Uber IP: A primer on the patents, trademarks and copyrights owned by Uber

By Audrey Ogurchak
July 23, 2016

Uber smartphoneUber Technologies, Inc. (“UBER”) was founded in San Francisco, CA in 2008. UBER creators, Travis Kalanick and Garret Camp came up with the idea on a snowy evening in Paris in 2008. The two had trouble hailing a cap and came up with the simple idea of tapping a button on their phone in order to get a ride. Camp, the founder of StumbleUpon, an intelligent browsing tool for discovering and sharing websites, sold StumbleUpon to Ebay a few months after that incident and Camp and Kalanick then had the excitement and capital to tackle the taxi problem in San Francisco. By March 2009, Camp had developed the prototype of the app called UberCab.

The app first launched in New York City where three cars took the streets in January 2010, and later in San Francisco in July 2010. By October 2010, UberCab had received $1.25 million in angel financing led by First Round Capital. UberCab received its first Cease and Desist Order from the San Francisco Metro Transit Authority & Public Utilities Commission of California for appearing to operate like a cab company without proper licensing. Soon after, the company changed its name to “Uber.” By Winter 2011, Uber has continued to expand, in the face of competition and regulatory opposition, currently maintaining a valuation of over $62.5 billion, as of December 2015. As of April 12, 2016, Uber is available in over 60 countries and 404 cities worldwide. In June 2016, Uber received a $3.5 billion equity investment from the Saudi Arabian Public Investment Fund. This investment is expected to fund its global expansion against its well-funded competitors, such as the Chinese company, Didi. This fund plans to boost Uber’s share of overseas holdings to approximately 50% by 2020, from its 5% holding now.

It appears that Uber’s main strategy in protecting its intellectual property is through the use of utility patent protection. As Uber currently owns several issued patents, through its own filing and acquisition, it is difficult to determine whether the patents would actually be upheld during any future litigation. The utility patents that Uber currently owns are mainly directed to business methods[1], which have come under strict scrutiny within the United States Patent and Trademark Office and in patent litigation. As the issued patents are almost exclusively relating towards business method patents, Uber runs the risk that it will lose its protections if faced with a law suit, even after it has disclosed its methods to the public through the patents. If Uber wishes to continue to be the leader in mobile based transportation, Uber may want to consider either filing for patent protection relating to more substantive inventions that are less likely to be invalidated (if possible) or maintain its intellectual property as a trade secret.[2]

Uber has also received extensive protection for its logos, app icons and app designs. This allows Uber to operate its services with little risk of infringement from competitors. Uber has trademarked the logos of the various services it offers as well as several icon designs. Uber has filed for protection on various aspects of its icons. Uber has started out by registering for trademarks for the base of the icon design and then adding various features, such as the actual design of the icon and more detailed designs of the icon, seen in the figures below.[3]

Uber has also registered for trademark protection of the various designs included in the icon, which are seen below.[4]

By registering for this narrowing protection, Uber is maximizing its trademark portfolio by protecting its icon on various levels. This allows for Uber to obtain the maximum amount of protection for its icon because different aspects of the icons are protected, thus, if any competitor or other company attempts to mimic the Uber icon, Uber will have a strong case on various accounts of trademark infringement.

Uber has also obtained design patent protection for its user interfaces.[5] The user interfaces would not be eligible for protection under trademark law, therefore, design patent protection is the strongest form of protection available. This protection prevents competitors or other companies from mimicking the Uber app interfaces, thus eliminating customer confusion. As the term of any design patent only lasts for 15 years, Uber will not be able to maintain the protection of the interfaces indefinitely. However, Uber will possibly be able to invoke common law trade dress protection after the expiration of design patents. Trade dress protection is invoked when a company’s customers have become familiar with the design of company’s product, such as the Coca Cola bottle. After the expiration of the design patents, Uber may be able to sue any competitors attempting to utilize Uber’s user interfaces under a trade dress method of protection. However, as Uber is continually filing utility and design patent applications, it is likely that, by the end of the current design patent term, Uber will have changed the design of its user interfaces and will file for design protection for newer versions of the interface.

It is not explicitly apparent that Uber has filed for copyright protection for any of its intellectual property. Uber has issued several videos online.[6] These videos and other ads produced by Uber would be protectable under common law copyright protection if they are not registered with the United States Copyright Office. Uber could also potentially register its source codes with the Copyright Office, however, it is unlikely that it has done so because Uber does not release its software to the public.

Over the past few years, Uber has fallen under a lot of criticism from the courts, regulatory authorities, its drivers and its customers. The courts and regulatory authorities have attempted to regulate Uber by requiring it to change its policies regarding its drivers and conform with the laws applying to taxi services. Drivers in almost every state at which Uber operates has filed a law suit attempting to obtain the benefits and protections that they would receive if they were classified as employees rather than independent contractors. Customers have taken to social media to complain about Uber’s surge pricing. Most recently, Uber has fallen under even more scrutiny after a variety of criminal charges imposed on drivers, some as severe as murder and sexual assault. With all of these issues surrounding Uber’s name, it is important for Uber to attempt to correct some of these negative perceptions in order to maintain its position as the most successful startup company today. Uber has begun to do this by settling cases with its drivers and regulatory agencies. However, Uber claims no responsibility for any of the criminal acts that have occurred by the hands of Uber drivers. Further, Uber continues to patent and utilize its methods for calculating and imposing surge pricing, which has forced customers to use similar services such as Lyft and SideCar. It is important for Uber to take action after these events as it could lead to a sharp decline in driver requests and result in Uber losing its high valuation.

Keep an eye out for upcoming articles analyzing Uber’s patent holdings.

_______________

[1] See, for example, U.S. Patent No. 9,305,371 (filed Mar. 14, 2013), U.S. Patent No. 9,066,206 (filed Mar. 15, 2013), U.S. Patent No. 9,235,775 (filed Jun. 8, 2014), and U.S. Patent No. 9,135,353 (filed Jun. 25, 2012).

[2] In the coming weeks we plan a follow-up article that looks at Uber’s patents with an eye toward whether they are likely to past muster under 35 USC 101 as it is currently being interpreted at the USPTO and in federal courts.

[3] US Trademark Registration Numbers: 86893551, 86893553, 86893556, 86893559.

[4] US Trademark Registration Numbers: 86893562, 86893565, 86893567, 86893570, 86893572, 86893576.

[5] See U.S. Patent No. D750110 (filed Nov. 8, 2012), U.S. Patent No. D734349 (filed Nov. 8, 2012), U.S. Patent No. D724620 (filed Nov. 8, 2012).

[6] See https://www.youtube.com/watch?v=sZ7Lau6-2to

 

The Author

Audrey Ogurchak

Audrey Ogurchak is a 3L at Syracuse University College of Law, pursuing a JD/MS in Computer Science. Audrey also received a B.S. in Chemical Engineering from Ohio University. She is currently focused in patent law and technology transactions. Audrey has spent a portion of her legal education assisting start up companies navigate through intellectual property, regulatory and market issues. She is currently the Technology Editor for Syracuse University's Journal of Science and Technology Law and the President of Syracuse's Intellectual Property Law Society.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 1 Comment comments.

  1. Prizzi's Glory July 23, 2016 9:48 am

    9,305,371 was examined in Art Unit 2612.
    9,066,206 was examined in Art Unit 2641.
    9,235,775 was examined in Art Unit 2665.
    9,135,353 was examined in Art Unit 2168.