02 May Don’t be a Little Uber

On September 9, 2015, Uber Promotions, Inc. (Little Uber) sued Uber Technologies, Inc. (Big Uber) for trademark infringement and various other causes of action.  The lawsuit relates Big Uber’s use of the Uber mark within the state of Florida.  Little Uber is based in Gainesville, Florida, and offers several services including such as passenger transportation.  While they don’t have a registered trademark with the United States Patent and Trademark Office (USPTO), Little Uber maintains that it has common law trademark rights through its extensive use of the mark in Florida since 2006.  Big Uber, as we are all familiar with, offers transportation services world-wide via a software app.  Big Uber first registered its trademark in 2010.

Little Uber’s argument is that Big Uber’s mark is confusingly similar to theirs and that prospective consumers may be deceived, mistaken or confused.  Little Uber alleges that consumer confusion has and will continue to harm their presence and service in Florida.

On February 16, 2016, a federal court granted a small victory to Little Uber.  They temporarily prohibited Big Uber from using certain Uber marks in connection with its service in Alachua County, Florida.  While this is a win for the “little” guy, Little Uber faces an uphill and very expensive battle, due in large part to its failure to register its trademark with the USPTO.

Do I have to register my trademark?

There is no requirement that you federally register your trademark.  By not doing so, however, you are limiting the protection of your mark.

Trademarks registered with the USPTO receive constructive use of and exclusive rights to the mark throughout the nation.  Alternatively, a common law mark, like Little Uber has, is generally recognized in the territory in which it operates.  This may potentially include an area of reasonable future expansion.  Had Little Uber registered its mark with the USPTO prior to Big Uber’s registration in 2010, Big Uber would have been on notice that the mark already exists.  Additionally, Little Uber would have a much stronger trademark infringement claim (or no reason to file a lawsuit in the first place because Big Uber would have chosen another name).  Trademark registration will afford you the ability to prevent a competitor from using the same or similar name in a more expedient and inexpensive way.

Trademarks are valuable business assets for any business because the mark can be sold or licensed.  While you may not have any plans to sell your mark, it may put you in a better bargaining position when a business such as Big Uber begins to use your mark and invades your territory.  Also important to note is that the value of your mark will grow as your business grows, so registering your trademark has a huge financial incentive.

Other considerations in favor of registering your trademark include the presumed validity of the mark and the ability to recover certain damages for infringement in a lawsuit, such as attorney fees.

How do I protect my trademark?

No matter how small or location-specific your business is, business owners and entrepreneurs must protect their brands.  While Little Uber is a small business operating in a general location, it may have saved itself some heartache and money by registering its trademark with the USPTO.  Registering a mark is a relatively painless procedure and worth the cost.

For more information as to how to register your trademark and the reasons for doing so, please contact an intellectual property attorney.  They can assist you throughout the process to ensure that you and your trademark are adequately protected and you don’t become a Little Uber.