UBER PROMOTIONS, INC. a Florida corporation filed a federal lawsuit today against the the world famous Uber.com whose formal corporate name is UBER TECHNOLOGIES, INC for trademark infringement, unfair competition under the Trademark Act of 1946, under Florida law and under common law.
The Florida corporation alleged they had a website for transportation services started in Gainesville Florida in 2006, home of the Florida Gators, several years before what we all know as Uber.com started.
Here are the highlights:
Defendant, UBER TECHNOLOGIES, INC. is a corporation organized and existing under the laws of the State of Delaware, with a principal place of business at 1455 Market Street, 4th Floor, San Francisco, California 94130.
Defendant owns, operates, maintains, or controls interactive websites, accessible from this judicial district, and maintains, owns and controls computer applications that are distributed into, sold and used in this judicial district, through which the complained of products and services have been advertised and sold.
Plaintiff is a privately held company that incorporated in 2006.
Plaintiff provides and has provided, passenger transportation services, including vehicle charter services, in virtually every city in Florida, for transporting passengers within Florida, and from Florida other states.
Plaintiff also provides printing and promotional services to customers in nearly every state in the United States including, without limitation, Florida and California.
Plaintiff and its predecessors-in-interest have used, in Florida, and in interstate commerce, the trademarks UBER, ÜBER, UBER PROMOTIONS and ÜBER PROMOTIONS (“Plaintiff’s Marks”) at least as early as 2006 to identify its company and/or business as the source of its (i) passenger transportation services, including through limousine and charter services, (ii) promotional and event planning services, (iii) graphic, web design and print media photography services, (iv) modelling and talent agency services, (v) private venue rental services, as well as other services (collectively “Plaintiff’s Services”).
At least as early as 2007, Plaintiff has used the internet domain name uberpromotions.com through which it advertises and sells Plaintiff’s Services including, without limitation, its passenger transportation, limousine and charter services.
Plaintiff has also acquired strong common law trademark rights in its family of UBER marks through extensive use in Florida and in interstate commerce in connection with Plaintiff’s Services provided in multiple states within the United States.
Since at least as early as 2006, Plaintiff and its predecessors-in-interest have used Plaintiff’s Marks, which they have prominently displayed in advertising and marketing of its services, as a tradename and corporate name, on business cards, on the internet, in print advertisements and other promotional and marketing materials.
Plaintiff’s Marks are inherently distinctive, but have also become a distinctive indication of the origin and high level of quality of Plaintiff’s Services as a result of Plaintiff’s extensive use, sales, marketing, and advertising for over a decade. Plaintiff’s Marks therefore act as an indication of the source of Plaintiff’s Services and assure consumers of a high level of quality, appeal, and satisfaction with which Plaintiff’s Services have become synonymous.
By using Plaintiff’s Marks for over a decade in interstate and Florida commerce, Plaintiff has developed significant and valuable goodwill in its marks in the industry and with the public, which have also acquired secondary meaning.
Upon information and belief, on or about March 1, 2009, Defendant was founded, formed, incorporated, and began using the term “Uber” in its corporate names and/or tradenames “UberCab, Inc.,” “UberCab, LLC” and, the current “Uber Technologies, Inc.”
Upon information and belief, no earlier than October 28, 2010, years after Plaintiff commenced use and established its goodwill and trademark rights described above, Defendant began using variations of the mark UBER in connection with transportation, taxi and vehicle charter services, and software applications designed for ordering and providing such services (“Defendant’s Services”) in California and, according to Defendant’s own allegations to the United States Patent and Trademark Office (“USPTO”), in interstate commerce.
Upon information and belief, no earlier than 2012, years after Plaintiff commenced use and established its goodwill and trademark rights described above, Defendant began using the mark UBER in connection with Defendant’s Services in Florida commerce.
Upon information and belief, no earlier than 2010, years after Plaintiff commenced use and established its goodwill and trademark rights described above, Defendant began using the domain name www.uber.com in connection with an active website.
Upon information and belief, no earlier than 2009, years after Plaintiff commenced use and established its goodwill and trademark rights described above, Defendant began using social media names which include the term and mark “UBER” and “UBERCAB,” to promote the launch of their transportation services business.
Upon information and belief, in late 2014 or early 2015, years after Plaintiff commenced use and established its goodwill and trademark rights described above, Defendant began using the tagline “Uber Promotions” with the social media service Instagram, in connection with Defendant’s Services in interstate commerce. (Hereinafter, the marks UBER, UBER TECHNOLOGIES and UBER PROMOTIONS, as used by Defendant, will be referred to as (“Defendant’s Marks”)).
Upon information and belief, in late 2014 or early 2015, years after Plaintiff commenced use and established its goodwill and trademark rights described above, Defendant began using the tagline “Uber Promotions” with the social media service Twitter, in connection with Defendant’s Services in interstate commerce.
On or about November 5, 2010, Defendant applied for registration of the mark UBER with the USPTO on the Principal Register, Application Serial No. 85170655. On or about June 14, 2011, the USPTO issued Defendant Registration Number 3977893 directed to the mark UBER for use in connection with:
“Computer software for coordinating transportation services, namely, software for the automated scheduling and dispatch of motorized vehicles,” in International Class 009; “Telecommunications services, namely, routing calls, SMS messages, and push-notifications to local third-party motorized vehicle dispatchers in the vicinity of the caller using mobile phones,” in International Class 038; “Providing a website featuring information regarding transportation services and bookings for transportation services,” in International Class 39; and “providing temporary use of online non-downloadable software for providing transportation services, bookings for transportation services and dispatching motorized vehicles to customers,” in International Class 42.”
On or about December 2, 2014, Defendant applied for registration of composite mark UBER (and design) with the USPTO on the Principal Register, Application Serial No. 86469371, for use in connection with:
“Mobile application software for connecting drivers and passengers; mobile application software for automated scheduling and dispatch of motor vehicles; mobile application software for coordinating transportation services; mobile application software for engaging transportation services,” in International Class 9.
The above application is still pending.
Defendant adopted, commenced use, applied to register and registered marks which are confusingly similar, or identical to Plaintiff’s Marks in connection with Defendant’s Services long after Plaintiff first used Plaintiff’s Marks, at least in Florida.
Upon information and belief, Defendant had actual knowledge of Plaintiff’s Mark when it adopted and/or sought to register Defendant’s Marks.
Because of the similarity between Plaintiff’s Marks and Defendant’s Marks,
(i) prospective consumers are likely to be deceived, mistaken, or confused as to the source or origin of Defendant’s Services
(ii) the distinctiveness of Plaintiff’s Marks are being diluted, and/or
(iii) Defendant has caused the likelihood of initial interest confusion and reverse confusion.
Actual consumer confusion, initial interest confusion and/or reverse confusion has already occurred on numerous occasions, all to the detriment of Plaintiff. In fact, Plaintiff receives multiple calls and emails, at times daily, from the public looking for or complaining about Defendant and/or its goods and/or services. Plaintiff also receives calls from Defendant’s employees looking for or complaining about Defendant. This confusion and harm to Plaintiff has escalated recently as Defendant has entered and/or expanded its presence in, and service to Florida.
Plaintiff has been harmed in the sense that Defendant has created a strong negative connotation between the term “UBER” and transportation services, in particular, at airports and Disney properties, among others. Plaintiff’s vehicles have actually been turned away from and prevented from reaching their intended destinations because they bear the word “UBER” on the side, thereby preventing Plaintiff from providing the services to which it has obligated itself to its consumers.
Defendant’s acts were done willfully and maliciously, and with the specific intent to imitate Plaintiff, misappropriate, misuse and palm off of the goodwill, distinctiveness, fame and recognition Plaintiff enjoys in the industry.
The Plaintiff is asking the court to:
enjoining and restraining during the pendency of this action, and thereafter permanently enjoining and restraining Defendant, its agents, servants, employees, attorneys, parents and subsidiaries, related companies, and all persons acting for, with, by, through or under them, and each of them from:
Using the marks UBER, ÜBER, UBERCAB, UBER TECHNOLOGY, UBER.COM, WWW.UBER.COM, UBER PROMOTIONS, ÜBER PROMOTIONS or any name, term or mark similar thereto or any confusingly similar designation alone or in combination with other terms, as a trademark, slogan, tag line, trade name component or otherwise, as a domain name, sub-domain, directory name, email address or other such computer addresses, as the name of Defendant’s websites, or any webpage, as part of a URL, metatag, hashtag, Ad Words, search term, or, in any other way to market, advertise, sell, offer for sale or identify Defendant’s Services or related goods or services, or advertisements for Defendant’s Services, or related goods or services; infringing Plaintiff’s Marks employing the words, terms or phrases UBER, ÜBER, UBERCAB, UBER TECHNOLOGY, UBER.COM, WWW.UBER.COM, UBER PROMOTIONS or ÜBER PROMOTIONS therein in connection with Defendant’s Services, or related goods or services;
An order requiring Defendant to deliver and destroy all devices, websites, computer hardware and software, files, menus, hard drives, servers, diskettes and backups, literature, advertisements, packages, labels, signs, prints, wrappers, receptacles, and all other materials and products in the possession of Defendant or under Defendant’s control which have ever been used in connection with Defendants’ Services or related goods or services, bearing the marks UBER, ÜBER, UBERCAB, UBER TECHNOLOGY, UBER.COM, WWW.UBER.COM, UBER PROMOTIONS or ÜBER PROMOTIONS in or on them, and all plates, molds, matrices and other means of making the same.
An order requiring Defendant to notify, in writing, and direct to its internet service provider(s), web host(s) and all publishers of directories or lists, including Internet search engines, in which Defendant’s use of the marks or employing the terms or phrases UBER, ÜBER, UBERCAB, UBER TECHNOLOGY, UBER.COM, WWW.UBER.COM, UBER PROMOTIONS or ÜBER PROMOTIONS appear in connection with Defendants’ Services or related goods or services, to delete all references to said names and marks from their public databases, search engine directories, directory assistance and from all future directories in which said names and marks are to appear, and to delete all forwarding or “cache memory” or storage mechanisms referencing marks, terms or phrases employing UBER, ÜBER, UBERCAB, UBER TECHNOLOGY, UBER.COM, WWW.UBER.COM, UBER PROMOTIONS or ÜBER PROMOTIONS.
An order requiring Defendant to file with the Court, and serve upon Plaintiff’s counsel, within thirty (30) days after entry of judgment, a report, in writing, and under oath, setting forth, in detail, the manner and form in which Defendant has complied with the requirements of the injunction and order.
An order requiring Defendant to account for and pay over to Plaintiff all damages sustained by Plaintiff including damages by reason of Defendant’s unlawful acts alleged herein, plus pre-judgment and post-judgment interest thereon, and that such damages be trebled, as provided by law.
An order requiring Defendant to pay over to Plaintiff all profits realized directly or indirectly by Defendant, directly or indirectly related to its products and/or services, the sales of which have been enhanced directly or indirectly from its products or services, or advertising of same, or otherwise by reason of Defendant’s unlawful acts alleged herein, and that such amounts be trebled pursuant to 15 U.S.C. § 1117(a)(3) or as otherwise provided by law.
A monetary award based on profits which this Court, in its discretion, finds just pursuant to 15 U.S.C. §§ 1117, 1118, or as otherwise provided by law.
An award of punitive and exemplary damages.
A declaratory judgment, writ of mandamus or other appropriate order to the United States Patent and Trademark Office requiring the immediate cancellation of Defendant’s United States Trademark Registrations No. 3977893 directed to the word mark UBER, and to remove same from its Principal Register, and any other registers.
A declaratory judgment, declaring that Defendant’s United States Trademark Application Serial No. 86469371 to the USPTO’s Principal Register for the composite mark UBER (and design) should be finally rejected and that Defendant is otherwise not entitled to registration therefor.
The lawsuit was filed in the Florida Federal Northern District Court.
