## Facts

- Uber, Inc. (plaintiff) opened in 1999 as a marketing and advertising business and used the unregistered mark “Uber” in commerce.
- Uber Technologies, Inc. (defendant) started in 2010 as a ride-sharing service and later expanded into additional lines of business, becoming publicly associated with the “Uber” name.
- As Uber Technologies became widely known, Uber, Inc. began receiving communications and shipments intended for Uber Technologies.
- In 2019, Uber Technologies and Adomni, Inc. (defendant) publicly announced plans to expand into the advertising industry.
- Uber, Inc. sued Uber Technologies and Adomni in federal district court, asserting (among other claims) reverse confusion—i.e., that consumers would assume Uber, Inc. was affiliated with, sponsored by, or a smaller offshoot of the much larger Uber Technologies brand.
- To support competitive proximity, Uber, Inc. pointed to defendants’ public statements about entering advertising and to a trademark-registration application seeking to register “Uber” for advertising-related use.
- Uber, Inc.’s complaint did not identify specific instances of actual consumer confusion tied to the parties’ advertising services.
- Uber Technologies and Adomni moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), arguing that Uber, Inc. had not plausibly alleged close competitive proximity or actual consumer confusion.

## Issues

1. Whether Uber, Inc. plausibly alleged a reverse-confusion claim under Lanham Act § 43(a) at the pleading stage, including facts supporting competitive proximity and a likelihood of confusion, despite no pleaded instances of actual consumer confusion.
2. Whether related New York trademark and unfair-competition claims based on the same alleged confusion could proceed past Rule 12(b)(6).
3. Whether Uber, Inc.’s unjust-enrichment claim stated an independent basis for relief or was duplicative of its trademark-based claims.

## Decision

- The court denied the motion to dismiss the Lanham Act § 43(a) reverse-confusion claim, finding the complaint plausibly alleged a likelihood of confusion based on defendants’ announced expansion into advertising and their trademark-registration efforts.
- The court denied the motion to dismiss the related New York trademark and unfair-competition claims to the extent they rose or fell with the same alleged likelihood of confusion.
- The court granted the motion to dismiss the unjust-enrichment claim as duplicative of the trademark and unfair-competition causes of action.

## Legal Principles

- On a Rule 12(b)(6) motion, the question is whether the pleaded facts make infringement plausible; detailed proof of confusion is not required.
- Reverse confusion addresses harm caused when a commercially dominant junior user saturates the market with a mark, leading consumers to believe the senior user is connected to the junior user.
- A plaintiff need not plead documented instances of actual consumer confusion to survive dismissal; likelihood of confusion can be plausibly alleged from surrounding facts, including market context and the parties’ branding and business plans.
- Competitive proximity can be plausibly alleged where the complaint ties defendants’ planned or announced entry into the plaintiff’s service area (here, advertising) to concrete indicators such as public statements and trademark-registration applications.
- Under New York law, unjust enrichment is generally unavailable when it rests on the same conduct and seeks the same recovery as trademark and unfair-competition claims.

## Conclusion

The court held that Uber, Inc., a senior marketing and advertising business using “Uber” since 1999, plausibly alleged reverse confusion when Uber Technologies and its advertising partner publicly announced an expansion into advertising and pursued trademark protection for “Uber” in that space, even though the complaint did not plead specific instances of actual consumer confusion in the advertising market; however, the court dismissed unjust enrichment because it duplicated the trademark-based theories.


Uber Inc. v. Uber Technologies Inc., 2021 U.S. Dist. LEXIS 41014 (2021)