|What, No Phone Number?|
Tuesday, 2 December 2014
Uber Technology is a ride-sharing company which allows users to book their urban trips using a proprietary app matching customers with available drivers. The drivers are not professionals but instead are private individuals supplementing their income by offering rides in their personal vehicles.
The service is available in many cities around the world, including New York City, where the Uber Inc. company, a graphic design company founded and owned by two Austrian sisters, Elena and Herta Kriegner, is located.
The Uber Inc. company may not be as well known as the Uber Technology company, but it has a desirable feature, at least from a consumer point of view: a phone number.
The Uber Technology company, however, does not have such a modern amenity and the only way for customers to contact the share-riding company is through its website. That has led graphic design company Uber to receive many phone calls over the last few years which were intended for Uber the drive-sharing company, according to this New York Post article. Apparently Yelp had even listed at one point the graphic design company’s phone number on its page dedicated to the ride-sharing company.
Many of the calls mistakenly received by Uber Inc. were complaints, and its owners have even been asked to appear before a New York Workers Compensation Board judge because a driver had sued Uber Inc. by mistake, seeking compensation for a job-related injury incurred while driving for the Uber Technology company. So there is definitively a bit of consumer confusion, which is something trade mark laws are designed to avoid.
I found many UBER marks while searching the USPTO database. Indeed, as “UBER” means “superior to” in German, it is a desirable virtue to suggest for one’s own products or services and thus a popular trade mark choice. Marks which are similar may nevertheless be registered, as long as the USPTO finds there are no risks of consumer’s confusion. UBER is a popular trade mark choice, and many UBER marks are registered, for goods and services as diverse as building construction, financial services, accessory products for audio-video devices and mobile devices, or blades for electric razors.
The numerous phone calls received by Uber Inc., could, however, be used as evidence to bar registration of the UBER mark by Uber technology if the company had not already registered the mark. However, the ride-sharing company already holds U.S. trade mark registration 3977893 for UBER, which is registered in four classes: class 9, for computer software for coordinating transportation services, class 38 for telecommunications services, class 39 for providing a website featuring information regarding transportation services and bookings for transportation services, and class 42 for providing temporary use of online non-downloadable software for providing transportation services, bookings for transportation services and dispatching motorized vehicles to customers. Uber technology also owns the trade mark UBERCAB, registration number 3842416, which is registered in the same four classes than the UBER trade mark.
In our case, consumers have already purchased the junior user’s services, but are mistakenly directing their ire against the lesser known senior user, even though the junior user is by far the most known of the two companies. So it could be argued that this is a case of reverse confusion. The Sixth Circuit defined reverse confusion in its Ameritech case as occurring when “the junior user saturates the market with a similar trademark and overwhelms the senior user. The public comes to assume the senior user's products are really the junior user's or that the former has become somehow connected to the latter. The result is that the senior user loses the value of the trademark — its product identity, corporate identity, control over its goodwill and reputation, and ability to move into new markets.”
Reverse-confusion protects less consumers than the owner of a trade mark which value may diminish or be entirely lost because of the junior user. In the Second Circuit, where Uber Inc. is located, courts apply the eight-factor Polaroid test to determine whether there is a likelihood of reverse confusion, the same test they use to determine the existence of consumer confusion.
Uber Technology has, however, a less than stellar reputation. One of its senior executives recently suggested that the company could mine its collected data to target a journalist who had criticized the company. These comments led U.S. Senator Al Franken to send a letter last week to UBER co-founder Travis Kalanick, asking for clarifications about the company’s data sharing policies. Could UBER Inc. also claim trade mark dilution?
Dilution is grounds for cancelling a trade mark registration, but the mark claiming dilution must be famous. The UBER mark for graphic design is not famous, and so this would not be possible. Interestingly, according to the New York Post article, Uber ,the ride-sharing company, first contacted UBER the graphic design company, after its two owners finally started answering phone calls directed at Uber in innane ways such as, sorry no cars today, it rains, and we do not want our cars to get wet. It remains to be seen if this situation will be resolved, by phone calls (that is, if Uber Technology has a phone line), or by filing a claim.