UrbanRide, Inc. v. Urban Worldwide, Inc.

CourtDistrict Court, S.D. New York
DecidedMarch 31, 2026
Docket1:23-cv-06999
StatusUnknown

This text of UrbanRide, Inc. v. Urban Worldwide, Inc. (UrbanRide, Inc. v. Urban Worldwide, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
UrbanRide, Inc. v. Urban Worldwide, Inc., (S.D.N.Y. 2026).

Opinion

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK ---------------------------------------------------------------------- X : URBANRIDE, INC., : : Plaintiff, : : 23-CV-6999 (JAV) -v- : : OPINION AND ORDER URBAN WORLDWIDE, INC., : : Defendant. : : ---------------------------------------------------------------------- X JEANNETTE A. VARGAS, United States District Judge:

Since 2000, Plaintiff has provided chauffeured limousine service to customers under the name “UrbanRide.” It obtained a registered federal trademark for the UrbanRide mark in 2011. It brings this suit against Defendant, which operates a similar ground travel services company under the name “Urban Worldwide. Plaintiff asserts claims for trademark and service mark infringement under the Lanham Act and New York common law, false designation of origin under the Lanham Act, unfair competition under New York common law, and trademark dilution in violation of Section 360-1 of the New York General Business Law. ECF No. 1 (“Compl.”), ¶¶ 25-51. Presently before the Court is Defendant’s motion for summary judgment. ECF No. 45. For the reasons set forth below, the motion for summary judgment is GRANTED IN PART AND DENIED IN PART. BACKGROUND1 Plaintiff (“UrbanRide” or “UR”) provides chauffeured ground transportation services. Pl. 56.1 Response, ¶ 23. It was founded in 1999 and initially based in

New York. Id., ¶ 21. UrbanRide does not own its own fleet of cars, but instead operates by arranging transportation services through subcontractors. Id., ¶ 24. The majority of its bookings are arranged on behalf of individuals by airline crew scheduling departments, corporate event planners, and travel agencies. Id., ¶ 26. The U.S. Patent and Trademark Office (“PTO”) granted Plaintiff’s registration for the trademark “UrbanRide” on September 6, 2011, in connection

with “[c]oordinating travel arrangements for individuals and for groups; [l]imousine services.” ECF No. 51-1 at 4. In doing so, the PTO did not require proof of secondary meaning. See id. at 2-6. The registration indicates that the mark was first used in commerce in November 2000. Id. at 4. Plaintiff’s “UrbanRide” registration “consists of standard characters without claim to any particular font style, size, or color.” Id.

1 The Court draws its account of the facts from the parties’ submissions on summary judgment, including Defendant’s Local Rule 56.1 Statement, ECF No. 48 (“Def. 56.1 Statement”) and Plaintiff’s Response to Defendant’s Local Rule 56.1 Statement, ECF No. 55 (“Pl. 56.1 Response” or “Response”). Citations to a party’s Local Rule 56.1 statement incorporate the evidentiary materials cited therein. Where Plaintiff indicates in its Response that a fact is uncontested, the Court finds such facts to be true and cites directly to Plaintiff’s Response. See S.D.N.Y. Local Civil Rule 56.1(c) (“Each numbered paragraph in the statement of material facts set forth in the statement required to be served by the moving party will be deemed to be admitted for purposes of the motion unless specifically denied and controverted by a correspondingly numbered paragraph in the statement required to be served by the opposing party.”). Defendant (“UW” or “Urban Worldwide”) similarly operates a vehicle and transportation services business. Def. 56.1 Statement, ¶ 6. David Uziel, the owner of Urban Worldwide, founded the predecessor company, Urban Limos, under

California law in 2012. Id., ¶¶ 8-15. Defendant has operated in California and changed its name several times over the last 15 years. From 2012 to 2016, Urban Limos employed three drivers in the San Francisco area. Pl. 56.1 Response, ¶¶ 10-11. In 2016, Urban Limos changed its name to Urban BCN. Id., ¶ 12. In 2018, Urban BCN amended its articles of incorporation to change its name from Urban BCN to Urban BCN

Worldwide, and in 2022 changed its name again to Urban Worldwide. Id., ¶¶ 13, 15. The name change purportedly reflected a shift towards worldwide transportation services by using subcontractors or “affiliates.” Id., ¶¶ 13-14. Urban Worldwide arranged for these affiliates to provide transportation to its clients in other cities while billing and communicating with clients directly. Id., ¶ 14. After rebranding as Urban Worldwide, Defendant began marketing itself under a logo which contains “URBAN” in a large, stylized font above the word

“WORLDWIDE.” See ECF Nos. 46-4, 51-11. The letter “A” in the word “URBAN” is in a customized blue font where the middle horizontal bar extends from the lower left corner across the letter “N.” See ECF Nos. 46-4, 51-11. LEGAL STANDARD A grant of summary judgment is proper when ‘‘there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.’’ Fed. R. Civ. P. 56(a). “A fact is ‘material’ for these purposes when it might affect the outcome of the suit under the governing law. An issue of fact is ‘genuine’ if the evidence is such that a reasonable jury could return a verdict for the nonmoving

party.” Jeffreys v. City of New York, 426 F.3d 549, 553 (2d Cir. 2005) (cleaned up). The moving party has the burden of demonstrating the absence of a disputed question of material fact. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986). The Court must view all facts “in the light most favorable” to the non-moving party, and draw all inferences in their favor. Abramson v. Pataki, 278 F.3d 93, 101 (2d Cir. 2002) (citation omitted). “[T]he judge must ask . . . not whether . . . the

evidence unmistakably favors one side or the other but whether a fair-minded jury could return a verdict for the plaintiff on the evidence presented.” Anderson, 477 U.S. at 252. DISCUSSION A. Trademark Infringement under the Lanham Act The Lanham Act, 15 U.S.C. § 1051 et seq., creates a federal trademark registration system, functioning to protect the owner of a protected mark (the

“trademark”) from others using similar marks, where consumer confusion or dilution of the protected mark is likely. See 15 U.S.C. § 1051(a). The registrant must be the first to either use the mark or demonstrate in writing a good faith intent to do so in the future, to be granted exclusive rights to that trademark. Id. § 1051(a)-(b). The mark must also be considered “distinctive,” meaning that the mark serves as a specific identifier to consumers of a product or service’s source and is sufficiently dissimilar from other marks. Id. § 1052(d), (f). When a registered mark is in use for five consecutive years subsequent to the date of registration, and there has been no proceeding invalidating those rights during that time period, the mark becomes

incontestable. Id. § 1065. “To state a claim for trademark infringement under the Lanham Act, a plaintiff must allege sufficient facts to establish: (1) that the plaintiff’s mark is entitled to protection, and (2) that the defendant’s use of its mark is likely to cause consumers confusion as to the origin or sponsorship of its goods.” Nat’l Acad. of Television Arts & Scis., Inc. v. Multimedia Sys. Design, Inc., 551 F. Supp. 3d 408, 426-27 (S.D.N.Y. 2021)

(cleaned up). A certificate of registration with the Patent and Trademark Office is prima facie evidence that the mark is entitled to protection. Guthrie Healthcare Sys. v.

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Bluebook (online)
UrbanRide, Inc. v. Urban Worldwide, Inc., Counsel Stack Legal Research, https://law.counselstack.com/opinion/urbanride-inc-v-urban-worldwide-inc-nysd-2026.