeking out plaintiff’s
advertising and design services,” that wasn’t required, and confusion among
others offered “some factual support for the plausibility of plaintiff’s

Forward confusion was also plausible; on a motion to
dismiss, the court did not agree that no consumer could plausibly confuse
plaintiff’s graphic design-intensive business with the mobile, digitally oriented,
“out of home” advertisements offered by defendants. The complaint quoted Uber
Technologies statements expressing “broad ambitions for their advertising
services, and not just advertisements displayed on vehicles.”

Nor did the complaint plead itself out of court on laches.
The period in NY is six years, and the complaint didn’t establish that Uber
Inc. knew it had an actionable claim more than six years before suit was filed.
“[K]nowledge of Uber Technologies’s use of an ‘Uber; mark and the receipt of
misdirected calls does not equate to knowledge that plaintiff had an actionable
claim under the Lanham Act.” Plus, Uber Technology’s offer in 2015 might
constitute its awareness that it was “entering contested ground,” weighing
against laches.  

State-law dilution claims, which don’t require fame, also

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