By Cheryl Beise, J.D.
The federal district court in Gainesville, Florida, has temporarily enjoined Uber Technologies, Inc.—operator of the popular “Uber” ride-sharing and taxi service—from using its UBER mark in connection with its UberEVENTS service in Alachua County, in order to avoid confusion with transportation services offered in the Gainesville area by Uber Promotions, Inc. Florida company Uber Promotions was likely to succeed on its trademark infringement claims under a reverse-confusion theory, but its requested injunction preventing Uber Technologies’ use of its UBER marks throughout the state of Florida was unwarranted (Uber Promotions, Inc. v. Uber Technologies, Inc., February 16, 2016, Walker, M.).
Incorporated in 2006, Gainesville-based Uber Promotions, Inc. (“Promotions”) offered a variety of services, including promotional and event planning, web design, print media photography, modelling and talent agency, private venue rental, and “passenger transportation services, including through limousine and charter services.” Promotions claimed it had used the trademarks UBER, ÜBER, UBER PROMOTIONS, and ÜBER PROMOTIONS at least as early as 2006 in Florida, and at least as early as 2007 in interstate commerce. On October 21, 2015, it obtained a Florida trademark registration for the mark UBER PROMOTIONS for passenger transportation and vehicle charter services.
Defendant Uber Technologies, Inc. (“Tech”) is a San Francisco-based corporation that operates the well-known software application that allows people to obtain rides on demand from a nearby driver registered with Tech. Tech launched its service in 2010 as UBERCAB and began using the mark “UBER” later that year. Tech’s UBERCAB mark was federally registered on August 31, 2010 and its UBER mark was registered on June 14, 2011. Tech initially operated in a few select cities, but it expanded rapidly over the next few years, including throughout Florida. Tech started operating in Gainesville in August 2014.
On January 18, 2016, Promotions filed a complaint against Tech, asserting claims for trademark infringement and unfair competition under Section 43(a) of Lanham Act and under Florida statutory and common law. Before the court was Promotions’ request for a preliminary injunction to prohibit Tech from continuing to use its UBER marks in connection with its services throughout Florida. The court partially granted and otherwise denied the motion.
Likelihood of Success on the Merits
The court noted that of the claims brought by Promotions required a showing that it had enforceable rights in the UBER mark and Tech’s unauthorized use of UBER was likely to cause consumer confusion.
Geographic scope of protection. Promotions argued that its UBER mark was entitled to recognition throughout the state of Florida. The court disagreed. Promotions’ mark was only entitled to recognition in the actual area of use of its common law UBER mark. Promotions’ actual trade zone consisted of the area around Gainesville (and possibly Reddick, Florida, where it provided bus service to Ocala Poker and Jai Alai). Promotions’ infrequent trips to Jacksonville, Tampa, and other cities “did not mean that it was entitled to expand into each and every one of those places and all points in between,” the court said.
Even assuming that Promotions was entitled to a “zone of reasonable future expansion” beyond its core trade area in Gainesville, Promotions failed to establish that it would have expanded prior to when Tech expanded throughout Florida. The court concluded that Promotions was substantially likely to succeed in showing that it had enforceable common law rights in its “UBER PROMOTIONS” mark (and possibly “UBER”) in Gainesville and the surrounding areas.
Likelihood of confusion. The Eleventh Circuit uses a seven-factor test to determine whether a likelihood of consumer confusion exists. Because this case primarily involved reverse confusion, the court was concerned with the conditions under which a consumer would encounter the senior user’s (Promotions’) mark and believe its services were offered by or affiliated with Tech.
The factors that weighed in favor of finding of a likelihood of confusion were: (1) the similarity of the parties’ marks; (2) the relatedness of the parties’ transportation services, particularly given that Tech has been steadily expanding the types of services it offered; (3) the similarity in Internet and social media advertising methods; and (4) evidence of actual confusion. Promotions offered evidence of a few phone calls and at least two e-mails from customers looking for Tech. The factors that tipped against a finding of a likelihood of confusion included: (1) the relative conceptual weakness of Promotions’ UBER and UBER PROMOTIONS marks, in view of the perception of the German word “uber” as meaning of “super” or “ultimate”; and (2) the different sales methods used by the parties. The factor regarding Tech’s intent did not favor either side.
Although it was a “close call,” in view of the evidence of actual confusion, and the weight accorded such evidence, the court found that confusion was likely. The court concluded that Promotions was substantially likely to succeed in showing that Tech infringed on its mark by using its “UBER” marks in the Gainesville area.
Other Injunction Factors
Irreparable harm. The court determined that without injunctive relief, Promotions would be likely to suffer irreparable harm in the form of loss of reputation and goodwill in the nine or so months before trial. However, at present, the only service offered by Tech that posed an immediate threat to Promotions’ business was Tech’s UberEVENTS service. That service, which was accessed via Tech’s website instead of its app, allowed customers to purchase rides for others that could be used at a particular time in the future (such as for a wedding, party, or other event).
Balance of hardships. The court found that Promotions failed to show that the injury it would suffer absent preliminary injunctive relief outweighed the injury to Tech that would result if the court were to enjoin Tech from using its UBER mark on all services in the Gainesville area. Tech had been operating in Gainesville for almost a year and a half and had grown its business, the court noted. The cost to Tech would be “many, many times more money than Promotions could ever hope to make in profits.” In addition, Promotions waited over a year after Tech moved into the Gainesville market to file suit.
Public interest. The court also recognized that the public’s interest in having on-demand transportation would be disserved by granting the relief Promotions requested. Tech provided a lower-cost alternative to traditional taxi services, including discounts for senior citizens and college students returning home late at night. These services did not compete with Promotions’ services.
Targeted injunctive relief. The court concluded that a targeted preliminary injunction was appropriate under the circumstances. Tech was ordered to cease using its marks in connection with its UberEVENTS service in Alachua County, Florida, including blocking online bookings for UberEVENTS services in Alachua County and ensuring that no ad for UberEVENTS was placed on the Facebook page of any resident or business located in Alacha County.
The injunction also included measures intended to prevent people looking for Tech’s phone number from coming across Promotions’ phone number. Specifically, Tech was ordered to: (1) set up a 352-area-code phone number to handle phone calls; (2) ensure that the phone number was listed in all available directories; (3) ensure that a search conducted with the Google, Yahoo, or Bing search engine using the keywords “Uber Gainesville phone” or “Uber Gainesville phone number” returned a prominently-displayed result containing Tech’s 352-area-code number, along with words clearly indicating that the result was associated with Tech, and that such searches did not replace the result for Promotions’ phone number that was currently returned; and (4) ensure that a search conducted with the Google, Yahoo, or Bing search engines using the keywords “Uber promotions Gainesville phone” or “Uber promotions Gainesville phone number” did not return a result with Tech’s 352-area-code number.
The case is No. 1:15-cv-00206-MW-GRJ.
Attorneys: Alexander Daniel Brown (Concept Law Group PA) and Michael I. Santucci (Santucci Priore PL) for Uber Promotions Inc. Brendan Hughes (Cooley LLP) and Leslie Jean Lott (Lott & Fischer PL) for Uber Technologies Inc.
Companies: Uber Promotions Inc.; Uber Technologies Inc.
MainStory: TopStory Trademark TechnologyInternet FloridaNews
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