Uberre, Inc. v. Uber Technologies, Inc.

Mailed: March 2, 2026
Opposition No. 91286153
Uberre, Inc.
v.
Uber Technologies, Inc.
By the Trademark Trial and Appeal Board:1
This case now comes up on Applicant’s renewed motion, filed September 11, 2025,
for judgment as a discovery sanction.2 The motion is fully briefed.3
I. Jurisdiction and Procedure in Board Proceedings
Because it may assist with understanding the outcome we reach, and because
Opposer’s filings in this case traverse a number of substantive allegations and
accusations that go well beyond trademark registration matters, we begin by
highlighting the relatively narrow authority of the United States Patent and
1 This decision is made by a panel of three Administrative Trademark Judges of the
Trademark Trial and Appeal Board. See Trademark Rule 2.127(c), 37 C.F.R. § 2.127(c)
(“Motions disposed of by orders entitled ‘By the Trademark Trial and Appeal Board’ have the
same legal effect as orders by a panel of three Administrative Trademark Judges of the
Board.”).
2 32 TTABVUE. Citations to the record or briefs in this order are to the publicly available
documents in the Board’s online docketing system, TTABVUE.
3 Applicant’s “Notice of Completed Briefing,” filed September 19, 2025, is construed as
Applicant’s reply brief. See Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB

Opposition No. 91286153
2
Trademark Office (the “USPTO”) and the Trademark Trial and Appeal Board (the
“Board”).
A. Jurisdiction in Board Proceedings
“Under the [Trademark Act, also known as the] Lanham Act, 60 Stat. 427, as
amended, 15 U.S.C. § 1051 et seq., an applicant can seek to register a trademark
through an administrative process within the [USPTO].” B & B Hardware, Inc. v.
Hargis Indus., Inc., 575 U.S. 138, 141 (2015). “[Trademark a]pplications to the
USPTO are first subject to refusal by a USPTO examiner, following which
applications are subject to refusal by way of an opposition proceeding.” Mountain
Gateway Order, Inc. v. Va. Comty. Coll. Sys., No. 91283412, 2024 WL 2863444, at *4
(TTAB 2024). For example, “if another party believes that the PTO should not
register a mark because it is too similar to its own, that party can oppose registration
before the Trademark Trial and Appeal Board.” B & B Hardware, 575 U.S. at 141.
The Board “determine[s] and decide[s] the respective rights of registration.”
Trademark Act Section 17(a), 15 U.S.C. § 1067(a). “The Board’s jurisdiction is strictly
limited to determining the ‘right to register.’” Conolty v. Conolty O’Connor NYC LLC,
No. 91206045, 2014 WL 3427346, at *11 (TTAB 2014);4 see also Trademark Act
Sections 17, 18, 20, and 24, 15 U.S.C. §§ 1067, 1068, 1070, and 1092; In re Marriott
Corp., 517 F.2d 1364, 1367 (CCPA 1975) (“[T]he issue in an opposition is the
applicant’s right to register and not opposer’s right to exclusive use.”). “[R]egistration
4 As further discussed below, see III.A., infra, the Board has authority over the conduct of its
proceedings.

Opposition No. 91286153
3
of a trademark reflects no endorsement by the USPTO of the applicant’s products or
services.” McDermott v. S. F. Women’s Motorcycle Contingent, No. 91169211, 2006
WL 2682345, at *6 (TTAB 2006), aff’d, 240 F. App’x 865 (Fed. Cir. 2007).
Case law has articulated several areas to which the Board’s authority does not
reach. “[T]he Board . . . does not have authority to determine whether a party has
engaged in criminal or civil wrongdoings.” McDermott, 2006 WL 2682345, at *6 (The
Board is not the proper venue for bringing opposer’s objections regarding applicant’s
conduct vis-à-vis men, such as allegations that applicant bans men from public
streets during applicant’s parade and that “large numbers of ‘Dykes on Bikes’ [use]
THEIR MOTORCYCLES AS OFFENSIVE WEAPONS AGAINST MEN”). The Board
is not authorized to determine the right to use, nor may it decide broader questions
of infringement or unfair competition. FirstHealth of the Carolinas Inc. v. CareFirst
of Md. Inc., 479 F.3d 825, 828 (Fed. Cir. 2007). The Board also does not possess
injunctive powers to prohibit a party from using its mark, and cannot award
monetary damages or attorneys’ fees. See Gen. Mills Inc. v. Fage Dairy Processing
Indus. SA, No. 91118482, 2011 WL 6001095, at *3 (TTAB 2011), judgment altered by
settlement, No. 06:11-CV-01174-(DEP) (N.D.N.Y. Nov. 5, 2013) & 2014 WL 343267
(TTAB 2014) (non-precedential)). The USPTO “should [not] undertake to police all
the different regulatory statutes to ensure compliance therewith for that is manifestly
not its function nor is it properly equipped to do so.” In re Stellar Int’l, Inc., 1968 WL
8159, at *3 (TTAB 1968).

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4
Given the Board’s jurisdiction, opposers are restricted to asserting only statutory
grounds which negate the applicant’s entitlement to registration. Young v. AGB
Corp., 152 F.3d 1377, 1380 (Fed. Cir. 1998); Mountain Gateway Order, 2024 WL
2863444, at *5. An opposer may not rely on any claims not raised, or deemed raised,
in the pleadings as the basis of its opposition. See Fed. R. Civ. P. 15(b)(2); see also
Syngenta Crop Protection Inc. v. Bio-Chek LLC, No. 91175091, 2009 WL 691309, at
*1, n.3 (TTAB 2009). The Board provides a list of examples of available statutory
grounds in its publicly available procedural manual, the TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)5 in TBMP § 309.03(c)(1) (2025). One
such example is likelihood of confusion. See id. (“Trademark Act Section 2(d), 15
U.S.C. § 1052(d): That defendant’s mark so resembles a mark registered in the Office,
or a mark or trade name previously used in the United States by another and not
abandoned, as to be likely, when used on or in connection with the goods or services
of the defendant, to cause confusion, or to cause mistake, or to deceive.”).6
Another such statutory ground for applications having an “intent-to-use” filing
basis under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), is that the defendant
did not have a bona fide intent to use the mark in connection with the identified
goods/services as of the filing date of the application. See id.7 Yet another such ground
5 The TBMP is available at https://tbmp.uspto.gov/RDMS/TBMP/current.
6 “Defendant” in this section refers to the applicant, because when an applicant’s application
for registration is opposed, the applicant stands in the position of the “defendant” in the
Board’s opposition proceeding. See Trademark Rule 2.116(b), 37 C.F.R. § 2.116(b) (the
“applicant in an opposition proceeding . . . shall be in the position of defendant”).
7 Though the involved application is an “intent-to-use” application, lack of bona fide intent to
use on any basis is not a pleaded ground in this proceeding. See 1 TTABVUE.

Opposition No. 91286153
5
is lack of a bona fide intent to use the mark in lawful commerce: If the goods/services
on which a mark is intended to be used are unlawful, there can be no bona fide intent
to use the mark in lawful commerce. In re JJ206, LLC, No. 86474701, 2016 WL
7010624, at *2 (TTAB 2016) (refusing intent-to-use application for marijuana devices
prohibited by federal statute); John W. Carson Found. v. Toilets.com, Inc., No.
91181092, 2010 WL 1233881, at *9 (TTAB 2010) (bona fide intent to use legally
lacking where nationwide permanent injunction enjoined applicant from making the
use required to obtain its federal trademark registration).8
Allegations of “theft,” however—which figure prominently in Opposer’s response
to the instant motion9—fall within the subject-matter of criminal law.10 “Theft” of a
8 “Due to a proliferation of federal regulatory acts” with which the Board “ha[s] little or no
familiarity,” the unlawful use doctrine is narrowly applied. In re Stanley Bros. Soc. Enters.,
LLC, No. 86568478, 2020 WL 3288093, at *5 (TTAB 2020); see also Gen. Mills, Inc. v. Health
Valley Foods, No. 91076303, 1992 WL 296518, at *4 (TTAB 1992) (the USPTO is not
mandated by the case law, nor is it in the interest of justice or common sense, to adopt a
blanket policy of finding every possible technical violation of a federal regulation when
considering unlawful use); In re Stellar Int’l, Inc., 1968 WL 8159, at *3 (there is no blanket
policy or requirement of the USPTO to “undertake to police all the different regulatory
statutes”). “Generally, the USPTO presumes that an applicant’s use of a mark in commerce
is lawful under federal law.” In re Brown, No. 86362968, 2016 WL 4140917, at *2 (TTAB
2016).
Establishing a claim of unlawful use requires pleading, and ultimately proving, that (1)
noncompliance has been previously determined by a court or agency with competent
jurisdiction under the involved federal statute; or (2) there has been a per se violation of a
federal statute regulating the applicant’s application-related activities. See In re Brown, 2016
WL 4140917, at *2; Satinine Societa in Nome Collettivo di S.A. e M. Usellini v. P.A.B. Produits
et Appareils de Beaute, No. 92011989, 1981 WL 48126, at *6 (TTAB 1981). The fact that the
provision of a product or service may be lawful within a state is irrelevant to the question of
federal registration when it is unlawful under federal law. In re Brown, 2016 WL 4140917,
at *1.
9 See 33 TTABVUE.
10 See BLACK’S LAW DICTIONARY (12th ed. 2024) (having the subject-matter tag “Criminal
law,” “theft” is defined as “[t]he wrongful taking and removing of another’s personal property
with the intent of depriving the true owner of it; larceny.”).

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trademark or anything else is not an available statutory ground upon which the
Board may refuse registration. See, e.g., Trademark Act Section 13, 15 U.S.C. § 1063;
McDermott, 2006 WL 2682345, at *6; see also C.H. Stuart Inc. v. S. S. Sarna, Inc.,
1980 WL 39359, at *1 (TTAB 1980) (opposer sanctioned for serving “[im]proper and
[ir]relevant” interrogatories which sought information dealing with whether officers
of applicant have been convicted of a felony and whether applicant has ever been a
party to any proceeding by the U. S. government or any agency, department or
political subdivision, which were “oppressive and nothing short of harassment of
applicant” as not relevant to the specific issues in the case).
B. Applicable Board Procedures
In accordance with Trademark Rule 2.116(a), “[e]xcept as otherwise provided, and
wherever applicable and appropriate, procedure and practice in inter partes
proceedings shall be governed by the Federal Rules of Civil Procedure.” 37 C.F.R.
§ 2.116(a); see also Trademark Rule 2.120(a)(1), 37 C.F.R. § 2.120(a)(1) (wherever
appropriate, the Federal Rules of Civil Procedure relating to, inter alia, discovery,
are applicable to Board inter partes proceedings except as otherwise provided).
Responses to interrogatories and requests for production of documents must be
served within thirty days from the date of service of such discovery requests, unless
extended upon stipulation of the parties, or upon motion granted by the Board, or by
order of the Board. Trademark Rule 2.120(a)(3), 37 C.F.R. § 2.120(a)(3).
Although evidentiary matters pertain to matters of proof, the documents produced
and responses served in the context of discovery are generally requested for purposes

Opposition No. 91286153
7
that include potential introduction of those documents and responses as evidence at
trial. Accordingly, a responding party’ should bear that purpose in mind. See Panda
Travel Inc. v Resort Option Enters., Inc., No. 91174767, 2009 WL 5253036, at *2
(TTAB 2009) (“Each party has a duty to make a good faith effort to satisfy the
reasonable and appropriate discovery needs of its adversary.”).
Generally, objections to responding to discovery on the basis of confidentiality are
improper. The Board’s Standard Protective Order is automatically in place in this
proceeding and allows parties to protect confidential information by appropriately
designating it as such. See Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g)
(automatically imposing the Board’s Standard Protective Order).11
Submissions must be made to the Board electronically via ESTTA and TTAB
Center. Trademark Rule 2.126(a), 37 C.F.R. § 2.126(a). In addition, Trademark Rules
2.119(a) and (b), 37 C.F.R. § 2.119(a) and (b), require that every submission filed in a
proceeding before the Board must be served upon the other party or parties, and
proper proof of such service must be made. Parties or their attorneys or other
authorized representatives may telephone the Board to inquire about the status of a
case or to ask for procedural information, but not to discuss the merits of a case or
any particular issue. TBMP § 105.
Strict compliance with the Trademark Rules of Practice and, where applicable,
the Federal Rules of Civil Procedure, is required of all parties before the Board,
11 The Board’s Standard Protective Order may be found at a link from the Board’s webpage:
https://www.uspto.gov/trademarks/ttab.

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8
whether or not they are represented by counsel. McDermott, 2006 WL 2682345, at *1,
n.2. Consequently, “it is generally advisable for a person who is not acquainted with
the technicalities of the procedural and substantive law involved in an opposition
proceeding to secure the services of an attorney who is familiar with such matters.”
Id.
Furthermore, “parties to proceedings before the Trademark Trial and Appeal
Board . . . are required to conduct their business with decorum and courtesy.”
Trademark Rule 2.192, 37 C.F.R. § 2.192. “[M]aking ad hominem attacks on opposing
counsel and Board personnel” constitute lack of decorum and courtesy, and may
justify sanctions. MySpace, Inc. v. Mitchell, No. 91181141, 2009 WL 1303469, at *1-
2 (TTAB 2009) (judgment sanction entered on second motion for sanctions following
failure to serve discovery responses and continued personal attacks on opposing
counsel, notwithstanding prior order warning applicant not to do so).
II. Background
Opposer challenges registration of the mark in Application Serial No. 97200373
for the standard character mark UBER TRAVEL12 on the ground of likelihood of
confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052, and pleads ownership
of Application Serial No. 97397208 for the standard character mark ÜBER. 1
12 The involved application seeks registration of the involved mark on the Principal Register;
was filed on January 3, 2022 under Trademark Act Section 44(d), 15 U.S.C. § 1126(d); and,
was amended to change the filing basis to Trademark Act Section 1(b), 15 U.S.C. § 1051(b),
on September 24, 2022, with a claim of priority under Trademark Act Section 44(d).
“TRAVEL” is disclaimed.

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TTABVUE. Applicant denies the salient allegations of the notice of opposition and
pleads the affirmative defense of unclean hands. 7 TTABVUE.
On April 4, 2024, the Board granted as conceded Applicant’s unopposed motion
to compel discovery. 9 TTABVUE (the “Compel Order”). The Board allowed Opposer
thirty days to serve responses and responsive documents, without objection on the
merits, to Applicant’s interrogatories and requests for production. The Board warned
Opposer that its failure to serve full responses to the discovery requests as ordered
could result in sanctions. Id. at 2.
On May 6, 2024, Opposer served written responses and produced some
documents. 14 TTABVUE 2; 15 TTABVUE. On May 31, 2024, Applicant moved for
dicovery sanctions in the form of judgment (“First Motion for Discovery Sanctions”).
10 TTABVUE (confidential motion); 15 TTABVUE (redacted motion for public
viewing).13
In its September 30, 2024 order on Applicant’s First Motion for Discovery
Sanctions, the Board found that Opposer’s produced documents, although timely,
were “entirely irrelevant and non-responsive” and that its responses were “woefully
deficient” and in “clear violation of” Trademark Rule 2.192, 37 C.F.R. § 2.192, for
including “egregiously impertinent information” and being “inappropriate in tone.”
14 TTABVUE 7-15 (“First Sanctions Order”). As a consequence, the Board granted
Applicant’s First Motion for Discovery Sanctions and entered sanctions against
13 Applicant’s First Motion for Discovery Sanctions is fully briefed. 12, 13 TTABVUE.

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Opposer, which included 1) ordering Opposer and its then counsel14 to review
pertinent rules and procedural guidance; 2) ordering Opposer to serve revised
responses and produce responsive documents to many of Applicant’s discovery
requests within thirty days of the Board’s order; 3) prohibiting Opposer from
“including impertinent, irrelevant, or non responsive information” in its responses; 4)
prohibiting Opposer from producing “non-responsive or irrelevant” documents as part
of its document production; 5) prohibiting Opposer from “relying at trial on any
documents requested by Applicant in its document requests dated December 18,
2024, which were not produced prior to May 31, 2024”; and 6) ordering Opposer and
its counsel to “conduct themselves with decorum and courtesy throughout the
remainder of this proceeding.” Id. at 15-17. In addition, Opposer was warned that “to
the extent it fails to fully comply with this order, Applicant’s remedy may lie in an
additional motion for sanctions, including judgment.” Id. at 18.
On November 19, 2024, a second motion for discovery sanctions in the form of
judgment followed, which Applicant supplemented on December 31, 2024 and
January 16, 2025 to include communications from Opposer received by Applicant and
Applicant’s counsel (“Second Motion for Discovery Sanctions”). 17, 21, 25 TTABVUE.
On August 5, 2025, in view of, inter alia, the withdrawal of Opposer’s counsel and
that denial of the extension “could potentially result in entering judgment sanctions,”
14 On January 6, 2025, the Board granted the request by Opposer’s counsel to withdraw as
counsel. 22 TTABVUE. Between November 19, 2024 and August 5, 2025, proceedings were
suspended in relation to Opposer’s motion to extend time to comply with the First Sanctions
Order, the request by Opposer’s counsel to withdraw as counsel, and Applicant’s second
motion for sanctions. 18, 22, 27, 30 TTABVUE.

Opposition No. 91286153
11
the Board extended Opposer’s time to comply with the First Sanctions Order by thirty
days and found moot Applicant’s Second Motion for Discovery Sanctions, filed
November 19, 2024. 30 TTABVUE (“Extension Order”). In its Extension Order, the
Board warned the parties to “limit their submissions to discussion of the legal
disputes at issue,” stating that the Board has the discretion to deny consideration to
submissions that do not relate to the relevant issues in this proceeding.” 30
TTABVUE 5-6 (citing Fed. R. Civ. P. 11 (b)(1)-(2) (parties must file motions and other
papers that are “not being presented for any improper purpose, such as to harass,
cause unnecessary delay, or needlessly increase the cost of litigation ... [and] the
claims, defenses, and other legal contentions are warranted by existing law or by a
nonfrivolous argument for extending, modifying, or reversing existing law or for
establishing new law”)).
On August 28, 2025, Opposer submitted an eleven-page “Response” to the
Extension Order.15
Now before us is Applicant’s third motion for judgment as a discovery sanction
under Trademark Rules 2.120(h(1) and 2.120(h)(2), filed September 11, 2025 (“Third
Motion for Discovery Sanctions”), renewing its Second Motion for Discovery Sanctions
and advising that, other than Opposer’s August 28, 2025 submission to the Board,
Opposer has “ignored” the directive of the Board’s Extension Order. 32 TTABVUE 2.
15 Other than as discussed below, see III.C., infra, Applicant’s “Response,” filed August 28,
2025 (31 TTABVUE), which contains no request for relief or grounds in relation to the Board’s
August 8, 2025 order, is denied consideration as procedurally improper. See Fed. R. Civ.
P. 7(b) (motions must include relief and grounds); see also Trademark Rule 2.127(a), 37 C.F.R.
§ 2.127(a) (“Every motion . . . shall contain a full statement of the grounds”).

Opposition No. 91286153
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III. Sanctions16
A. Legal Standard
The Board has the power to enter appropriate sanctions, other than attorneys’ fees
or other expenses, against a party under, inter alia, Trademark Rules 2.120(h)(1) and
(h)(2), 37 C.F.R. § 2.120(h)(1) and (h)(2), and Fed. R. Civ. P. 37(b)(2). See, e.g., SFM,
LLC v. Corcamore, LLC, 978 F.3d 1298, 1302, 1307-08 (Fed. Cir. 2020) (referring to
the Board’s issuance of sanctions under Trademark Rule 2.120(h) and its “inherent
authority to control its cases and docket”); MHW Ltd. v. Simex,
Aussenhandelsgesellschaft Savelsberg KG, No. 91093359, 2000 WL 33416861, at *2
(TTAB 2000) (relying on the rule since redesignated as Trademark Rule 2.120(h)(1)
and Fed. R. Civ. P. 37(b)(2)); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical
Mfg. Co., No. 91095170, 2000 WL 1300412, at *7 (TTAB 2000) (Trademark Rule
2.120([h])(1)).
If a party fails to comply with an order of the Trademark Trial and Appeal Board
relating to discovery, including an order compelling discovery, the Board may order
appropriate sanctions as provided in Rule 37(b)(2) of the Federal Rules of Civil
Procedure and Trademark Rule 2.120(h)(1), including entry of judgment. If a party
fails to provide any response to a set of interrogatories or to a set of requests for
production of documents and things, and such party or the party’s attorney or other
authorized representative informs the party seeking discovery that no response will
16 We have considered the parties’ arguments on the contested motion, but do not repeat or
discuss all of their arguments, except as necessary to explain our order. Guess? IP Holder LP
v. Knowluxe LLC, No. 92060707, 2015 WL 9702438, at *1 (TTAB 2015).

Opposition No. 91286153
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be made thereto, the Board may enter appropriate sanctions, including entry of
judgment, as provided in Rule 37(b)(2) of the Federal Rules of Civil Procedure and
Trademark Rule 2.120(h)(2). Fifth Generation Inc. v. Titomirov Vodka LLC, No.
91226034, 2019 WL 5678392, at *5 (TTAB 2019).
The sanction of judgment is a harsh remedy, but it is proper where a less drastic
remedy would be ineffective and strong evidence exists that a party has willfully
evaded Board orders, rules, and procedures. SFM, 978 F.3d at 1307-08 (affirming
entry of default judgment); Fifth Generation, 2019 WL 5678392, at *6-7 (entering
judgment as a sanction for failing to comply with the Board’s orders and pattern of
avoiding discovery obligations where the lesser sanctions already imposed had little
effect); MySpace, 2009 WL 1303469, at *1-2 (judgment sanction for failure to comply
with Board’s orders concerning discovery and ordering that applicant refrain from ad
hominem attacks); TBMP § 527.01(b).
In addition, the Board’s authority over the conduct of the proceedings Congress
statutorily empowers it to entertain includes the authority to enter appropriate
sanctions, including entry of judgment. SFM, 978 F.3d at 1302; Carrini Inc. v. Carla
Carini S.R.L., No. 9187686, 2000 WL 1923320, at *4-5 (TTAB 2000). The factors
considered in assessing sanctions under this authority are (1) bad faith conduct; (2)
willful disobedience of Board orders; (3) length of delay or clear pattern of delay; (4)
due warning that sanctions may be entered; (5) reasons for noncompliance; and (6)
effectiveness of lesser or alternative sanctions. Carrini, 2000 WL 1923320, at *5.

Opposition No. 91286153
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B. Third Motion for Discovery Sanctions
Opposer violated the Compel Order, the First Sanctions Order, and the Extension
Order by failing to serve responses or responsive documents to several discovery
requests. Opposer has refused to cooperate in the discovery process for over two
years.17 Opposer’s discovery violations are repeated, egregious, and demonstrate
Opposer’s intent to thwart Applicant’s discovery of information and documents the
Board has already determined are discoverable.18 There is no reason to assume that,
given additional opportunities, Opposer will fulfill its obligations under the Federal
and Trademark Rules and the Board’s orders.19 Rather, in opposing the Third Motion
for Sanctions, Opposer states, under the signature of its “Chairperson,” Brent Ritz,
“I am not to involve myself further with this case as it is [a] criminal matter,”
apparently referring to a “referr[al]” to “prosecutors and law enforcement” allegedly
17 On December 18, 2023, Applicant served on Opposer the discovery requests at issue. 8
TTABVUE 26-54.
18 See 14 TTABVUE 16 (First Sanctions Order, entering sanctions as to discovery requests
which are relevant and proportional to the needs of the case).
19 Opposer has repeatedly indicated that no response will be made to Applicant’s discovery
requests. See, e.g., 26 TTABVUE 6 (“As this is a criminal matter and regulatory matter with
the Applicant, . . . the opposer as a matter of law is required to submit the information to
Regulators and not interfere . . . or cooperate with any third parties . . . I must respectfully
decline any request to violate the law, as such actions constitute a criminal offense on the
part of the requester.”); 28 TTABVUE 4 (“Any request of me to supply any information . . .
are refused in their entirety. I have no choice in the matter. They are a violation of numerous
laws and agreements that I have with the Government. Moreover, requests and any threats
real or perceived to me to acquire said information violate numerous laws. . . Whatever I am
working on for President Trump (your boss, and by law, has Full Legal Authority over every
Federal Agency, including the USPTO . . is none of your business or [Applicant’s] business.”);
31 TTABVUE 5 (“The USPTO . . . is interfering with other Department of Justice ongoing
investigations and prosecutions related [to Applicant].”). To the extent Opposer asserts that
the Board’s Standard Protective Order is insufficient to meet its particular reason for failing
to provide responses and/or responsive documents, Opposer has not moved for a protective
order. See Trademark Rule 2.120(g), 37 C.F.R. § 2.120(g); TBMP § 526.

Opposition No. 91286153
15
for the investigation of Applicant for its lack of a “CA-USDOJ Seller of Travel
Registration,” or possibly Applicant’s alleged “attempt[ ] to steal [Opposer’s] business
through THEFT [for which t]hey are being stopped from doing so by President Trump,
Governor Newsom, [t]he USDOJ and CA-USDOJ.”20 In addition, Opposer indicates
that its Chairperson has a certain medical diagnosis, and, “[a]t this juncture, . . . I
acknowledge that the relevant time is approaching.”21
Accordingly, Applicant’s motion for discovery sanctions in the form of judgment
is granted under Trademark Rule 2.120(h).
C. Board’s Authority to Sanction
In addition to its numerous discovery violations, Opposer has repeatedly ignored
other Board orders, rules, and procedures. This conduct, taken as a whole, also
warrants the sanction of judgment pursuant to the Board’s authority over the conduct
of the proceedings to enter sanctions. Opposer demonstrates in its response to the
Third Motion for Discovery Sanctions its continuation of a pattern of a failure to
“conduct itself with decorum and courtesy,” as required by Trademark Rule 2.192 and
the First Sanctions Order, by use of improper and inflammatory language and ad
20 33 TTABVUE 2-4. Parties must notify the Board of any pending civil actions or Board
proceedings involving the parties, the same or related marks, or any issues of law or fact
which are also in this proceeding See Trademark Rule 2.106(b)(3)(i), 37 C.F.R. § 2.106(b)(3)(i)
(the applicant must promptly inform the Board, in the context of the opposition proceeding,
if a counterclaim is the subject of another proceeding between the same parties or anyone in
privity therewith); see also 2 TTABVUE 7 (institution order). There is no evidence in the
record pointing to a related proceeding between the parties involving the marks at issue.
21 Id. at 8. Although it is unclear what Opposer means by “the relevant time,” it is clear that
Opposer is not asserting a medical diagnosis of its Chairperson as a reason to extend the time
to comply with Board orders.

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16
hominem attacks. In addition, Opposer continues its pattern of a failure to “limit [its]
submissions to discussion of the legal disputes at issue” as required by the Extension
Order. Following are some examples which demonstrate Opposer’s clear pattern of
delay and exceptionally inappropriate conduct:
• Opposer, in its response to the Third Motion for Discovery Sanctions, engages
in inflammatory rhetoric and far exceeds the legal disputes at issue by 1)
referring to Applicant as “CONVICTED FELONS” [sic] four times; 2)
referring to Applicant as “THIEVES” [sic]; and, 3) including, as Opposer’s
primary basis for its response to the instant motion, allegations that Applicant
is guilty or accused of “THEFT,” “FELONY WAGE THEFT,”
“INTELLECTUAL PROPERTY THEFT,” “FRAUD,” “SEXUAL
ASSAULT,” “GRAND THEFT,” and “DENIAL OF SERVICE WITH
DISABILITIES” [sic]. 33 TTABVUE 2-8 (emphasis in original).22
• Opposer asserts in its response brief that “[Applicant is] attempting to steal
our business through THEFT.” Id. at 3 (emphasis in original). As
mentioned, “theft” is not an available statutory ground upon which the Board
may refuse registration. See, e.g., Conolty, 2014 WL 3427346, at *11;
McDermott, 2006 WL 2682345, at *6; Syngenta Crop Protection, 2009 WL
691309, at *1, n.3.
• To the extent Opposer’s response brief includes accusations beyond the issue
whether sanctions are appropriate, such as that Applicant’s applied-for goods
and services are unlawful or it would be legally impossible for Applicant to
make the use required to obtain its federal trademark registration, see 33
TTABVUE 3 (“[Applicant] still does not have . . . a California Seller of Travel
License . . . [and t]hey cannot do any commerce in travel”), these arguments
are not relevant to the legal dispute presently before the Board, which is
22 Since Opposer’s counsel withdrew, every one of Opposer’s submissions has made similar
inflammatory and irrelevant statements concerning Applicant, the most recent including
improper statements directed at the USPTO. See, e.g., 26 TTABVUE 2-4 (called Applicant
“Convicted Felons,” suggested that Opposer’s counsel “was threatened by [Applicant’s]
counsel” and “fear[ed for his] safety,” and stated that the former CEO of Applicant
“threatened to kill” a person who Opposer’s Chairman stated was his friend, and that the
person was “immediately thereafter [] found dead.”); 31 TTABVUE 4-6 (called Applicant
“Terrorists”; stated that “[t]he USPTO has been previously notified that moving forward
with this proceeding in any way would be considered, [sic] Treason, [sic] and aiding and
abetting a convicted felon ([Applicant]) and would violate numerous Federal and state Laws”
and “USPTO employees are guilty of violating White House Policy [to not cooperate with
known Terrorists] and . . . are subject to prosecution for intentionally doing so.”).

Opposition No. 91286153
17
whether the Board should enter the sanction of judgment against Opposer for
its continuing lack of decorum and courtesy and its continuing failure to serve
its discovery responses and responsive documents.23
• Opposer admits to communicating directly with Applicant a week prior to filing
its response brief, 33 TTABVUE 6-7, despite Applicant stating in an earlier
submission to the Board, served on Opposer, that contact with Applicant
directly, rather than to its counsel, would be improper, 21 TTABVUE 3. Prior
communications from Opposer directly to Applicant of record include the
following excerpts which, no matter the purpose of the email, use a tone and
language entirely inappropriate in relation to Board proceedings:
o “Merry Christmas Dara,24 . . . based on my recommendation, CA-USDOJ
Attorney General and Seller of Travel Regulator Robert Bonta has a
shotgun to all your heads . . . You, anyone associated with you, your
attorneys, even breath [sic] in a way or file any document that is
displeasing to Attorney General Robert Bonta or me or fail to notify us of
any activity in writing, it will be met with the most dire consequences.” 21
TTABVUE 7-8 (December 25, 2024 email from Opposer’s email address25
to, inter alia, “dara@uber.com”).
o “Threaten me and it will be [sic] last mistake you ever make.” 24
TTABVUE 3 (Dec. 27, 2024 email from Opposer’s email address to, inter
alia, dara@uber.com and Applicant’s counsel).
o “In regard[ to Applicant’s counsel] knowingly aiding and abetting
convicted Felons to further their crimes, it would seem that they[ ] do not
value their licenses to practice law or access to the USPTO.” 21 TTABVUE
13 (Dec. 27, 2024 email from Opposer’s email address to, inter alia,
“dara@uber.com”).
23 Moreover, even if we considered Opposer’s improper arguments on the putative merits,
Opposer may not prevail on an unpleaded claim, and lack of bona fide intent to use based on
unlawful use is not a pleaded claim. See Syngenta Crop Protection, 2009 WL 691309, at *1,
n.3. Furthermore, even if Opposer had leave to amend its pleading, although it has not sought
to do so, and even if we were to consider Opposer’s improper arguments on the merits,
Opposer’s allegations of lack of a “California Seller of Travel License” – clearly a state matter
rather than a violation of federal statute -- would be insufficient to allege unlawful use. See
In re Brown, 2016 WL 4140917, at *1-2 (unlawful use based on violations of federal statutes).
24 Opposer states that Dara Khosrowshahi is the current CEO of Applicant and that
Opposer’s Chairperson has personally written to Applicant’s CEO “over fifty times.” 33
TTABVUE 7.
25 The emails from “Opposer” are from legal@uberrealestate.com, which is Opposer’s email
address of record.

Opposition No. 91286153
18
• Opposer mailed letters to the Board, without filing same through ESTTA, as
required by Trademark Rule 2.126, nor serving same on Applicant’s counsel,
as required by Trademark Rule 2.119, suggesting an attempt to improperly
discuss the merits with Board personnel. 23, 24 TTABVUE; see also 25
TTABVUE 4 (Applicant’s supplemental briefing to its Second Motion for
Discovery Sanctions, referring to the communications as “ex parte”); see also
TBMP § 105 (parties or their representatives are not to initiate
communications with Board personnel on the merits or any particular issue).
These actions demonstrate a continuing lack of courtesy and decorum and a
pattern of disobedience and violation of Board rules.
• Serving on Applicant wholly irrelevant and inflammatory discovery requests.
25 TTABVUE 8-16. These include:
o Opposer’s RFA No. 4: Admit or Deny that [named individual], recently
attended a Dinner Party, in late April, 2024, with well-known Racists,
Anti-Women’s Rights Advocates and group known for attempting to
overthrow our Democracy . . .
o Opposer’s RFA No. 5: Admit or Deny that Mark Zuckerberg is Head of the
Jewbers.
o Opposer’s RFA No. 22: Admit or Deny, [sic] that people related too [sic]
Uber Technologies, Inc (ubercab) where [sic] involved in the assault on
Paul Pelosi . . .
o Request for Production No. 6: Confirm that Muslim drivers are its largest
targeted end users and the percentage of individuals that are Muslim
drivers.
o Interrogatory No. 2: Was Uber Technologies, Inc. (ubercab) aware that Bin
Mahfouz, father of Bin Mahfouz, sponsored Michael Huffington and
Adriana Huffington, since at least 1994, when Michael Huffington ran for
Senate? Bin Mahfouz, senior, being the business partner of Salem Bin
Laden, Osama Biden Laden, older brother.
Despite being warned in the First Sanctions Order and Extension Order that the
sanction of judgment may be entered, Opposer failed to comply with these Board
orders. Accordingly, we find that Opposer willfully disobeyed prior Board orders to
limit arguments to the relevant issues and to act with decorum and courtesy despite

Opposition No. 91286153
19
due warning that the sanction of judgment may be entered. Accordingly, the entry of
sanctions against Opposer under the Board’s authority to sanction is appropriate.
We find that no lesser or alternative sanctions would be effective. In none of
Opposer’s six most recent submissions (23, 24, 26, 28, 31, 33 TTABVUE) has Opposer
stated any intent to proceed forward with this proceeding.26 To the contrary, Opposer
has repeatedly indicated that Opposer is of the belief that, due to various alleged legal
matters involving Applicant – most of which in no way relate to the involved mark or
the involved goods or services and none of which relate to the claims and defenses in
this proceeding – this proceeding, which Opposer brought, “has zero validity.”27 As
explained above, the Board is not the proper venue for bringing an opposer’s
objections to an applicant’s alleged criminal or civil wrongdoings, McDermott, 2006
WL 2682345, at *6; see also Conolty, 2014 WL 3427346, at *11. Even if it were pleaded
and applicable, the unlawful use doctrine is narrowly applied, Stanley Bros. Soc.
Enters., 2020 WL 3288093, at *5, and would not, in this case, give rise to any
purported mandatory reporting requirement on behalf of the USPTO, see Gen. Mills,
1992 WL 296518, at *4, and Stellar Int’l, 1968 WL 8159, at *3, nor in any way justify
Opposer’s clear pattern of delay and exceptionally inappropriate conduct. The Board
has repeatedly informed Opposer of its obligations in this proceeding, and Opposer’s
26 Opposer’s failures to provide discovery, see III.B., supra, are a factor in our determination
that lesser or alternative sanctions would not be effective. See also Panda Travel, 2009 WL
5253036, at *2 (duty to make a good faith effort to meet other party’s discovery needs).
27 See 28 TTABVUE 5-6 (“I recommend that the USPTO defer the case to The United States
Department of Justice and The California Department of Justice as it is their jurisdiction to
deal with convicted felons and comply with law(s). . . this hearing still has zero validity.”).

Opposition No. 91286153
20
compliance therewith is expected. See McDermott, 2006 WL 2682345, at *1, n.2
(notwithstanding opposer’s election to proceed pro se, strict compliance with the
Trademark Rules of Practice and, where applicable, the Federal Rules of Civil
Procedure, is required of all parties before the Board).
In view of Opposer’s persistent failure to comply with the Board’s prior orders
requiring Opposer to reform its behavior so as to act with decorum and courtesy and
to limit its submissions to discussion of the legal disputes at issue, the sanction of
entry of judgment under the Board’s authority over the conduct of its proceedings
now is warranted. See, e.g., MySpace, 2009 WL 1303469, at *1-2 (judgment sanction
for failure to comply with Board’s orders concerning discovery and ordering that
applicant refrain from ad hominem attacks); Carrini, 2000 WL 1923320, at *5.
IV. Decision
Accordingly, judgment is entered against Opposer, and Opposition No. 91286153
is dismissed.