Registering a trademark federally is key to conserving your brand. The recent Uber battle between “little Uber” and “big Uber” from earlier this year highlights this principle more than ever. It turned out to be a hard trademark lesson learned. The case of Uber Promotions Inc. v Uber Technologies Inc. explains the all too common worst case scenario trademark battle.
Basically, Uber Promotions (Little Uber) was around long before Uber Technologies (Big Uber). When Big Uber tried to use the name “Uber” where Little Uber was already established, Little Uber sent Big Uber a cease and desist letter. The letter was successful, but not as much as one might hope. The cease and desist letter stopped Big Uber from operating in the same location as Little Uber.
As it turned out, though, the younger Big Uber had gotten a federal trademark for the name “Uber” federally. The effect of the trademark was that Big Uber was able to use the courts to stop Little Uber from expanding its business into any other new location. The trademark acts like a gap filler. It fills in and claims any areas in which the established business has not already used its brand. You can read all about the ‘David and Goliath’ legal encounter here.
The lesson to learn is you need to register your company’s brand federally. This is especially true if you think you might want to expand in the next 5 years.
When a big company registers first, it has the right to freeze the small guy’s expansion plans. This is true even if the small guy was using the trademark first. Companies that do not have a federal trademark are strangled by the bigger company’s federal protection. It would be illegal for the small company to use the trademark outside of the original areas of usage. When that happens, expansion is nearly impossible. When you can’t expand, profits suffer. There is a fee to register, but in the end you’re saving money by protecting the brand you’ve worked so hard to build.