Karen Kidd Mar. 19, 2016, 9:22am


GAINESVILLE – A cleverly worded preliminary injunction is providing breathing room for companies trying to figure out if Gainesville is big enough for two Ubers, a Tampa attorney said in a recent interview.

"The question is whether Uber Productions and Uber Technology can both operate in Gainesville," Woodrow H. "Woody" Pollack, an attorney and intellectual property specialist with Gray Robinson in Tampa, told the Florida Record. "At the end of the day, the test is whether a consumer will be confused."

In a preliminary injunction filed in U.S. District Court for Northern Florida that mentions "elephants" and "gerbils," Judge Mark E. Walker granted part of the longtime Gainesville company Über Promotions' motion to curtail activities of the ride-share company Uber Technologies in the Gainesville area.

Über Promotions does not always use the umlaut in its name. Though often used in common phrases such as “ubermensch” and among the techy-minded "uber geek," the origin is in German, meaning "over," "above" or "across."

The case is unique among the many active lawsuits against Uber Technologies because the Gainesville case is about trademark infringement. Uber is the named defendant in 50 lawsuits filed in federal court in 2015 alone by contract drivers, competitors and customers. Uber's nearest competitor, Lyft, faces only a third as many lawsuits filed against it in federal court during the same period.

Judge Walker's 67-page preliminary injuction sums up the Gainesville case. "You live in Gainesville and need to book a party bus, or perhaps a non-party bus or a limo to take a number of people to an event," the introduction to Walker's preliminary injunction reads. "You run a Google search for 'Gainesville party bus' and, not satisfied with any of the offerings on page one of the results, turn to page two. There is a listing there for 'Uber Promotions'. Thinking that perhaps this is somehow affiliated with Uber, a nationally known taxi-like service that has recently come to town, you click on the link. You are taken to a webpage with a bright green and purple 'über PROMOTIONS' logo. The crux of this trademark infringement case is (roughly speaking) whether you could reasonably conclude that Uber Promotions and Uber the taxi-like service are in some way connected."

Über Promotions, which provides a wide variety of party-based and special occasion services, such as printing, T-shirts, professional photography, modeling, and some travel and transportation, has operated in Gainesville since 2006.

Uber Technologies' mobile app was officially launched in San Francisco in 2011 and has since expanded internationally, now available in 58 countries and 300 cities worldwide. Uber Technologies began offering its app in Florida during the 2012 Republican National Convention in Tampa. It began marketing in Gainesville during the summer of 2014.

Über Promotions filed its lawsuit Sept. 29, 2015.

Walker, in his preliminary injunction issued Feb. 16, said the fast-growing ride-sharing service never intended any harm to Über Promotions.

"It is difficult to believe that Tech acted with the intent to push Promotions out of the Gainesville market by using a confusingly similar mark," Walker wrote. "Elephants don’t look out for gerbils when they plow through the bush. Tech adopted its mark before it ever knew of Promotions and expanded nationally thereafter. Surely it knew that it would collide with Promotions once it entered Gainesville, but that doesn’t mean it intended to confuse consumers and thereby hurt Promotions. This factor is not particularly relevant to the analysis in this case."

While stating that "each party overstates its case," Walker said there has been some consumer confusion in Gainesville, in part because Uber Technologies at times uses the words "Uber promotions" in its advertising. The preliminary injunction sharply curtails many of Uber Technologies' activities in Gainesville and Alachua County, including enjoining their use of the "UBER mark" in its UberEVENTS service in the Gainesville area.

And what that provides is time for both companies and the court to determine what should be done in this case, Pollack said.

"What the court is trying to figure out is how to carve out the rights of both of these companies," he said.

The name or mark "Uber" itself may not be an issue in the case as words can be common enough, so long as companies can differentiate themselves, Pollack said.

"The example I like to use is Dominos," he said. "I can say Domino Sugar and you won't think about pizza. I can also say Domino's Pizza and you won't think about sugar. It's possible to have the same name, or roughly the same name, and still not confuse the consumer."

A more probable issue in this case is what geographic zone Über Promotions and Uber Technologies will be allowed to operate in, with the possibility of Uber Technologies being shut out of the Gainesville area, Pollack said.

 "Then again, if Über Promotions ever wanted to, say, branch into Tampa, they probably would have problems because Uber Technologies already is established there," he said.

Barring any settlement or other developments in the case, the two companies probably can look forward to one or two more years of litigation, Pollack said.

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