The name Uber may soon become a verb for getting into trouble…”expensive” trouble. The last year of the company’s existence has been marred by seemingly one brush after another with the law or a government or angry cabbies or angry riders or angry college administrators.

Looks like Uber has raised the ire of someone else again. This time over a trademark.

Another autonomous vehicle developer- Clearpath Robotics (Ontario, Canada)-is claiming Uber infringed on its trademark, OTTO, which is the name of the company’s “newest self-driving vehicle designed exclusively for material transport.”

Clearpath’s trademark application for OTTO is dated February, 2016.

Okay, now along comes the verb for getting into expensive trouble: Uber.

In August of 2016, Uber buys a self-driving truck company (for a reported $680 million) that goes by its legal corporate name: Ottomotto, LLC.

It just so happens that in March, 2016 (one month after Clearpath’s trademark application), Ottomotto filed for the very same trademark: OTTO. The trademark, claimed Ottomotto, would be used “for cars and trucks that have limited or fully automated driving capabilities.”

Slight difference between Clearpath’s use for “newest self-driving vehicle” and Ottomotto’s use for “cars and trucks that have limited or fully automated driving capabilities”.

Ottomotto acknowledged that it had not used the mark previous to its trademark application. It also claimed that it was unaware of any other use of the trademark or if the mark had “any particular meaning or significance to the industry.” All of which are standard questions on all U.S. trademark applications. Ottomotto answered no to those questions.

Tempest in a teapot?

Although one OTTO lives and hauls freight exclusively outdoors over highways where it’ll always been seen by the public, the other OTTO lives and hauls freight exclusively indoors in warehouses where it’ll live in obscurity from public viewing.

One is part of an 18-wheel behemoth while the other is like a large-size bathroom scale. The issues seem miniscule when it comes to one being confused with the other.

Not so claims the lawsuit from Clearpath.

 

On August 24, 2016, Clearpath filed a lawsuit in “the United States District Court for the Northern District of California for infringement of the “Otto” trademark, as well as for unfair competition under federal and state law.”

According to the Cantech Newsletter, “OTTO is already in use in several GE Healthcare warehouse facilities in the United States and was recently chosen to supply self-driving OTTO vehicles for a John Deere assembly line operation in Wisconsin.

“The California Otto just launched out of stealth mode in May with 91 employees, after a period of testing its proprietary self-driving technology using trucks on highways in the San Francisco region.”

Strange that Uber, having paid over a half billion dollars for the California startup never did enough in the way of due diligence to check that what it bought had a potential problem with its trademark.

Seems Clearpath knew right away or nearly so. In its filing it stated: “Due to the highly similar nature of the marks, [Clearpath] has already received misdirected inquiries from (1) the press, including a contact requesting that someone from Clearpath participate on Sirius XM’s trucking channel to discuss “Otto self-driving trucks,” as a result of a “recent article”; (2) potential customers have communicated interest in outfitting a tractor trailer with “OTTO,” and (3) [Clearpath’s] current customers, referencing the May 2016 Wired story on Defendant’s Otto, inquired if the trucking system is related to products offered by [Clearpath]. Since the announcement of the impending acquisition of Defendant by non-party Uber, [Clearpath] has also received numerous additional inquiries evidencing actual confusion.”

Neither side has made an official commented on the dispute as of yet.

We may have to wait for more until OTTO and OTTO get their day in court.