Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 1 of 21
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`
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`Curtis E. Smolar, Esq. SBN 194700
`Core X Legal P.A.
`450 Townsend Street, Suite 207
`San Francisco, CA 94107
`(p) (415) 364-8435
`Curtis@corexlegal.com
`Representing Plaintiffs
`
`Collin A. Mixon, Esq
`STANTON IP LAW FIRM, P.A.
`201 E. Kennedy Blvd., Suite 1900
`Tampa, FL 33602
`PH: 813.421.3883
`Pro Hac Vice Pending
`Representing Plaintiffs
`
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`San Francisco Division
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`Uberre, Inc., a Delaware Corporation
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`Plaintiff(s),
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`vs.
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`Uber Technologies, Inc., a Delaware
`Corporation.
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`Defendant(s).
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`Case Number:
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`Complaint for TRADEMARK
`INFRINGEMENT
`(15 U.S.C. §§1114, 1116, and 1117);
`FEDERAL COMMON LAW, UNFAIR
`COMPETITION AND FALSE
`DESIGNATION OF ORIGIN (15 U.S.C.
`§1125(a))
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`And Demand for Jury Trial
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`NATURE OF THE ACTION
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`1.
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`This is a civil action for trademark infringement and unfair competition arising
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`under the federal Lanham Act, 15 U.S.C. §§ 1114, 1125(a), and 1125(d) resulting in damages
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`over $250,000,000,000.00. UBER expanded significant time and money in creating an extensive
`1
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`COMPLAINT FOR TRADEMARK INFRINGEMENT (15 U.S.C. §§1114, 1116, and 1117);
`FEDERAL COMMON LAW, UNFAIR COMPETITION AND FALSE DESIGNATION OF
`ORIGIN (15 U.S.C. §1125(a))
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`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 2 of 21
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`computer software program that allows consumers to list their real property and services with an
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`emphasis on the real estate and travel accommodation industries. UBER owns valuable rights
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`and goodwill in its ÜBER trademark, which it acquired in 2017 including all rights and goodwill
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`of the previous owner, that has been used continuously in the business of real estate and rental
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`accommodations since as early as 2008 (Registration No. 5,052,252). In violation of the Lanham
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`Act, Defendant is releasing a competing application and trademark for the same services as
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`UBER. Defendant seeks to capitalize on the goodwill of UBER’s Mark, thereby profiting off
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`confusion among consumers.
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`THE PARTIES, JURISDICTION, AND VENUE
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`2.
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`Plaintiff, UberRE, Inc., is a Delaware Corporation registered in 2017 with its
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`principal place of business in Menlo Park, California.
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`3.
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`Defendant, Uber Technologies, Inc., is a Delaware Corporation registered in 2010
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`with its principal place of business in San Francisco, California.
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`4.
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`Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b)(2)
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`because a substantial part of the events giving rise to the claims asserted in this Complaint
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`occurred in this judicial district and/or a substantial part of the property that is the subject of the
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`action is situated in this district.
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`5.
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`The trademark infringement claim asserted in this action arises under the
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`provisions of the Lanham Act, 15 U.S.C. § 1501 et seq. This Court has original jurisdiction over
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`these claims pursuant to 15 U.S.C. § 1121(a) and 28 U.S.C. § 1338(a). This Court further has
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`jurisdiction of the breach of oral contract claim pursuant to 28 U.S.C. § 1367.
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`6.
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`All conditions precedent to the commencement of this action, if any, have been
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`performed, satisfied, waived, excused or have occurred.
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`COMPLAINT FOR TRADEMARK INFRINGEMENT (15 U.S.C. §§1114, 1116, and 1117);
`FEDERAL COMMON LAW, UNFAIR COMPETITION AND FALSE DESIGNATION OF
`ORIGIN (15 U.S.C. §1125(a))
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`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 3 of 21
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`7.
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`8.
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`FACTUAL BACKGROUND
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`The ÜBER mark was originally registered on October 4, 2016.
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`UBER holds Federal Trademark Reg. No. 5,052,252 The Registration is attached
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`hereto as Exhibit 1.
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`9.
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`On or about November 27, 2017, the president of UBER, Mr. Brent Ritz, acquired
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`the intellectual property rights and goodwill in the ÜBER mark from James C. Whatley on or
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`about November 27, 2017. A copy of the Registration and valid assignment is attached hereto as
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`Exhibit 2.
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`10.
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`On or about November 12, 2019, UBER commenced with the coding of the
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`UBER website and was completed on or about May 8, 2020. The website domain has been
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`owned and registered since November 26, 2009.
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`11.
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`UBER is an innovative temporary travel accommodation and real estate company
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`that allows its customers to list and market real property to other individuals for temporary travel
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`accommodations, experience services as well ordering an on-demand real estate broker. UBER
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`also allows customers to list and market personal services throughout the world. UBER has
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`invested, and continues to invest, significant time, money, and resources to grow its business.
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`12.
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`During this time, UBER reached out to the Defendant multiple times to discuss
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`the co-existence, and potential partnership, between the two companies, including in-person
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`conversations.
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`13.
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`The Defendant has known of UBER and their intellectual property rights since as
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`early as November 2019.
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`3
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`COMPLAINT FOR TRADEMARK INFRINGEMENT (15 U.S.C. §§1114, 1116, and 1117);
`FEDERAL COMMON LAW, UNFAIR COMPETITION AND FALSE DESIGNATION OF
`ORIGIN (15 U.S.C. §1125(a))
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`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 4 of 21
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`14.
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`Over the last three (3) years, UBER has invested substantial amounts of money
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`into the creation, development, operation, and marketing of the ÜBER mark throughout the
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`world.
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`15.
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`On January 3, 2022, the Defendant filed a trademark application for UBER
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`TRAVEL mark.
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`16.
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`Upon information and belief, the Defendant will release competing software that
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`will offer competing travel accommodation and real estate services under the confusingly similar
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`UBER TRAVEL mark.
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`17.
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`By virtue of the foregoing, Defendant is infringing upon UBER’s Mark and
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`unfairly competing with UBER. Defendant’s use of the UBER TRAVEL mark in connection
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`with its business is likely to cause confusion, mistake, or deception among the trade and the
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`public.
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`18.
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`Additionally, UBER owns the developer accounts for the Google and Apple
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`application stores and the UBER application for 88% of the world’s devices.
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`19.
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`Defendant is knowingly, willfully, intentionally, and maliciously using their
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`confusingly similar imitations of the UBER’s trademark.
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`20.
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`Defendant’s intentional infringement of UBER’s Mark and unfair competition is
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`causing irreparable injury to UBER, and, unless the injunction sought in this Complaint is
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`granted, will continue to cause irreparable injury to UBER due to the confusion, mistake, and
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`deception that will be and has been generated among the trade and the public.
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`21.
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` UBER has suffered and will continue to suffer damage, the exact amount of
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`damage being unknown at this time. The damage to UBER is, and will continue to be,
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`irreparable because, among other reasons, of the continuing nature of the trademark infringement
`4
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`COMPLAINT FOR TRADEMARK INFRINGEMENT (15 U.S.C. §§1114, 1116, and 1117);
`FEDERAL COMMON LAW, UNFAIR COMPETITION AND FALSE DESIGNATION OF
`ORIGIN (15 U.S.C. §1125(a))
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`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 5 of 21
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`and unfair competition which would necessitate a multiplicity of suits for damages if the
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`continuance of the wrongs is not enjoined.
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`22.
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`All conditions precedent to the institution and maintenance of this action have
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`occurred or been performed by UBER.
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`23.
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`UBER has engaged the law firm of Stanton IP Law Firm, P.A. to represent it and
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`are obligated to pay its attorneys a reasonable fee for their services in this action.
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`COUNT I – TRADEMARK INFRINGEMENT
`(15 U.S.C. §§1114, 1116, and 1117)
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`UBER realleges Paragraphs 1- 23 as if fully set forth herein.
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`This is an action for an injunction arising under 15 U.S.C. §§ 1114 and 1116, and
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`24.
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`25.
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`for damages arising under 15 U.S.C. §§ 1114 and 1117.
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`26.
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`Defendant has, by virtue of its above-described acts, infringed upon UBER’s
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`rights in its federal trademark registrations in violation of 15 U.S.C. § 1114.
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`27.
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`Defendant’s above-described acts of infringement have been committed, and are
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`continuing to be committed, willfully and with the knowledge that Defendant’s Mark is intended
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`to be used to cause confusion, or to cause mistake, or to deceive.
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`28.
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`Defendant’s above-described acts of infringement have caused irreparable injury
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`to UBER and will continue to cause irreparable injury to UBER if Defendant is not restrained by
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`this Court from further violating UBER’s trademark rights due to the confusion, mistake, or
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`deception that will likely be generated among the trade and the public as a consequence of the
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`above-described acts of infringement. UBER has no adequate remedy at law.
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`29.
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`As a result of the above-described intentional and deliberate infringement of
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`UBER’s trademark rights by Defendant, UBER is entitled to an injunction and an award of
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`COMPLAINT FOR TRADEMARK INFRINGEMENT (15 U.S.C. §§1114, 1116, and 1117);
`FEDERAL COMMON LAW, UNFAIR COMPETITION AND FALSE DESIGNATION OF
`ORIGIN (15 U.S.C. §1125(a))
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`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 6 of 21
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`Defendant’s profits, up to three (3) times any damages sustained by UBER, costs of this action,
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`and attorneys’ fees, all as set forth in 15 U.S.C. §§ 1116 and 1117, subject to the discretion of
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`this Court.
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`COUNT II – FEDERAL COMMON LAW, UNFAIR COMPETITION AND FALSE
`DESIGNATION OF ORIGIN
`(15 U.S.C. §1125(a))
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`30.
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`31.
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`32.
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`UBER realleges Paragraphs 1- 25 as if fully set forth herein.
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`This is an action for an injunction arising under 15 U.S.C. §1125(a).
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`Defendant has, by virtue of its above-described acts, infringed upon UBER rights
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`in its federal trademark registrations in violation of 15 U.S.C. § 1125(a).
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`33.
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`UBER has offered its services under the ÜBER Mark in commerce throughout the
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`world since November 14, 2006. It has used the ÜBER Mark continuously since that time and
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`currently offer’s its services on its website: uberrealestate.com.
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`34.
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`UBER has invested substantial time, effort, and financial resources promoting its
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`Mark in connection with the marketing and sale of its goods in interstate commerce. The ÜBER
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`Mark has become, through widespread and favorable public acceptance and recognition, an asset
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`of substantial value as a symbol of UBER, its quality services, and its goodwill. The consuming
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`public recognizes the ÜBER Mark and associates it with UBER.
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`35.
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`Notwithstanding UBER’s established rights in the ÜBER Mark, Defendant
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`adopted and will use a confusingly similar trademark and logo in interstate commerce in
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`connection with the offering of substantially similar services as UBER.
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`36.
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`Defendant’s above-described acts of infringement have caused irreparable injury
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`to UBER and will continue to cause irreparable injury to UBER if Defendant is not restrained by
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`this Court from further violating UBER’s trademark rights due to the confusion, mistake, or
`6
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`COMPLAINT FOR TRADEMARK INFRINGEMENT (15 U.S.C. §§1114, 1116, and 1117);
`FEDERAL COMMON LAW, UNFAIR COMPETITION AND FALSE DESIGNATION OF
`ORIGIN (15 U.S.C. §1125(a))
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`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 7 of 21
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`deception that will likely be generated among the trade and the public as a consequence of the
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`above-described acts of infringement. UBER has no adequate remedy at law.
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`37.
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`As a result of the above-described intentional and deliberate infringement of
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`UBER’s trademark rights by Defendant, UBER is entitled to an injunction and an award of
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`Defendant’s profits, up to three (3) times any damages sustained by UBER, costs of this action,
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`and attorneys’ fees, all as set forth in 15 U.S.C. §1125(a), subject to the discretion of this Court.
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`PRAYER FOR RELIEF
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`WHEREFORE, UBER prays this Honorable Court enter such preliminary and final orders and
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`judgements as are necessary to provide Plaintiff with the following requested relief:
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`a) an injunction preliminarily during the pendency of this action and thereafter
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`permanently enjoining and restraining Defendant, their officers, agents, servants,
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`employees, and attorneys, and all other persons in active concert or participation with
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`them, from infringing UBER’s trademark rights and unfairly competing with UBER
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`in any manner whatsoever in connection with the operation of its business, and from
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`continuing to operate its business in any manner tending to confuse or deceive the
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`public into believing that its business is in any way connected with, sponsored by, or
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`affiliated with UBER;
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`b) an order directing Defendant to file with the Court and serve upon UBER a report in
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`writing under oath setting forth in detail the manner and form in which Defendant has
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`complied with the injunction entered by the Court within thirty (30) days after the
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`entry of the injunction in compliance with 15 U.S.C. § 1116(a);
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`7
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`COMPLAINT FOR TRADEMARK INFRINGEMENT (15 U.S.C. §§1114, 1116, and 1117);
`FEDERAL COMMON LAW, UNFAIR COMPETITION AND FALSE DESIGNATION OF
`ORIGIN (15 U.S.C. §1125(a))
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`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 8 of 21
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`c) an accounting of Defendant’s wrongfully derived profits and an order that the same
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`be paid over to UBER;
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`d) up to three (3) times any damages sustained by UBER;
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`e) That UBER be awarded compensation for corrective advertising for the damage to
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`UBER’s goodwill;
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`f) That, based on Defendants’ willful and deliberate infringement of Plaintiff’s Mark,
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`and to deter such conduct in the future, UBER be awarded punitive damages;
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`g) restitution to UBER of any and all money Defendant has acquired by means of unfair
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`competition;
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`h) interest on such profits and damages at the highest rate allowed by law;
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`i) That Defendant be required to pay UBER’s the cost of this action and Plaintiff’s
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`reasonable attorneys’ fees, pursuant to 15 U.S.C. § 1117;
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`j) such other relief as the Court may deem just and appropriate.
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`DEMAND FOR JURY TRIAL
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`UBER, by and through its undersigned attorneys, request a trial by jury on all issues so
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`triable.
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`//
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`8
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`COMPLAINT FOR TRADEMARK INFRINGEMENT (15 U.S.C. §§1114, 1116, and 1117);
`FEDERAL COMMON LAW, UNFAIR COMPETITION AND FALSE DESIGNATION OF
`ORIGIN (15 U.S.C. §1125(a))
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`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 9 of 21
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`RESERVATION OF RIGHTS
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`UBER reserves the right, upon further investigation and discovery, to assert such claims
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`against Defendant and other responsible parties as may be just and appropriate under the
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`circumstances.
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`Dated:
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`Respectfully submitted
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`/s/ Curtis E. Smolar
`Curtis E. Smolar
`Core X Legal P.A.
`450 Townsend Street, Suite 207
`San Francisco, CA 94107
`(p) (415) 364-8435
`Curtis@corexlegal.com
`Representing Plaintiffs
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`/s/ Thomas Stanton
`Thomas H. Stanton, Esq.
`tstanton@stantoniplaw.com
`Florida Bar No. 127444
`STANTON IP LAW FIRM, P.A.
`201 E. Kennedy Blvd., Suite 1900
`Tampa, FL 33602
`PH: 813.421.3883
`Attorneys for Plaintiff
`Pro Hac Vice Pending
`9
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`COMPLAINT FOR TRADEMARK INFRINGEMENT (15 U.S.C. §§1114, 1116, and 1117);
`FEDERAL COMMON LAW, UNFAIR COMPETITION AND FALSE DESIGNATION OF
`ORIGIN (15 U.S.C. §1125(a))
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`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 10 of 21
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`Exhibit 1-- Federal Trademark Reg. No. 5,052,252
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`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 11 of 21
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`Reg. No. 5,052,252
`Registered Oct. 04, 2016
`Int. Cl.: 36
`Service Mark
`Principal Register
`
`James C. Whatley (UNITED STATES INDIVIDUAL)
`303 Hunter Place
`Fort Walton Beach, FL 32548
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`CLASS 36: Real estate agencies; Real estate brokerage
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`FIRST USE 1-31-2008; IN COMMERCE 1-31-2008
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`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
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`The English translation of "ÜBER" in the mark is "denoting an outstanding or supreme
`example of a particular kind of person or thing".
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`SER. NO. 86-500,939, FILED 01-12-2015
`WILLIAM PATR SHANAHAN, EXAMINING ATTORNEY
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`

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`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 12 of 21
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`Exhibit 2--Registration and Valid assignment
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`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 13 of 21
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`Electronic Version v1.1
`Stylesheet Version v1.2
`
`ETAS ID: TM466234
`
`SUBMISSION TYPE:
`
`NEW ASSIGNMENT
`
`NATURE OF CONVEYANCE:
`
`ASSIGNMENT OF THE ENTIRE INTEREST AND THE GOODWILL
`
`Execution Date
`PO 11/27/2017
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`Entity Type
`INDIVIDUAL: UNITED STATES
`
`CONVEYING PARTY DATA
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`RECEIVING PARTY DATA
`
`Street Address:
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`City:
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`State/Country:
`
`Postal Code:
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`Entity Type:
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`Corporation: DELAWARE
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`PROPERTY NUMBERS Total: 1
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`Property Type|Number|Word Mark
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`Registration Number:|5052252 UBER
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`CORRESPONDENCE DATA
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`5052252
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`OP$40.00
`
`Fax Number:
`77539968787
`Correspondencewill be sent to the e-mail addressfirst; if that is unsuccessful, it will be sent
`using a fax number,if provided; if that is unsuccessful, it will be sent via US Mail.
`Phone:
`7758522600
`mark@goodmanlawnevada.com
`Mark A. Goodman, Esq.
`401 Ryland Street
`STE 200
`
`Email:
`Correspondent Name:
`Address Line 1:
`
`Address Line 2:
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`Address Line 4:
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`Reno, NEVADA 89502
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`ATTORNEY DOCKET NUMBER:
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`907-Ritz 4318-002
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`NAME OF SUBMITTER:
`
`Mark A. Goodman, Esq.
`
`SIGNATURE:
`
`DATE SIGNED:
`
`/Mark Goodman/
`
`03/19/2018
`
`Total Attachments: 6
`source=ScanUberTradeMarkAssignment#page1 .tif
`source=ScanUberTradeMarkAssignment#pagec. tif
`source=ScanUberTradeMarkAssignment#pages3.tif
`source=ScanUberTradeMarkAssignment#page4.tif
`
`900443346
`
`TRADEMARK
`REEL: 006294 FRAME: 0753
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`

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`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 14 of 21
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`REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
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`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
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`Requirements in the First Ten  Years*
`What and When to File:
`
`First Filing Deadline:  You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
`years after the registration date.
` See 15 U.S.C. §§1058, 1141k.
` If
`the declaration is accepted,
`the
`registration will continue in force for the remainder of the ten-year period, calculated from the registration
`date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
`
`Second Filing Deadline:  You must file a Declaration of Use (or Excusable Nonuse) and an Application
`for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
` and  an  Application for Renewal
`You must file a Declaration of Use (or Excusable Nonuse)
`between every 9th and 10th-year period, calculated from the registration date.*
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above with
`the payment of an additional fee.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS:  The holder of an international registration with an
`extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
`(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
`The time periods for filing are based on the U.S. registration date (not the international registration date).  The
`deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
`nationally issued registrations.  See 15 U.S.C. §§1058, 1141k.  However, owners of international registrations
`do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
`international registration at the International Bureau of the  World Intellectual Property Organization, under
`Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
`date of the international registration.  See 15 U.S.C. §1141j.  For more information and renewal forms for the
`international registration, see http://www.wipo.int/madrid/en/.
`
`NOTE:  Fees and requirements for maintaining registrations are subject to change.  Please check the
`USPTO website for further information.
` With the exception of renewal applications for registered
`extensions of protection, you can file the registration maintenance documents referenced above online at h
`ttp://www.uspto.gov.
`
`NOTE:  A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
`owners/holders who authorize e-mail communication and maintain a current e-mail address with the
`USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
`Electronic  Application System (TEAS) Correspondence  Address and Change of Owner  Address Forms
`available at http://www.uspto.gov.
`
`Page: 2 of 2 / RN # 5052252
`
`

`

`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 15 of 21
`
`TRADEMARK
`REEL: 006294 FRAME: 0754
`
`

`

`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 16 of 21
`Case 3:22-cv-02806-JCS Document1 Filed 05/12/22 Page 16 of 21
`
`Trademark Assignment
`
`This Trademark Assignment (hereinafter referred to as the "Assignment"is made and
`entered into on November 17, 2017(the "Effective Date”) by and between the following parties:
`
`James C. Whatley
`303 Hunter Place
`Fort Walton Beach, Florida 32548
`
`(the "Agsignar")
`
`AND
`
`;
`UberRE, Ine.
`aDelaware
`€ opucs cane Mécet
`
`10) Jeffersan Drive
`Menlo Park, California 94075
`
`(the "Assignee”}
`
`WHEREAS, the Assignor is the sole and rightful owner of certain trademarks and/or
`service marks and the corresponding registrations and/or applications
`for
`registration
`{collectively referred to as the Trademarks) set forth in Exhibit A attached hereto; and
`
`WHEREAS, the Assignee desires to purchase or acquire the Assignor’s right, title, and
`interest in and to the Trademarks; and
`
`WHEREAS, the Assignor and Assignee are both duly authorized and capable of entering
`into this Assignment.
`
`NOW, THEREPORE, for valuable consideration, the receipt of which is acknowledged,
`the parties hereto agree as follows:
`
`1. ASSIGNMENT.
`
`The Assignor dors hereby sell, assign, transfer and set over to Assignee all of its right, title, and
`interest in and to the Trademarks in the United States and all jurisdictions outside the United
`States including, without limitation, the ongoing and existing portion of the Assignor's business
`assaciated with the Trademarks, together with the goodwill of the business connected with and
`symbolized by the Trademarks (including, without Umitation, the right to sus and recover for any
`past or continuing infringements or contract breaches related to the Trademarks, the right to
`renew any registrations includedin the Trademarks, the right to apply for irademark registrations
`within or outside the United States based In whele or in part upon the Trademarks, and any
`priority right thet may arise from the Trademarks}, the same to be held and enjoyed by Assignee
`as filly and entirely as said interest could have been held and enjoyed by Assignor had this sale,
`assignment, transfer and conveyance not been made.
`
`Page i of &
`
`TRADEMARK
`REEL: 006294 FRAME: 0755
`
`

`

`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 17 of 21
`Case 3:22-cv-02806-JCS Document1 Filed 05/12/22 Page 17 of 21
`
`The Assignor authorizes the United States Patent and Trademark Office and any other applicable
`jurisdictions outside the United States to record the transfer of the registrations and/or
`registration applications set forth in Exhibit A to Assignee as recipient of Assignors entire right,
`title and interest therein.
`
`Assignor further agrees to upon the request and at the expense of Assignes: (a) cooperate with
`Assignee in the protection of the trademark rights and prosecution and protection of foreign
`counterparts; (b} execute, verily, acknowledge and deliver all such further papers, including
`registration applications and instruments of transfer; and {c} perform such other acts as Assignee
`lawfully may request to obtain or maintain the Trademarks and any and all applications and
`registrations for the Trademarks.
`
`2. WARRANTY.
`
`Assipnor warrants that Assignor is the legal owner of all right, tile and interest in the
`Trademarks, that the Trademarks have not been previously pledged, assigned, or encumbered
`and that this Assignment does not infringe on the rights of any person.
`
`3, GOVERNING LAW AND CHORCE OF FORUM.
`
`This Assignment is governed by, and is to be construed in accordance with the laws of the State
`of Nevada. Any dispute regarding this Assignment shall be tigated in the Washoe County,
`Nevada.
`
`4, ENTIRE AGREEMENT.
`
`This Assignment constitutes the sole agreement of the parties and supersedes all oral
`negotiations and prior writings with respect to the subject matter hereof.
`
`§. BEVERABILITY.
`
`If one or more provisions of this Assignment are held to be unenforceable under applicablelaw,
`the parties agree to renegotiate such provision in good faith. If the parties ecarnmat reach 4
`mutually agreeable and enforceable replacement for such provision, then (2) such provision will
`be excluded from this Assignment, (1) the balance of the Assignment will be interpreted as if
`such provision were so excluded and (ii) the balance of the Assignment will be enforceable in
`accordance with its terms.
`
`§ ADVICE OF COUNSEL.
`
`EACH PARTY ACKNOWLEDGES THAT, IN EXECUTING THIS AGREEMENT, SUCH
`PARTY HAS HAD THE OPPORTUNITY TO SEEK THE ADVICE OF INDEPENDENT
`LEGAL COUNSEL, AND HAS READ AND UNDERSTOOD ALL OF THE TERMS AND
`PROVISIONS OF THIS AGREEMENT. THIS AGREEMENT WILL NOT BE CONSTRUED
`AGAINST ANY PARTY BY REASON OF THE DRAFTING OR PREPARATION HERBOP,
`
`Page 2 of 6
`
`TRADEMARK
`REEL: 006294 FRAME: 0756
`
`

`

`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 18 of 21
`Case 3:22-cv-02806-JCS Document1 Filed 05/12/22 Page 18 of 21
`
`IN WITNESS whereof, the Assignor and Assig
`the Effective Date.
`
`Assignar:
`
`
`¢
`«
`a
`: fae
`goes oF
`Ran &
`By Se Aen fo ie
`Seen ge a
`2°
`lee
`edtfeLE
`James C. Whatley
`
`uberRE, tne.
`
`ASSIBREE?Bm
`.
`LSShans”LR
`By:
`a
`oe Lewas
`[
`3
`oes
`Pege
`
`a
`
`{Notary Acknowledgement io Follow!)
`
`TRADEMARK
`REEL: 006294 FRAME: 0757
`
`

`

`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 19 of 21
`Case 3:22-cv-02806-JCS Document1 Filed 05/12/22 Page 19 of 21
`
`List of Trademark/Service Mark
`
`Mexhibit A
`
`Trademark/Service mark: Uber
`Registration/Application number: Registration 5052252; Serial 86500939
`Dated: October 04, 2016
`
`Page € of 6
`
`TRADEMARK
`REEL: 006294 FRAME: 0758
`
`

`

`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 20 of 21
`Case 3:22-cv-02806-JCS Document1 Filed 05/12/22 Page 20 of 21
`
`Assiguor Acknowledgement
`
`Slate oF FLORIDA 3
`County of ORALOOSA COUNTY }
`
`
`‘gay? before me the ondersigned Notary Public, personally appeared
`,
`ASSIGNOR, who provedto nur on the basis of satisfactory
`:
`eviidence tobe the persin whose nameis subseribed to the within instrument and acknowledged
`ig methat he/she executed the same
`in his/her authorized capacity, and that by his/her signature
`on the mmstrument the person, or theeentity upon behalfofwhichthe person acted, executedthe
`
`instrament.
`
`certify under PENALTY OF PERTURYunder the lows of the State of Florida that the
`foregoing paragraphis true and correct.
`
`WETNESS my handand official seal.
`é3
`“4a
`;
`
`oR WAYNE&wviHiAMsON|
`
`soe
`gh COMMESION BPRio
`\
`EXPIRES Maroh 13, FGFS°|
`
`;
`PATA
`FsgartanneySeesaw
`
`Mycommission expires
`
`Page Saf 6
`
`TRADEMARK
`REEL: 006294 FRAME: 0759
`
`

`

`Case 3:22-cv-02806-JCS Document 1 Filed 05/12/22 Page 21 of 21
`Case 3:22-cv-02806-JCS Document1 Filed 05/12/22 Page 21 of 21
`
`Assignee Acknowledgement
`| A notary public or other officer completing this certificate verifies only the identity ofthe
`individual(s} who signed ihe document to which this certificate is attached, and notthe
`
`truthfulness, accuracy, or validity of that document.
`
`Siste of CALIFORNIA
`
`}
`
`“
`<
`no
`
`
`ue
`¢ ok
`
`)
`County ofSAN MAT“0
`On, Lie pelts
`satisfactory
` ASSIGNEE, who proved to me onthebasis ofof
`idence {0be the fpersonwhosename is subscribedto the within mstrument and acknowledged
`to me that he/she executed the same in his/her authorized capacity, and that by his/her signature
`on the instrument the person, or the entity upon behalfof which the person acted, executed the
`instrament.
`
`i certify under PENALTY OF PERTURY under the laws of the State of California that the
`foregoing paragraph is true and correct.
`
`WITNESS my hand and official seal.
`
` Fea
`NotaryPublic
`
`{Notary Seal}
`
`SpierinSRSTRTA
`S
`MED JIRSARAEL
`
`‘COMMM. #2217313
`: NOTARY PUBLIC CAUIFGRNIA
`
`SAN MATEO COUNTY
`My Soe, fp, Ock 8, 2003
`
`ENSensytsusnnnel
`
` 3
`
`KiteDe
`lviy commission expires
`
`Page 6 of6
`
`RECORDED: 03/19/2018
`
`TRADEMARK
`REEL: 006294 FRAME: 0760
`
`