For small business owners, intellectual property protection is a top priority. Creating and circulating a trademark – a name, symbol, or logo that people instantly identify with a company – is for many businesses an important part of creating public awareness. Trademark laws aim to prevent others from accidentally or intentionally taking advantage of the trust that a company has worked to build with consumers.
Uber Technologies, the up-and-coming ridesharing company based in San Francisco, recently suffered a minor legal loss in Gainesville, Florida. The case involved Uber Promotions, a company in Gainesville that since 2006 has offered event planning, photography, printing, and transportation services. The transportation service is the part that’s pertinent to the case involving Uber Technologies, which launched in 2009 but only entered Florida in 2012. Although the case went generally unnoticed in the media, it will have far-reaching implications for Uber’s future in the state of Florida.
UBER V. UBER: WHAT’S AT STAKE?
Uber Promotions first sent a cease-and-desist letter to Uber Technologies in 2014, demanding that it “discontinue the use of the terms ‘Uber Promotions’ in connection with marketing and advertising campaigns.” The Gainesville company subsequently filed a lawsuit, Uber Promotions Inc. v. Uber Technologies Inc., alleging trademark infringement and unfair competition, while seeking preliminary injunctive relief to keep Uber Technologies from using its Uber name or trademarks in connection with its services throughout Florida.
In November 2015, after the lawsuit had already been filed, Uber Technologies launched its new service, “UberEvents,” which allows users to order multiple Uber rides in advance for parties or other events. In February, U.S. District Judge Mark Walker temporarily approved a preliminary injunction that prevents Uber Technologies from promoting UberEvents in Gainesville. The judge expressed agreement with Uber Promotions that Uber Technologies might be causing the public to get the two companies confused.
However – and here’s where it gets complicated – Judge Walker did not agree that Uber Technologies should be barred entirely from using its name in Gainesville. The temporary injunction compels Uber Technologies to use a local telephone number with the 352 Gainesville area code. The judge also ordered that Uber Technologies must “ensure” that the results of online searches in the Gainesville area for Uber Promotions don’t take consumers to Uber Technologies websites or to the 352 telephone number.
WHAT’S FAIR WHEN TRADEMARKS CONFLICT?
Judge Walker is basically asking for something that’s impossible, according to blogger and Santa Clara University intellectual property law professor Eric Goldman. “This compromise is just a bit too clever,” Goldman writes. “Uber can’t ensure that Google or the other search engines will display any particular organic search results, nor can it ensure exactly what information is presented in those organic results.”
Judge Walker wrote, “Uber Promotions is only substantially likely to succeed in showing that it has enforceable trademark rights against Uber Technologies in the Gainesville area, so this court will certainly not enjoin Uber Technologies from using its marks anywhere else in Florida.” The judge also pointed out that compelling Uber Technologies to change its name only in Gainesville would rob the company of the value of its trademark.
The injunction against UberEvents is temporary, and a full trademark infringement trial has not yet been scheduled. Gainesville’s Uber Promotions wants to bar Uber Technologies from Florida entirely because the small service is trying to expand. However, because of the San Francisco company’s trademark rights, which cover the U.S. except in jurisdictions where there is a prior player, the smaller Uber cannot use the Uber name outside of Gainesville.
WHAT’S THE NEXT LEGAL MOVE IN UBER V. UBER?
The judge’s narrowly-focused temporary injunction provides some relief to the plaintiff while not too harshly penalizing the defendant. But how can Uber Technologies comply when it has no control over Google or any other search engine? Eric Goldman writes: “It seems inevitable that Uber Promotions will capture screen shots showing Uber Technologies out of compliance with this injunction. So what will Uber Technologies do? Will it go back to the judge now and explain why it can’t ensure these outcomes? Or will Uber give it a good faith try and gamble that the judge won’t hold it in contempt if search results inevitably fall out of compliance with the order?”
Blogger Greg Sterling suggests, “The ultimate solution probably involves some sort of licensing agreement or lump payment that doesn’t implicate third parties such as Google or Bing.” Whatever happens next, the case is an instructive example of the challenges facing trademark holders in cyberspace, where jurisdictional boundaries are difficult to maintain. The case isn’t getting mainstream media publicity – yet – but those with an interest in trademark law and intellectual property rights are keeping a close eye on developments in the Gainesville case.
HOW CAN YOUR COMPANY ESTABLISH TRADEMARK RIGHTS?
In Florida and in every other state, your trademark rights actually begin whenever you start using a specific trademark. However, registering that trademark with the state or federal government gives your trademark more legal protection. In Central Florida, an experienced Daytona Beach intellectual property attorney can help you register a trademark and can also defend your trademark rights if you become involved in a trademark infringement dispute.
Trademarks for interstate and international business should be registered with the U.S. Patent and Trademark Office (USPTO). A trademark application involves complex and detailed legal issues and procedures, so the help of an experienced trademark lawyer is essential. Individual states also register trademarks, and that can give you additional trademark rights in some jurisdictions.
To gain the maximum legal protection, every small business in Florida should have its trademark registered under federal and Florida state trademark laws. Central Florida business owners who want to register a trademark, who seek sound legal advice regarding trademarks, and those who need legal representation in any trademark dispute should not hesitate to contact an experienced Daytona Beach intellectual property attorney.