On Wednesday, rideshare giant Uber filed an opposition before the Trademark Trial and Appeal Board against individual applicant Robert Kocher, who applied to use the UNDER UBER mark in Class 9 for “biometric identification apparatus”; Uber averred that it would be harmed by the registration of the mark.
Uber asserted that it is the owner of several registered marks related to its name, such as UBERX, UBERPOOL, UBER AI LABS, UBER EATS, and UBER WORKS, and that it has common law rights to these marks because of its “widespread and continuous use” of these marks. Furthermore, Uber claimed that its rights “predate the Application’s filing date.” Uber has used the UBER mark and trade name in connection with its goods since at least 2010. Moreover, Uber added that its “corporate identity and house brand are UBER, and Uber is commercially known as Uber or Uber Technologies, Inc.,” which also allegedly establish its common law rights to its UBER and Uber-related marks. Uber added that it promotes its goods and services on its website, on social media, and online.
According to Uber, there is likely to be consumer confusion if the applicant’s mark is registered. Specifically, “[c]onsumers are likely to be confused as to source by Applicant’s registration and use of such a similar mark for related goods. The registration of UNDER UBER would falsely suggest a connection between Applicant’s and Uber’s name and identity.” Uber stated that consumers are likely to assume that there is a connection between UNDER UBER and UBER. Furthermore, the applicant’s “confusing use of UNDER UBER uniquely and unmistakably points to Uber’s famous name and identity” in part because the applicant’s mark “completely encompasses Uber’s UBER mark and name.” Uber claimed that the similarity between the applicant and Uber’s marks “and the parties’ related goods and services,” the applicant is likely to cause “consumer confusion, mistake or deception” between the entities. As a result, Uber claimed that the UNDER UBER mark is likely to cause consumer confusion.
Moreover, Uber also proffered that UNDER UBER “would dilute the distinctive quality of Uber’s famous UBER mark and name.” As a result, Uber claimed that it, its partners, and the public would be damaged by the registration of the applicant’s mark. Uber stated that through its marketing and commercial activity, the public associates the UBER marks with Uber’s goods and services and its marks are famous. As a result, Uber claimed that its marks are “valuable assets of Uber and symbols of its goodwill.” Consequently, however, the UNDER UBER mark will purportedly dilute the UBER marks of their distinctiveness and thus harm Uber.
Uber has sought for the opposition to be sustained and for the registration to be rejected. Uber is represented by Fenwick & West LLP.
