Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 1 of 31
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`Plaintiff,
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`-against-
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` UBER TECHNOLOGIES, INC.,
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`Defendant.
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`Index No.: 1:20-cv-02320
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`COMPLAINT
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`DEMAND FOR JURY TRIAL
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`UBER, INC.,
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`Plaintiff Uber, Inc. (“Plaintiff” or “Uber”), by and through its attorneys Leichtman Law
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`PLLC, Tzimopoulos Law, P.C. and Mavronicolas Law Group PLLC, brings this action against
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`Defendant Uber Technologies, Inc. (“Defendant” or “Uber Technologies”), and alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`This is an action for trademark infringement, reverse confusion, unfair competition
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`and false designation of origin, deceptive trade practices, and unjust enrichment under federal,
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`state, and common law. Plaintiff Uber brings this action in response to the unauthorized use of its
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`trademark, “UBER,” by Defendant in connection with the advertising, promotion, and sale of
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`Defendant’s services in commerce.
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`2.
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`Plaintiff Uber is an award-winning creative and consulting services agency that
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`provides advertising, business, and technology services, including but not limited to those with
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`regards to graphic and electronic design, print design, packaging design, event design, social
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`media advertising and strategy, creative consultation services, brand concept and brand
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`development services, design of information graphics and data visualization materials, graphic
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 2 of 31
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`illustration, and production (collectively referred to herein as “Plaintiff’s Business Services” or
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`“Business Services”) based out of New York, New York, United States. Plaintiff Uber’s
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`advertisements have been featured in international and national publications, and its services are
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`regularly purchased or hired by private, public, and non-profit entities.
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`3.
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`Plaintiff Uber originally incorporated on January 7, 1999. Over time, through
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`diligent personal effort and significant financial investment by its principal and sole owner, Herta
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`Kriegner, Plaintiff Uber grew from nothing into a premiere one-stop shop for its Business Services,
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`utilized and sought after by well-known domestic and international brands.
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`4.
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`Since its incorporation, Plaintiff Uber has used the word mark “UBER” (the
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`“Mark”, or “UBER”) throughout the State of New York and throughout the United States in
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`connection with the advertising, sale, and promotion of Plaintiff’s Business Services to the general
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`public.
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`5.
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`The primary means by which Plaintiff Uber promotes the Mark is through its
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`websites, www.uber-inc.com and www.uber.nyc. In addition to online points of contact,
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`Plaintiff’s Business Services—readily identifiable to consumers via the Mark—have been
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`promoted and advertised to clients and third-party consumers, through distribution of its work, by
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`word of mouth, in print publications, through sponsorships, at large-scale vendor events, and
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`through recognition from multiple award academies.
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`6.
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`Since its inception, Plaintiff Uber has continuously and prominently used UBER as
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`a trade name and service mark in connection with the promotion, sale and offers to sale, and
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`advertisement of Plaintiff’s Business Services to consumers and the general public.
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`7.
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`On June 8, 2019, after having continuously used the Mark in connection with the
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`sale, promotion and advertisement of Plaintiff’s Business Services for over two decades, Herta
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 3 of 31
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`Kriegner (“Ms. Kriegner”), the President and sole owner of Plaintiff Uber, filed an application on
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`Plaintiff Uber’s behalf for federal trademark registration of the Mark with the United States Patent
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`and Trade Office (the “USPTO”), in connection with the advertising and sale of its Business
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`Services in both Classes 35 and 42 (the “Application”), serial number 88465110. The Application
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`has been assigned to Plaintiff Uber, and is pending.
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`8.
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`Defendant Uber Technologies is a multi-billion dollar technology company
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`offering a variety of business and technology services to consumers, including but not limited to
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`ride-sharing, food delivery, employment recruiting, and logistics (such as freight shipping).
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`Defendant incorporated on July 16, 2010, approximately eleven (11) years after Plaintiff had been
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`continuously using the Mark in commerce in connection with the advertising, sale, and promotion
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`of its Business Services.
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`9.
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`Upon information and belief, Defendant’s revenue generation and consumer brand
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`awareness are largely due in part to aggressive and large-scale advertising. The primary method
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`by which Uber Technologies has and continues to promote, sell, and advertise its services to
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`consumers in commerce nationwide is through use of the word “Uber” as an abbreviation of its
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`full business name.
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`10.
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`It is undisputed that since at least 2012, Uber Technologies’ executive and/or
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`managerial personnel have had actual knowledge of Plaintiff Uber’s business existence and its
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`brand. This actual knowledge included the fact that Uber Technologies knew that Plaintiff Uber
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`used the Mark as their sole brand identity to the consuming public and had been using it for years
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`prior to Uber Technologies’ existence.
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 4 of 31
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`11.
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`Despite having actual knowledge of Plaintiff Uber’s trademark usage for many
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`years, the single word “Uber” has and continues to permeate Defendant’s business offerings as its
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`brand identification to consumers, to the Plaintiff’s detriment.
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`12.
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`Since Uber Technologies came into existence eleven (11) years ago and began
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`using the word “Uber” in its marketing, consumers, employees and contractors of the Defendant,
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`and government agencies have repeatedly and overwhelmingly confused Plaintiff’s business as
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`Defendant’s. This confusion has included, but is not limited to, Uber Technologies’ own
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`employees arriving at Plaintiff’s office mistakenly believing it to be their own, Plaintiff receiving
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`almost daily calls from angry Uber Technologies consumers, visits from disgruntled Uber
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`Technologies consumers, demands from Uber Technologies’ employees, contractors and affiliates
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`requesting compensation or seeking customer support, and New York State Unemployment
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`Insurance and Worker’s Compensation claims directed at Defendant which are charged to
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`Plaintiff’s insurance. In addition to the aforementioned confusion, Plaintiff has and continues to
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`receive harassing and threatening communications from Uber Technologies consumers and
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`contractors, and numbers of Defendant’s employees—including senior executives—have and
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`continue to identify themselves on social media and elsewhere as being employees of Plaintiff
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`Uber. In other words, the confusion between Plaintiff and Defendant is rampant and out of control.
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`13.
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`Plaintiff has and continues to receive from federal, state, and local agencies and
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`private claimants, workers compensation requests, wage garnishment requests, employee
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`background check requests, child support documentation, unemployment insurance forms,
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`subpoenas, and litigation related documents intended for Uber Technologies.
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`14.
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`Because this confusion has, and continues to, cause extreme disruption and burden
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`Plaintiff Uber’s business, Plaintiff Uber has attempted on numerous occasions throughout the years
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 5 of 31
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`to contact Defendant in an effort to resolve this ongoing issue. In response, Defendant has done
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`virtually nothing to ease the confusion and address the deluge of daily items misdirected at Plaintiff
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`intended for Defendant.
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`15.
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`Defendant’s lack of attention to the confusion belies a complete lack of good faith
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`in addressing the confusion it has caused.
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`16. While Plaintiff was trying to persuade Uber Technologies to address the confusion
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`with no success, it did not file a lawsuit until now because Plaintiff was concerned about the
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`expense to do so and understood that Uber Technologies’ business did not compete with Plaintiff’s
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`business.
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`17.
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`However, Plaintiff recently learned that Uber Technologies recently created a new
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`business division entitled “Uber Design,” supported by websites located at www.brand.uber.com
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`and www.medium.com/uber-design, and with its principal location in New York.
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`18.
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`Upon information and belief, the services offered in connection with Uber
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`Technologies’ new division relate to the provision of digital tools, platforms, and guidelines to
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`enable consumers to utilize Uber Technologies in ways that compete directly with Plaintiff’s
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`business.
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`19.
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`Defendant Uber Technologies has pursued multiple federal trademark registrations
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`with the USPTO for its variety of products, most of which contain the word “Uber” at least as a
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`partial component. Some registrations are based on actual use, while others are based on an intent-
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`to-use basis.
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`20. Many of Defendant’s federal trademark registrations cover services in Classes 35
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`and 42, in direct competition with Plaintiff Uber’s Business Services and Application.
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 6 of 31
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`21.
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`On September 12, 2019, Plaintiff received an Office Action response from the
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`USPTO on its Application, indicating amongst other things that its registrability was at risk of
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`being rejected due to a likelihood of confusion due to similarity to Uber Technologies’ trademark
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`applications and registrations.
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`22. While Plaintiff Uber has, for multiple years and as the lawful senior user of the
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`Mark, attempted to confront junior user Uber Technologies on numerous occasions about ceasing
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`use of the Mark, Uber Technologies has brazenly ignored Plaintiff’s pleas for consideration and
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`reconciliation, and has instead chosen to saturate the consumer marketplace with unauthorized use
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`of the Mark for its own commercial benefit, including expansion of the Mark into Plaintiff’s
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`Business Services. The recent Office Action received by Plaintiff, coupled with Defendant’s
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`recent entrance into Plaintiff’s line of business as a direct competitor with “Uber Design” and the
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`likelihood that it will attempt federal trademark registration of the same, has added to the actual
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`confusion, created a further likelihood of confusion amongst consumers as to the source of both
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`parties’ services, and indicates manifestation into bona fide willful trademark infringement of, and
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`tortious interference with, Plaintiff’s business, without justification.
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`23.
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`As the first user in commerce of the Mark, Plaintiff Uber is the lawful and equitable
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`owner of the Mark, and this action is commenced in order to ensure that its brand, business, and
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`goodwill will no longer suffer as a result of Uber Technologies’ willful, wanton, and intentional
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`infringement, deceptive trade practices, and unfairly competitive use of Plaintiff’s Mark.
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 7 of 31
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`PARTIES
`Plaintiff Uber is a New York corporation with its principal place of business and
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`24.
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`headquarters located at 231 West 29th Street, Suite 906, New York, New York 10001.
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`25.
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`Defendant Uber Technologies is a Delaware corporation with its principal place of
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`business and headquarters located at 1455 Market Street, 4th Floor, San Francisco, California
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`94103. According to the Delaware Department of State, Defendant has designated National
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`Registered Agents, Inc., 160 Greentree Drive, Suite 101, Dover, Delaware 19904, as its registered
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`agent upon whom process against Defendant may be served.
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`26.
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`In addition, Defendant is registered in New York as a foreign business corporation,
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`with its principal place of business located at 111 Eighth Avenue, New York, New York 10011.
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`According to the New York Department of State, Defendant has, for the purposes of this entity
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`registration, designated C T Corporation System, 28 Liberty Street, New York, New York 10005
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`as its registered agent upon whom process against Defendant may be served. Moreover, on
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`information and belief, the principal location from which Defendant offers its design services
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`under the “Uber Design” brand name is in New York, New York.
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`JURISDICTION AND VENUE
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`27.
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`This action arises under the Trademark Act of 1946, 15 U.S.C. § 1051, et seq. (the
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`“Lanham Act”), and the laws of the State of New York.
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`28.
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`This Court has original jurisdiction over the subject matter of this action pursuant
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`to 28 U.S.C. §§ 1331 and 1338(a). This court has supplemental jurisdiction over all other claims
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`asserted herein under 28 U.S.C. § 1367(a). Alternatively, this Court has jurisdiction over this
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`action pursuant to 28 U.S.C. § 1332 because the parties are citizens of different states and the
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`amount in controversy exceeds $75,000, exclusive of interests and costs.
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 8 of 31
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`29.
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`The Court has personal jurisdiction over Defendant Uber Technologies because the
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`injuries Plaintiff complains of herein occurred in the State of New York, because Defendant is
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`registered as a foreign business corporation and has a principal place of business in the State of
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`New York, and because it transacts a significant amount of business in the State of New York.
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`30.
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`Venue is proper in this District pursuant to 28 U.S.C. § 1391(b)(2) because a
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`substantial number of the events and omissions giving rise to this action occurred in this District.
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`BACKGROUND FACTS
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`31.
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`Plaintiff Uber is an award-winning seller of its Business Services to business
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`entities and individuals.
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`32.
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`Plaintiff has won many awards for its Business Services, including from prestigious
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`design competitions and authorities, such as the Hermes Creative Award in 2009, the Summit
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`Creative Award in 2000, 2001, 2003, and 2006, the Communicator Awards in 2001 and 2015, as
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`well as many more.
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`33.
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`Plaintiff Uber primarily promotes and advertises its Business Services to the public
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`through its websites, www.uber-inc.com and www.uber.nyc, as well as by sponsoring high-profile
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`events, purchasing advertisement pages in print publications, and through word-of-mouth
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`references from preexisting clients. True and correct copies of a portion of the www.uber-inc.com
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`and www.uber.nyc websites’ home pages, an example of one of Plaintiff’s magazine
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`advertisements, certain awards Plaintiff has won for its Business Services, as well as a flyer for
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`one of Plaintiff’s sponsored events, all showcasing Plaintiff’s use of the Mark in its business
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`advertising, are hereto attached as Exhibit 1.
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`34.
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`Plaintiff Uber was incorporated on January 7, 1999. By at least January 1999,
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`Plaintiff began using UBER as both a trade name and as a service mark in the State of New York.
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 9 of 31
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`35. Ms. Kriegner is of European descent. “Über” is a European word which denotes
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`an outstanding or supreme example of a particular kind of person or thing. Ms. Kriegner
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`purposefully adopted the UBER word mark as Plaintiff’s business brand identity to indicate to
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`consumers that Plaintiff’s services were of extraordinarily superior quality, with a hint of European
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`sophistication and flair.
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`36.
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`The Mark is arbitrary in describing the Business Services that Plaintiff sells to
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`consumers and the public. Because it is arbitrary, it is inherently distinctive, and in any event has
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`acquired secondary meaning to consumers throughout the years as a source identifier for Plaintiff’s
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`Business Services.
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`37.
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`Since at least January 1999, Plaintiff Uber has and continues to use UBER as a
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`distinctive trade name and trademark continuously, prominently and openly to represent its
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`company and its business, the services it provides, and its unique and special business character.
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`In order to successfully and efficiently promote and advertise Plaintiff’s Business Services,
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`Plaintiff adopted the Mark immediately upon its incorporation as both a trade name and as a service
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`mark so as to concisely inform consumers of the source of the services they provide for sale. Since
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`at least January 7, 1999, Plaintiff Uber has continuously used the Mark in connection with
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`promoting, advertising, and selling its services to consumers.
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`38.
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`Plaintiff is the current owner of the domain names for four (4) different websites:
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`www.uber.nyc,
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`www.uber-inc.com,
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`www.ubercustomerservice.com,
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`and
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`www.ubercustomercare.com. Plaintiff purchased these domain names in order to be able to
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`effectively market, promote, and represent its brand to consumers nationwide. These web pages
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`are accessible to consumers anywhere, and Plaintiff Uber intentionally invested in these websites
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`so as to increase their brand visibility past consumers in the State of New York and internationally.
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 10 of 31
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`39.
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`Since its inception and through its quality-controlled branding and advertising
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`efforts, Plaintiff Uber has sold its Business Services to high-profile domestic and international
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`clients such as BMW North America, Smithfield Foods, Clinique, and Macy’s, and earned a
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`reputation as an exceptional brand for design services of many types.
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`40.
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`Defendant Uber Technologies, a business services and technology company
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`offering a variety of services to consumers, incorporated on July 16, 2010, approximately eleven
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`(11) years after Plaintiff had been continuously using the Mark in commerce for sale of its Business
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`Services.
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`41.
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`Defendant began by simply providing technology services that included the
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`software used to facilitate a ride-sharing service to consumers, but has since diversified its business
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`services portfolio exponentially, now offering services ranging from food delivery (Uber Eats) to
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`logistics such as freight shipping (Uber Freight), employment recruiting (Uber Works), and most
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`recently, design services in direct competition with Plaintiff (Uber Design).
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`42.
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`Since its incorporation, Defendant has grown astronomically in the consumer
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`marketplace in brand awareness and, consequentially, in revenue, now allegedly valued at billions
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`of dollars. For example, Uber Technologies recently reported that its quarterly revenue for the
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`quarter ended December 2019 was approximately $4.1 billion.
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`43.
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`The primary method by which Uber Technologies has and continues to promote,
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`sell, and advertise its services to consumers in commerce is through use of the word “Uber” as an
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`abbreviation of its full business name.
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`44.
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`In fact, the word “Uber” has become the sole moniker by which Uber Technologies
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`identifies itself in the marketplace, attached only to other words to indicate other services it
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`provides (e.g. Uber Air, Uber Eats, Uber Freight, Uber Works, Uber Design).
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 11 of 31
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`45.
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`The single word “Uber” has and continues to permeate Defendant’s business
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`offerings, ranging from its ubiquitous ride-sharing software application (downloadable for free to
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`consumer’s personal telephones) to its various print and digital advertisements, and through its
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`website, www.uber.com, which is strikingly and confusingly similar to that of Plaintiff’s. Upon
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`information and belief, Uber Technologies has never marketed itself to consumers as “Uber
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`Technologies,” and has now monetized the word “Uber,” standing alone, to the tune of many
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`billions of dollars. True and correct copies of a portion of Uber’s website homepage, where the
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`“Uber” word is prominently displayed, and advertisements showing the same are attached hereto
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`as Exhibit 2.
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`46.
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`On May 10, 2012, less than a year after Uber Technologies entered the New York
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`marketplace with its ride-dispatching services, and after receiving numerous calls at her business
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`for a car service, Ms. Kriegner attended the RandLuxury Review conference held at Metropolitan
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`Pavilion in the State of New York. There, she saw a table set up for Defendant Uber Technologies
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`and first became aware of Defendant’s existence. After approaching the two individuals at the
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`table— who identified themselves as Josh Mohrer, the ex-General Manager of Uber Technologies’
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`New York office, and Ed Casabian, an ex-marketing representative of Defendant— and informing
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`them that Plaintiff had been operating under the same business name for over a decade and that
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`she was receiving calls directed to Defendant, Ms. Kriegner was told by the two Uber Technologies
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`employees cavalierly that she should change Plaintiff’s business name “because they [Defendant]
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`are growing.”
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`47.
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`Over the next several years, the calls looking for Defendant at Plaintiff’s business
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`increased. Angry consumers, Uber Technologies employees and contractors, and other various
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`individuals mistakenly believing Plaintiff to be Uber Technologies were repeatedly harassing
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 12 of 31
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`Plaintiff, despite being informed by Ms. Kriegner of the lack of relationship or affiliation, or
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`endorsement of, Defendant’s business.
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`48. When Defendant refused to act to make any effort to stop the confusion in the
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`marketplace, Plaintiff spoke with the press, and the case garnered national attention.
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`49.
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`For example, on November 25, 2014, the New York Post published an article titled,
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`“Uber makes life miserable for design company with the same name” on its website,
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`www.nypost.com, further putting Uber Technologies as a whole on constructive notice that the
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`confusion was damaging Plaintiff’s business and goodwill. On December 5, 2014, the New York
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`Times published an additional article titled, “über vs. Uber” on its website, www.nytimes.com.
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`MYFOXNY thereafter posted a substantially similar article on the same day. True and correct
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`copies of these articles as published are hereto attached as Exhibit 3.
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`50.
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`Starting in approximately December 2015, Plaintiff began explicitly telling all
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`misinformed callers to contact Mr. Casabian directly. Upon information and belief, after
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`complaining to Ms. Kriegner that he couldn’t handle the volume of calls he was receiving, and
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`after Ms. Kriegner again requested that Uber Technologies implement a solution to mitigate further
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`confusion between the parties, Mr. Mohrer contacted Ms. Kriegner on Defendant’s behalf to
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`discuss resolving the conflict.
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`51.
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`On December 18, 2015, Mr. Mohrer and Ms. Kriegner met in person, and Mr.
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`Mohrer offered Plaintiff $80,000.00 USD on the condition that Plaintiff change its business name
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`entirely, despite the fact that Plaintiff had senior rights in the Mark, had invested at that point
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`nearly two decades of sweat equity into the brand, and the company represented Ms. Krieger’s
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`life-work.
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 13 of 31
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`52.
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`On February 23, 2016, Ms. Kriegner sent Mr. Mohrer an e-mail correspondence
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`rejecting his offer, counter-offering with a demand of $800,000.00 USD and detailing the
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`grievances Plaintiff had suffered as a business as a result of Defendant’s infringing junior usage
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`of the Mark. This correspondence explained all of the costs and efforts that would be required in
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`order for Plaintiff Uber to change its name as Defendant proposed, and that such costs would
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`continue to increase so long as the matter was left unattended to reflect the actual damages Plaintiff
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`had suffered, the funds needed to rectify the harm already caused, and what would be needed for
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`Plaintiff to rebrand itself. A true and correct copy of this e-mail correspondence is attached hereto
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`as Exhibit 4.
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`53.
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`On February 24, 2017, after one year had passed and having never received a
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`response from Mr. Mohrer about her counter-offer, Ms. Kriegner again e-mailed Mr. Mohrer
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`detailing additional misdirected claims and tangible goods sent to her office directed towards Uber
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`Technologies, and requesting a response to her counter-offer. A true and correct copy of this e-
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`mail correspondence is attached hereto as Exhibit 5.
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`54.
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`On February 26, 2017, Mr. Mohrer responded by e-mail to Ms. Kriegner and
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`suggested a telephone conversation. Ms. Kriegner and Mr. Mohrer spoke on the telephone on
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`February 27, 2016, in which he claimed that the most Defendant could offer was $120,000.00 USD
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`to compensate Plaintiff, and again insisting that the $120,000.00 USD was conditioned on Plaintiff
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`changing its company name and brand. Ms. Kriegner rejected this updated offer from the
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`Defendant as insufficient, and has not heard from Mr. Mohrer or Defendant since, despite multiple
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`efforts over several years to further engage in conversation.
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`55.
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`Since these exchanges, Ms. Kriegner has attempted on multiple occasions to contact
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`individuals at Uber Technologies about Defendant’s improper uses of the Mark and the damage
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 14 of 31
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`the confusion has caused to Plaintiff, to no avail. As examples, true and correct copies of one such
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`e-mail exchange between Ms. Kriegner and one Uber Technologies employee describing a
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`particularly misguided and harassing phone call Plaintiff received on November 7, 2017, as well
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`as a message Ms. Kriegner sent to Mr. Mohrer over LinkedIn on February 8, 2019, are attached
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`hereto as Exhibit 6, with personally identifying information redacted.
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`56.
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`Besides suffering, on a daily basis for over a decade, from angry and harassing
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`phone calls intended for Uber Technologies, Plaintiff has received a persistent barrage of
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`additional unwanted communications and interference with its business operations as a result of
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`the consumer confusion between Uber, Inc. and Uber Technologies. This confusion has included,
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`but is not limited to, scheduled shipments of tangible goods (approximately 10,000 backpacks) in
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`Uber Technologies’ name to Plaintiff’s office, Uber Technologies’ own employees or contractors
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`arriving at Plaintiff’s office mistakenly believing it to be their own, and Plaintiff receiving multiple
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`telephone calls and correspondences almost every single day from angry consumers and Uber
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`Technologies employees or contractors requesting compensation or customer support. A true and
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`correct copy of a call log reflecting a sample of misdirected calls is attached hereto as Exhibit 7,
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`with personally identifying information redacted.
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`57.
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`Indeed, some of Defendant’s own senior executives have even identified
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`themselves as being employed by Uber, Inc. Remarkably, both Mr. Mohrer and Mr. Casabian,
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`who were well aware personally of the difference between the two companies, listed their
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`employers as “Uber, Inc.,” indicating that the confusion has permeated well beyond the
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`uninformed public. True and correct copies of screenshots of Mr. Mohrer’s and Mr. Casabian’s
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`LinkedIn pages as of December 19, 2015 showcasing the misattributed employment are hereto
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`attached as Exhibit 8.
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 15 of 31
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`58.
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`The confusion in the marketplace has and continues to extend to federal and state
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`government agencies, law offices, and private and public companies. Plaintiff has and continues
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`to receive workers compensation requests, wage garnishment requests, small business loan
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`documentation, employee background check
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`requests, child support documentations,
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`unemployment insurance forms, subpoenas, and lawsuit documents intended for Uber
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`Technologies personnel but directed to Plaintiff’s attention. A true and correct copy of examples
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`of a portion of these documents, addressed to Uber, Inc. and clearly confusing Plaintiff as Uber
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`Technologies, is attached hereto as Exhibit 9, with personally identifying information redacted.
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`59.
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`The confusion in the marketplace has even extended to artificial intelligence. For
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`example, consumers utilizing iPhone’s “Siri” virtual assistance feature are constantly mislead to
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`believe that Uber Technologies is in fact Plaintiff. True and correct copies of examples of the
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`results that “Siri” generates when consumers request information for Uber Technologies are hereto
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`attached as Exhibit 10.
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`60.
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`As if things could not get any more difficult for Plaintiff to run its business without
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`interference, on April 29, 2019, Ms. Kriegner ran a credit report with Equifax, a credit reporting
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`agency for businesses, which rated Plaintiff’s business as an “F.” This credit report has Plaintiff’s
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`correct address, but the business name is incorrectly listed as Uber Technologies, Inc., mistakenly
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`lists an Uber Technologies driver as an employee of Plaintiff, and identifies Plaintiff as having
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`liens and judgments against it (which it does not). A true and correct copy of a screenshot of this
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`credit report is hereto attached as Exhibit 11.
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`61.
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`The confusion and interruption to Plaintiff’s business is so burdensome that Ms.
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`Kriegner was forced to develop an entire new page on Plaintiff’s website, www.uber.nyc, titled
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`“Uber vs. Uber” in an attempt to steer confused, mistaken customers back to Defendant and put
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 16 of 31
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`customers on constructive notice of the lack of relationship. In addition to the new page, Plaintiff
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`was forced to place a distracting pop-up notice on its homepage explaining the same. A true and
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`correct copy of a portion of the “Uber vs. Uber” comparison page on Plaintiff’s website is hereto
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`attached as Exhibit 12.
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`62.
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`On June 8, 2019, after having continuously used the Mark in connection with the
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`sale, promotion and advertisement of its services for over two decades, Ms. Kriegner filed the
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`Application for federal trademark registration of the Mark with the USPTO, in connection with
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`the advertising and sale of creative design services in Classes 35 and 42. The Application is still
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`pending. Plaintiff Uber is the lawful owner of the trademark rights in the Application and the
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`Mark.
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`63.
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`Since its inception, Uber Technologies has pursued multiple federal trademark
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`registrations with the USPTO for its variety of products, most of which contain the word “Uber”
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`at least as a partial component. Some registrations are based on actual use, while others are based
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`on an intent-to-use basis.
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`64. Many of Defendant’s federal trademark applications claim services in Classes 35
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`and 42, in direct competition with Plaintiff Uber’s own Application.
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`65.
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`Uber Technologies recently created a new business division titled “Uber Design.”
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`Upon information and belief, the services offered in connection with this division relate to the
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`provision of digital tools, platforms, and guidelines to enable consumers to utilize Uber
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`Technologies’ proprietary design assets in their own unique ventures. True and correct copies of
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`a sample of Defendant’s usage of “Uber Design” in commerce, as well as Defendant’s brand
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`webpage promoting "Uber Design” as fundamental to its brand composite, are hereto attached as
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`Exhibit 13.
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`Case 1:20-cv-02320-PKC Document 1 Filed 03/16/20 Page 17 of 31
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`66.
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`On August 20, 2019, Plaintiff’s counsel, Tzimopoulos Law, P.C., sent a formal
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`cease and desist letter to Defendant, describing the numerous transgressions Plaintiff has suffered
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`as a result of the consumer confusion between the two parties. Defendant did not respond or
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`acknowledge receipt of the letter. A true and correct copy of this letter is hereto attached as Exhibit
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`14.
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`67.
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`On September 12, 2019, Plaintiff received an Office Action response from the
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`USPTO on the Application, indicating amongst other things that its registrability was at risk of
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`being rejected due to a likelihood of confusing similarity to Uber Technologies mark applications
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`and registrations, many of which are filed under the same classes of services and others w