IP Law Daily, TRADEMARK—S.D.N.Y.: ‘UrbanRide’ chauffeured transportation mark survives summary judgment challenge; dilution claim dismissed, (Apr 3, 2026)

By Ravindra Kumar Singh, B.L.

Likelihood of confusion remained triable due to the marks' similarity and overlapping services, while dilution failed for lack of blurring in the same market.

A federal district court in Manhattan, New York, has granted in part and denied in part a motion for summary judgment in a trademark dispute between two competing ground transportation service providers, dismissing the plaintiff’s dilution claim while allowing its Lanham Act infringement, false designation of origin, and related New York common law claims to proceed. The court held that genuine disputes of material fact existed on the likelihood of confusion, precluding summary judgment, but found no evidence that the defendant’s mark diluted the distinctiveness of the plaintiff’s brand (Urbanride Inc. v. Urban Worldwide, Inc., No. 1:23-cv-06999-JAV (S.D.N.Y. Mar. 31, 2026)).

Background. UrbanRide, Inc., the plaintiff, operates a chauffeured limousine and ground transportation coordination service, primarily arranging rides through subcontractors for corporate clients, airline crews, and travel agencies. The defendant, Urban Worldwide, Inc., provides similar transportation services using a network of affiliates across multiple cities.

The plaintiff owns a federally registered trademark for “UrbanRide,” registered on September 6, 2011, covering services including coordinating travel arrangements and limousine services. The mark is registered in standard characters and has achieved incontestable status through continuous use. The defendant adopted the name “Urban Worldwide” and marketed its services under a stylized logo prominently featuring the word “URBAN.” Both marks share the dominant term “Urban,” and both parties offer substantially identical chauffeured ground transportation services.

The dispute traces back to the defendant’s evolution from earlier business names to “Urban Worldwide” in 2022, reflecting its shift toward global transportation coordination. UrbanRide filed suit asserting trademark infringement and false designation of origin under the Lanham Act, as well as unfair competition and dilution under New York law. Urban Worldwide moved for summary judgment, seeking dismissal of all claims on the ground that no reasonable jury could find a likelihood of confusion or dilution.

Infringement. On the threshold issue of protectability, the court held that UrbanRide’s registered mark was entitled to protection. Citing Guthrie Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27 (2d Cir. 2016), the court noted that federal registration constitutes prima facie evidence of validity. It further observed that the mark’s incontestable status strengthened its distinctiveness at the summary judgment stage, relying on Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985).

Turning to similarity, the court rejected the defendant’s argument that the shared term “Urban” should be discounted as descriptive. Relying on Banff, Ltd. v. Federated Dept. Stores, Inc., 841 F.2d 486 (2d Cir. 1988), the court emphasized that marks must be evaluated in their entirety. It found that “UrbanRide” and “Urban Worldwide” were similar in sight and sound, particularly because they shared a dominant term and had a rhyming cadence. The court also considered the U.S. Patent and Trademark Office’s prior refusal to register the defendant’s mark based on likely confusion as persuasive.

On proximity and competition, the court found that both UrbanRide and Urban Worldwide operated in the same industry and provided identical services, which strongly supported a likelihood of confusion. Citing Virgin Enters. Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003), the court noted that direct competition increases the risk that consumers will assume a common source.

With respect to actual confusion, the plaintiff presented anecdotal evidence of confusion among dispatchers, affiliates, and service providers, including misdirected bookings and billing errors. The court also considered survey evidence showing a 14.5% confusion rate. Rejecting the defendant’s reliance on a rigid threshold, the court cited 1-800-Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2013), and held that such evidence could support a finding of confusion when combined with other indicia.

On bad faith, the court found sufficient evidence to create a triable issue. UrbanRide demonstrated that Urban Worldwide had knowledge of its mark before rebranding and failed to conduct a trademark search or consult counsel. Citing Star Indus. v. Bacardi & Co., 412 F.3d 373 (2d Cir. 2005), the court held that such facts could support an inference of intent to capitalize on the plaintiff’s goodwill, although the factor was not dispositive.

The court found that the sophistication of consumers—primarily corporate clients and travel intermediaries—favored the defendant, as such customers are less likely to be confused. However, it concluded that this factor did not outweigh the substantial evidence supporting confusion.

Balancing the factors set out in Polaroid v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), the court held that a reasonable jury could find a likelihood of confusion. It therefore denied summary judgment on the plaintiff’s Lanham Act and related state law claims.

Dilution. In contrast, the court granted summary judgment on the dilution claim under New York General Business Law § 360-l. Applying Disney Enters., Inc. v. Sarelli, 322 F. Supp. 3d 413 (S.D.N.Y. 2018), it held that the plaintiff failed to show dilution by blurring. Because both parties operated in the same market and offered similar services, the case did not involve the type of cross-market brand appropriation typically required for dilution. The court also found no evidence that UrbanRide’s mark enjoyed exceptional renown or that Urban Worldwide sought to trade on a famous brand.

Accordingly, the court dismissed the dilution claim but allowed the infringement, false designation, and unfair competition claims to proceed to trial.

The Case is No. 1:23-cv-06999-JAV.

Judge: Vargas, J.

Attorneys: Sophie Alexandra Edbrooke (Gerben Perrott, PLLC) for UrbanRide Inc. Danielle J. Reiss (Morris Duffy Alonso & Faley, LLP) for Urban Worldwide, Inc.

Companies: UrbanRide Inc.; Urban Worldwide, Inc.

Cases: Trademark NewYorkNews