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Uber Operations sues driving app Uber for Trademark Infringement

Uber Technologies, the riding app frequented by many looking for alternatives to public transportation, is being sued in the U.S. District Court of Florida by Uber Operations, LLC for trademark infringement.

Uber Operations, “an elite data integration and cloud computing company” according to the Complaint claims that it had secured the trademark prior to the driving app.  Uber Operations filed for a trademark on April 28, 2011.

Uber Operations claims that there is actual consumer confusion between the two companies and is requesting an order to cancel the trademark of the popular driving app.

For those wondering, the two were granted the use of the trademarks for their respective businesses, Uber Operations for the field of IT and Uber Technologies for the industry of ride-sharing.  However, du to the increased popularity of the driving app, the public is being confused about the two companies.

Due to the recent bad press from the driving app, Uber Operations has received bad reviews and even death threats due to consumer confusion.  Additionally, it has received legal notices confusing the company with the driving app company.

A search on the USPTO web site reflect that Uber, the driving app, filed for the “Uber” trademark it filed for in December 2016 in a wide-range of industries.  However, a suspension notice was issued last month to clarify and administrative issue.

This is another good example of how smaller companies must protect their brand.  While the San Francisco-based Uber Technologies has grown exponentially and Uber Operations is a regional company, it is still being affected due to brand/consumer confusion.  I would expect the parties to eventually come to a settlement and its unlikely that Uber Technologies would have its trademark cancelled.

Unicorn drink center of trademark infringement lawsuit

A Brooklyn, New York café has settled a trademark infringement lawsuit with Starbucks over unicorn-themed drinks.  The lawsuit filed this past May by Montauk Juice Factory, Inc., the parent company of The End Brooklyn claimed that it infringed on a unicorn-inspired drink.

Named the Unicorn Latte, the New York-based café filed for the trademark on January 20, 2017.  It went to publication on August 17, 2017.  The Unicorn Latte is part of the menu.  Starbucks sold the Unicorn Frappuccino for several days in April amidst a buzz from its followers.  The Seattle-based company denied infringing the trademark.

The lawsuit has been dropped and the attorneys for the New York café stated the case has been settled.

It appears that Starbucks may have settled the case to avoid a timely and expensive legal battle.  Still, the instance shows the need to be vigilant in reviewing trademarks and ensuring there are no conflicts.  While its not known whether Starbucks initially denied any issues, this is a case where the smaller company was able to use the point it filed its trademark first to show precedence over the bigger company.

Las Vegas Golden Knights file response to office action over its Trademark Application

The Las Vegas Golden Knights will begin its inaugural season in the National Hockey League this fall.  However, the “Las Vegas Golden Knights” Trademark is still in flux as the USPTO Examining Attorney has prelimnary refused registration of the franchise’s mark.

The applicant, Black Knight Sports and Entertainment, LLC, filed a response to the Office Action.

The Examining Attorney has refused the registration of the hockey team’s mark because of likelihood of confusion with the mark owned by the Golden Knights The College of Saint Rose.  The two marks would be in the same class, i.e., “entertainment services in the form of intercollegiate sports exhibitions in Class 41.

In addition, the application may be denied on the basis of likelihood of confusion with two existing applications, one submitted by the University System of Georgia and one by the University of Central Florida.  Notably, those marks were filed on June 30th and July 26th 2016 respectively.  The Las Vegas Golden Knights filed its trademark application with the USPTO on August 26, 2016.

Attorneys for the Las Vegas Golden Knights state that there would be no likelihood of confusion because sports fans are familiar with distinguishing between unrelated teams using the same names, sport fans know the difference between GOLDEN KNIGHTS and KNIGHTS when it comes to sports, they “by their very nature, are knowledgeable about the games they choose to watch and attend and “the parties’ marks differ materially in appearance, sound, and commercial impression.

The Office Action goes into detail about how the USPTO has allowed the “coexistence of the same or similar marks in sports, whether different sports or the same sport on different levels…”  They name approximately 40 names with 7 trademarks used by both a collegiate hockey team and an NHL hockey team.

They cite case law which indicates that differences between the sports the teams play, whether pro or college, or whether they play in different leagues, can be enough to render confusion unlikely.  The court in one of the cases cited by the Golden Knights attorney indicate that there was a superficial similarity between the two teams due to the creation of overinclusive categories that are irrelevant to the likelihood of confusion.

Interesting enough, the “Vegas Golden Knights” application under Class 41 has been accepted by the Attorney Examiner and will be made available to the public on September 12, 2017.  The public will have 30 days to oppose the mark registration.

The response to the Office Action focuses on the assertion that the public, specifically sports fans would not be confused by the similar marks or marks that are exactly the same.  The argument focuses on the knowledge of sports fans that they are accustomed to teams using the same name and evidence this through naming of trademarks registered by the USPTO.

We shall see if the Attorney Examiner allows the Las Vegas Golden Knights trademark to go through.  Of course, even if they do, it still may be opposed by the current trademark holder.  Regardless, it looks like this legal issue may not be resolved by the time the Las Vegas Golden Knights start their inaugural season.

MLB attempts to avoid infringement issues with jersey nicknames

Next weekend, Major League Baseball will pay homage to little league baseball with a “Players Weekend.”  As part of the weekend, players will have a chance to wear special uniforms with their nicknames on the back.  Even with the relaxation of the rules, MLB is still playing it cautious with possible trademark infringement issues.

Philly.com reported that at least two Philadelphia Phillies were denied their preferred nicknames because of intellectual property concerns.  Phillies pitchers Zach Eflin and Hoby Milner will not be able to wear their preferred nicknames.  Eflin wanted “Led Zeflin” which is a play on rock band Led Zeppelin and Milner wanted “Hoby Wan Kenobi,” based on the Star Wars character Obi-Wan Kenobi.

The Texas Rangers’ Adrian Beltre wanted to wear “Kojak” on his jersey.  But will not.  Notably, the Seattle Mariners closer Edwin Diaz is nicknamed Sugar after the main character in the 2008 baseball movie.  His jersey will read “Sugar.”  One may assume MLB believes no infringement issue here.  Of course, the name of the movie and the nickname here use a common word rather than Led Zeppelin, Obi-Wan or the popular 1970s tv character, Kojak.

The denials were due to concerns over trademark infringement issues with the holders of the mark.  Certainly, the apprehension with these nicknames had to do with concerns over whether the mark holders would put up a fight.

A reason for this weekend is to create another avenue for merchandise sales.  Jerseys with these nicknames go for $200 each while t-shirts go for $30 each.  Despite the lofty prices for the jerseys, fans will purchase some of these jerseys due to the uniqueness of the jersey.  It creates another asset for the team to market.  It’s a reason why NBA teams have extended the number of jerseys it has in its seasonal rotation.

While some attorneys claim that putting nicknames on the jerseys would not be infringement, there is an argument that there is licensing revenue that the markholders would be losing out on.  From a practical standpoint, MLB did not want to bog itself down in a trademark fight on jerseys it would wear for only one weekend.

Nike and Photographer argue over Jumpman Logo in Copyright lawsuit

The Jumpman logo made famous by Nike depicting Michael Jordan, split-legged, about to dunk a basketball with one hand with a city skyline in the background, was at issue before the Ninth Circuit earlier this week as a copyright fight over the photo continues.

Jacobus Rentmeester, the photographer, claims that the Jumpman logo is an unauthorized derivative work copying the central creative elements of the photograph “conceived, orchestrated and created,” for a 1984 issue of LIFE Magazine for the Summer Olympics.

Nike moved to dismiss the lawsuit with the district court granting it motion and thus the Ninth Circuit appeal.  Rentmeester cited numerous deficiencies in the district court’s decision including the fact that he was entitled only to “thin” copyright protection despite being an original work of visual art.

In the Jumpman logo appeal, it appears that the main question is one of differences and whether the photographer can show that the phot was infringed.  The appellate court questioned what other differences were there aside from the pose.  Judge Marsha Berzon questioned whether the pose is protected because it’s unusual.  Rentmeester’s attorneys argue it is protected because he had directed the shot of Jordan.  Nike argued that siding with this viewpoint would be a “radical expansion of copyright law.”

Interesting enough, Judge John Owens asked about a hypothetical situation in which new Los Angeles Lakers first round pick Lonzo Ball were to use a similar pose dunking over the city skyline to promote him as “the next Michael Jordan” and whether that would be protected by copyright.  Nike’s attorney responded by indicating the creative use of the Chicago skyline made its rendering distinct.

Ironically, Nike is opposing a trademark filing by one of its own sponsored athletes, New England Patriots Tight End Rob Gronkowsi, citing a logo he would like to use is too similar to the Jumpman logo.