February 25, 2016

Florida judge “refuses to put a bazooka in the hands of a squirrel” in uber fight

by Guest Blogger

Judge's words, not mine.

UBER and UBER PROMOTIONS are facing off in Gainesville, a city rated "5th meanest city" by the National Coalition for the Homeless, twice.

This is a sad and preventable story of a small company that didn't bother to file a trademark registration. The small company asked a judge to stop the big company from operating in Gainesville pending a trial on the small company's infringement claims against the big company. The Judge's order his here.

The big company is Uber Technologies, Inc. ("Big Uber"). Big Uber arranges ride shares in private vehicles.

The small company is Uber Promotions ("Little Uber"). I don't really understand what Little Uber does. A quick look at Little Uber's website leads me to think it might be part party bus service, part event planning and part escort service, maybe? I don't see a clear theme from the services on the website; I see:

an odd t-shirt (Promotional Products),

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a martini glass (Nightlife),

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a silhouette of a dancer (Event Photos),

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a scantily clad lady (Modeling),

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green hands typing (Web Development),

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a camera (Professional Photography),

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John' Doe's business cards (Printing Services),

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yellow school buses (Transportation),

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a calendar (Special Events).

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Little Uber started operations in 2006 in Gainesville, but never registered a federal trademark for the services it provides under that mark. By contrast, Big Uber registered its first federal trademark (UBERCAB) August 31, 2010. I won't get into the details here, but the judge decided that UBERCAB and UBER are essentially the same mark because CAB was not a protectable part of the original trademark.

Trademarks typically follow the rule that the first to use a mark has rights in the mark. So after operating for about 4 years, Little Uber had developed some trademark rights based on its actual use in and around Gainesville. However, a magical thing happened when Big Uber received its trademark registration: Big Uber was considered to have trademark rights across all of the United States (except for places where a prior user had existing rights). On the flipside, Little Uber was forever cut off from having rights to the mark outside of where it was operating when Big Uber's mark issued (and its zone of reasonable expansion). Note that after the lawsuit initiated, Big Uber introduced a new UberEVENTS service, which is basically a ridesharing program where all guests at an event can use a single code to get rides home. The opinion discusses that this new service seems closer to at least one of Little Uber's services than Big Uber's straight ride share service. The opinion gives a lot of detail weighing the rights of the two companies and weighing the factors involved in determining trademark infringement if you are interested.

The preliminary results gleaned from the decision (until trial provides a final result):

Little Uber has no rights to the UBER mark outside Gainesville for things transportation related and must post a $10,000 injunction bond.

Big Uber must get a local telephone number in Gainesville and figure out a way to avoid reaching customers in certain specific ways on Facebook or web searches (not exactly sure how they will do this) and delay introduction of UberEVENTS service until after trial.

So what may likely have been a relatively inexpensive trademark registration back in 2006 seems to be turning into an expensive debacle for Little Uber.

Win or lose, the moral of this story is "Don't be a Little Uber." Register your trademark early and don't expect a judge to put a bazooka in your hands later if you don't.