U.S. News | Über Sues Namesake for Trademark Infringement

Über, a New York design firm founded in January 1999 by Herta Kriegner has filed a lawsuit in the U.S. District Court for the Southern District of New York against a ride-sharing company, Uber Technologies for trademark infringement.

Über alleges that Uber Technologies created a new business division, Uber Design with the mandate of providing digital tools, platforms, and guidelines to enable designers to use Uber’s branding.

The plaintiff alleges that the new business division competes directly with its business and would cause a lingering confusion and damage to its reputation.

The plaintiff reportedly said that the ride-sharing apps trademark registrations cover services in classes 35 and 42 which are in direct competition with Über’s own business services and trademark application.

Über received an office action response in September 2019 from the U.S. Patent and Trademark Office (USPTO) of the likelihood of confusion due to similarity to Uber Technologies’ own trademark applications and registrations.

“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,” Über reportedly said.

The plaintiff alleges that the infringement has caused lots of damages, confusion and unfair competition.

Über is seeking an injunction, damages and Uber Technologies to pay for and implement a campaign of corrective advertising.

The case is pending.

Uber, Inc. v. Uber Technologies, Inc.