Uber, the extremely popular company behind the app which allows users to order a driver whenever they want, has been in the news quite a bit recently for various reasons ranging from the status of its drivers as employees to the regulations it needs to meet in certain areas. At the end of September, it was dealing with yet another headache; a trademark infringement lawsuit. Uber Promotions, Inc. filed a lawsuit against Uber Technologies for trademark infringement, unfair competition, false designation of origin, and for the cancellation of Uber’s trademark.
According to the complaint, Uber Promotions, who I’ll be referring to as the Plaintiff here on out, is a Florida company established in 2006 that has provided passenger “transportation services, in virtually every city in Florida, for transporting passengers within Florida, and from Florida to other states.” The Plaintiff claims to have been using its trademarks UBER, ÜBER, UBER PROMOTIONS, and ÜBER PROMOTIONS (“Plaintiff’s Marks”) as early as 2006 to identify its company and services, with an emphasis on the use in Florida. You probably know where this is going and thinking…Uber is screwed!! The Uber most of us know has definitely not been around since 2006 and the Plaintiff has the same name and a business that is somewhat related to what Uber does.
So what’s the catch?
The Plaintiff, Uber Promotions, never filed for federal protection of its trademarks and is relying on common law rights. Had the Plaintiff filed for a trademark, Uber would have likely been advised to pick a different name.
What are common law trademarks?
Regardless of whether or not you file a trademark application with the United States Patent and Trademark Office, you still have trademark rights as soon as you start using a mark to identify your goods or services. Common law trademarks still provide you some legal protection, but you get far more benefits from a federal registration. A good example of the benefits of a federally registered mark is the story behind the Burger King trademark. Many do not realize that Miami-based corporate giant Burger King was actually not the first Burger King, and still is not allowed in a certain area of Illinois.
Will Uber Be Blocked In Florida?
By bringing suit and emphasizing its presence in Florida, the Plaintiff is attempting to carve out a region where Uber is not allowed. On paper, it seems like it has a pretty good argument. Of course there is also the chance that the Plaintiff would reach some sort of settlement agreement with Uber which would be worthwhile. Regardless of the outcome, it highlights the importance of federal trademark registration, as well as performing an adequate search prior to filing your trademark.
