A showdown of the UBER mark is taking shape in the land of orange and blue. See Uber Promotions, Inc. v Uber Technologies, Inc. (NDFL 15-cv-206). The District Court issued a narrow preliminary injunction. (Available Here) Plaintiff Uber Promotions, Inc. (“Promotions”) is a Gainesville, Florida company that provides a variety of services, including promotional and event planning services, graphic, web design, print media, talent agency services, private venue rental services, and passenger transportation services, including limousine and charter services. Promotions has been using “UBER,” “UBER PROMOTIONS,” and “ÜBER” since at least 2006. Defendant, Uber Technologies (“Tech”) a San Francisco company puts out a well known app allowing people to get a ride on demand from a nearby driver registered with UBER. Tech first operated in Florida in 2012, then permanently in the Florida market in 2013. Promotions sent Tech a cease and desist letter in April 2014 in connection with Tech’s use of UBER PROMOTIONS. Promotions then filed suit seeking a preliminary injunction to keep Tech from using UBER marks in connection with its services throughout Florida. After the suit was filed, Tech began use of UberEVENTS for a service that allows customers to purchase rides for others that can be used at a particular time in the future, i.e. party/guest attendees.
The Court was persuaded by eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006) and found that a presumption of irreparable harm is no longer appropriate in a trademark infringement case once a substantial likelihood of success on the merits is shown. The Plaintiff’s claims all require it to establish more or less the same two things: (1) that it had enforceable rights in its mark or name, and (2) that Defendant made unauthorized use of it such that consumers were likely to confuse the two.
Tech relied on its first registration of UBERCAB to date its registration back to August 31, 2010. The Court then considered the geographic scope of Promotions unregistered trademark rights in UBER and UBER PROMOTIONS. The Court found that Promotions had not established that it would have expanded in any way prior to the relevant date. It seemed highly unlikely that Promotions would succeed in showing that it is entitled to the entire state of Florida- or anything beyond the Gainesville area- as a “zone of reasonable future expansion.” However, Promotions was sufficiently “known” in the Gainesville area prior to 2010 and had enforceable common-law trademark rights there.
The Court analyzed the likelihood of confusion in the Gainesville area. This is a classic reverse confusion case, where the junior user saturates the market with a similar trademark and overwhelms the senior user. The Court found that: (1) “UBER” and “UBER PROMOTIONS” are not especially strong marks (slightly in favor of Tech), (2) the marks are fairly similar at least to a certain portion of the public (slightly in favor of Promotions), (3) services both involve passenger transportation, but differ in many respects (slightly in favor of Tech), (4) Tech sales are made by app and Promotions by email, phone, text (heavily in favor of Tech), (5) advertising methods are similar-via social media (slightly in favor of Promotions), (6) the Court did not believe that Tech intended to push Promotions out of Gainesville, and in fact stated “Elephants don’t look out for gerbils when they plow through the bush.” (not relevant factor), (7) there is some actual confusion (slightly in favor of Promotions). The Court held that Promotions had established a substantial likelihood of success on the merits of the “likelihood of confusion” element and therefore, Promotions is substantially likely to succeed in showing that Tech has infringed on its mark by using its “UBER” marks in the Gainesville area.
In respect of irreparable harm, the Court found that Promotions had failed to meet its burden of showing that the injury it might suffer absent preliminary injunctive relief outweighs the injury to Tech that would result from enjoining Tech’s use of its marks in the Gainesville area pending trial. Such an injunction would be a windfall to Promotions, because preventing Tech from using its mark in Promotions’ area for nine months might well cost Tech many, many times more money than Promotions could ever hope to make in profits.
The Court provided some interesting language when addressing the balance of hardships. One of the sections is titled “Arming Squirrels with Bazookas” wherein the Court believes that a preliminary injunction should not serve as a bazooka in the hands of a squirrel.
Using this rationale, the Court entered a narrow, modified preliminary injunction, enjoining the Defendant from using the mark UberEVENTS in the Gainesville market and ordering Defendant to set up a local area code phone number. The phone number must be associated with Defendant as “drive partner” or “app” and cannot be listed in a result when “Uber promotions Gainesville phone number” is searched on Google, Yahoo or Bing.
We will monitor this case and keep you updated on its progression.
