On Tuesday, September 29, Florida-based Uber Promotions, Inc. sued Uber Technologies, Inc. (Uber), the well-known maker of the Uber app, which allows customers to arrange for car service as well as receive fare quotes. Uber Promotions alleged that Uber’s use of the UBER marks infringed Uber Promotion’s pre-existing common law trademark rights in Florida. Uber Promotions alleges that it and its predecessors-in-interest began using UBER, as well as other similar marks, in 2006, for “passenger transportation services, including vehicle charter services, in virtually every city in Florida,” and as a result Uber Promotions alleges that it has developed “strong common law trademark rights” in the marks.
Uber Promotions’ allegations, if true, provide an example of a not-uncommon problem for companies that do business nationwide: detecting pre-existing common law uses that may conflict with their proposed marks. Trademark registration is not a prerequisite to trademark protection; a user establishes trademark rights in the geographic region in which it uses its mark. Thus, a company proposing to adopt a new mark might overlook conflicting common law rights, although it in good faith conducts what it perceives is an adequate trademark search. For example, a company that does only a basic “knockout search” of the U.S. Patent and Trademark Office (PTO) records before adopting a new mark — merely looking at the records of active registrations and pending applications — will not pick up common law marks that are not the subject of PTO applications or registrations. Companies that fail to detect pre-existing uses prior to adopting a new mark can end up on the hook for trademark infringement when their use enters the territory in which the pre-existing user has its common law rights.
Ultimately, no search can be a guarantee. To mitigate the risk in adopting a new mark faces, however, a company should consider conducting clearance searches beyond the PTO’s records. For a fee, several professional search companies will provide searches that cover not only the PTO records and records of state registration, but also select common law uses and domain name registrations. These include the well-known services Thomson CompuMark and CorSearch. Another option is a subscription to an online search program such as Saegis, which covers not only PTO and state records, but also select registrations including certain commonly-used top level domain names (e.g., .com, .net, and .org). In addition, using popular search engines such as Google.com and Yahoo.com to detect possible conflicting marks and company names is a must for a company considering a new mark.