On Monday, Uber Technologies Inc. (Uber) filed a notice of opposition before the Trademark Trial and Appeal Board against Uber Herbs LLC’s application for the Uber Herbs trademark citing likelihood of consumer confusion and dilution.
According to the opposition, ride-hailing software platform Uber is “the owner of trademark registrations for UBER and a number of UBER-based marks, as well as common law rights in its various UBER and UBER-based marks and names.” Reportedly, these Uber and Uber-formative marks include Uber, UberX, Uber Eats, UberPool, Uber Presents, and Uber Air, among others.
As stated in the opposition, the applicant filed an application to register the Uber Herbs mark for “transport and delivery of goods,” which according to Uber, are “services that are identical to the services claimed in Uber’s registrations for UBER and UBER-based marks.”
Uber noted that this is the “second bad-faith application” that the applicant has filed to register. Previously, after Uber notified the applicant, it withdrew its application, however, the applicant filed another one. Consequently, Uber asserted that these applications were done in bad faith. Uber also asserted that it believes that the applicant “does not have a bona fide intent to use UBER HERBS in commerce in connection with the goods listed in the Application.”
Uber asserted that through its marketing and commercial activity consumers associate the Uber marks with Uber and its goods and services. Uber has also allegedly garnered goodwill from its name and mark and it alleged the marks are famous. Uber claimed that the applicant’s application of the Uber Herbs mark “creates a likelihood of confusion with, falsely suggests a connection with, and dilutes Uber’s trade name, identity, and distinctive and famous UBER and UBER-based marks.”
Specifically, Uber proffered that the Uber Herbs mark is “confusingly similar” to the Uber name and marks. Moreover, Uber noted that the Uber Herbs mark “completely encompasses Uber’s UBER mark and name.” Thus, Uber averred that this purported similarity is likely to cause consumer confusion, mistake, or deception regarding the source, origin, affiliation, or sponsorship of the goods and services. Additionally, Uber proffered that the Uber Herbs mark is likely to dilute the distinctive quality of Uber’s name and marks. As a result, Uber alleged that it will be damaged if the applicant’s application for Uber Herbs is registered.
Uber seeks for its opposition to be sustained and for the application to be rejected.
Uber is represented by Fenwick & West LLP.
