Mark E. Walker, United States District Judge.
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. 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.
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 and print media photography services, ... modelling and talent agency services, [and] ... private venue rental services." ECF No. 47, at 5 ¶ 12. It also provides "passenger transportation services, including through limousine and charter services." Id. Promotions claims that it has been using "UBER," "ÜBER," "UBER PROMOTIONS," and "ÜBER PROMOTIONS" since at least 2006. ECF No. 27-1, at 3 ¶¶ 5-6. Promotions is run by its President, Joey Friedman, ECF No. 36-1, at 2 ¶ 3, and its Vice-President, Michael Farzad, ECF No. 27-1, at 1 ¶ 3.
Defendant Uber Technologies, Inc. ("Tech") is a San Francisco-based corporation (though it's incorporated in Delaware) that puts out a well-known software app allowing people to "get a ride on demand from a nearby driver registered with the UBER [Technologies] service." ECF No. 63, at 2. Tech refers to these drivers — who use their own cars to transport passengers — as "driver partners." ECF No. 37, at 1-3 ¶¶ 2-4; 10-13 ¶¶ 13-16. Tech launched its service in 2010 as UBERCAB and received a federal registration for that trademark on August 31 of that year. ECF No. 41-1, at 2. Later in 2010, Tech began using the mark "UBER" and registered that trademark on June 14, 2011. Id. at 10.
At first, Tech operated in just a few select cities, but it has expanded rapidly
Apparently alarmed by Tech's expansion into Florida — and in particular by the use of "Uber Promotions" on one of Tech's Twitter accounts — Promotions sent Tech a letter in April 2014 demanding that Tech "discontinue the use of the terms `Uber Promotions' in connection with [Tech's] marketing and advertising campaigns ... and undertake in writing that [Tech] will not at any time in the future use any of Uber Promotions name [sic] in any future marking [sic] or advertising campaigns, Twitter Accounts, or apply for registration of any trademarks/service mark that may be confusingly similar to Uber Promotions." ECF No. 27-21, at 2-3. Tech responded by (1) removing the term "Uber" from the title of a page on its website that had previously been titled "Uber Promotions" and (2) responding (through counsel) to Promotions' letter as follows:
Re:
Dear Ms.[REDACTED\]
Thank you for your April 18
Uber disagrees that there is any potential for confusion regarding its use of the "Uber Promotions" heading on Twitter. However, to resolve the matter amicably, and without admission, Uber has removed the "Uber Promotions" reference.
ECF No. 40, at 3-4 ¶¶ 7-10; ECF No. 40-1. Tech apparently did not hear from Promotions again until this suit was filed. ECF No. 40, at 4 ¶ 11.
Shortly after this suit was filed, Tech unveiled a new service called UberEVENTS. ECF No. 37, at 19 ¶ 31. This service allows customers to purchase rides for others that can be used at a particular time in the future. Id. at 19-21 ¶¶ 31-32. So, if a customer is hosting a large birthday party at a local park, that customer can purchase rides in advance with Tech driver partners for guests to use to go from their homes to the park and back again. Technically, the customer purchases a single code or a set of codes which are then sent to guests; the guests then use Tech's app as they normally would to request rides and use the code to pay for those rides. Id. This service "has been a popular option for corporate events." Id. A customer wishing to purchase rides for their guests can do so through Tech's website. Id.
"A district court may grant injunctive relief only if the moving party shows that: (1) it has a substantial likelihood of success on the merits; (2) irreparable injury will be suffered unless the injunction issues; (3) the threatened injury to the movant outweighs whatever damage the proposed injunction may cause the opposing party; and (4) if issued, the injunction would not be adverse to the public interest." Siegel v. LePore, 234 F.3d 1163, 1176 (11th Cir.2000) (en banc). A "preliminary injunction is an extraordinary and drastic remedy not to be granted unless the movant clearly carries the burden of persuasion as to the four prerequisites." United States v. Jefferson County, 720 F.2d 1511, 1519 (11th Cir.1983) (quotation and citation omitted).
In a trademark infringement case, there is an extra wrinkle to the preliminary injunction standard. For years, the Eleventh Circuit (along with many other circuits) held that courts should "extend a presumption of irreparable harm once a plaintiff establishes a likelihood of success on the merits of a trademark infringement claim." N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1227 (11th Cir.2008). The appropriateness of this presumption is doubtful, however, after the Supreme Court's decision in eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). There the Court held that a similar rule in patent cases was wrong, and that "the traditional four-factor framework that governs the award of injunctive relief" should apply in patent cases. 547 U.S. at 394, 126 S.Ct. 1837.
Although eBay was a patent case and not a trademark case, and although it concerned a permanent rather than a preliminary injunction, courts have applied its reasoning in the context of preliminary injunctions in trademark cases and concluded that the presumption of irreparable harm is no longer good law. See Ferring Pharm., Inc. v. Watson Pharm., Inc., 765 F.3d 205, 216 (3d Cir.2014); see also Herb Reed Enters., LLC v. Fla. Entm't Mgmt., Inc., 736 F.3d 1239, 1249 (9th Cir.2013). Other courts, while not going so far as to hold that the presumption of irreparable harm is no longer appropriate in trademark cases, have suggested that that is the correct (and inevitable, once the question is squarely presented) result. See, e.g., Salinger v. Colting, 607 F.3d 68, 78 n.7 (2d Cir.2010).
The Eleventh Circuit is in this latter group of courts, having stated in dicta that "a strong case can be made that eBay's holding necessarily extends to the grant of preliminary injunctions" in a trademark-infringement
This Court is persuaded by eBay 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 Supreme Court made clear in eBay that "a major departure from the long tradition of equity practice should not be lightly implied," and that the Patent Act did not evince an intent on the part of Congress to depart from that tradition. eBay, 547 U.S. at 391, 126 S.Ct. 1837. The Lanham Act, like the Patent Act, provides that courts "shall have power to grant injunctions[ ] according to the principles of equity." 15 U.S.C. § 1116(a) (emphasis added). This does not suggest that irreparable harm should be presumed in a trademark infringement case, but instead indicates that the appropriateness of injunctive relief must be analyzed using the traditional framework. See Ferring Pharm., 765 F.3d at 215-17.
That said, it is true that in trademark cases, just as in patent cases, "[w]hen it comes to discerning and applying th[e] [usual preliminary injunction] standards, ... `a page of history is worth a volume of logic.'" eBay, 547 U.S. at 395, 126 S.Ct. 1837 (Roberts, C.J., concurring) (quoting N.Y. Trust Co. v. Eisner, 256 U.S. 345, 349, 41 S.Ct. 506, 65 L.Ed. 963 (1921) (Holmes, J.)). In other words, while it was perhaps inappropriate in the past to presume irreparable harm, that practice was grounded upon the sound principle that the harm associated with trademark infringement is typically irreparable in nature. See, e.g., Processed Plastic Co. v. Warner Commc'ns, Inc., 675 F.2d 852, 858 (7th Cir.1982). So while a court must, in each trademark infringement case, make a finding of irreparable harm before an injunction may issue, that finding will often be made due to the nature of the harm.
"The essence of equity jurisdiction has been the power of the [court] to do equity and to mould each decree to the necessities of the particular case. Flexibility rather than rigidity has distinguished it." Weinberger v. Romero-Barcelo, 456 U.S. 305, 312, 102 S.Ct. 1798, 72 L.Ed.2d 91 (1982) (quoting Hecht Co. v. Bowles, 321 U.S. 321, 329, 64 S.Ct. 587, 88 L.Ed. 754 (1944)). This Court has the power, and indeed the obligation, to exercise its authority in a manner that achieves a "`nice adjustment and reconciliation' between the competing claims" of Promotions and Tech. See id. (quoting Hecht Co., 321 U.S. at 329, 64 S.Ct. 587). This is not an all-or-nothing affair, and even upon a finding of substantial likelihood of success on the merits this Court has significant discretion to tailor relief so as to best serve the interests of the parties and the public.
Promotions brings a number of claims, but they all require Promotions to establish more or less the same two things: "(1) that [it] had enforceable ... rights in [its] mark or name, and (2) that [Tech] made unauthorized use of it `such that consumers were likely to confuse the two.'" Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 647-48 (11th Cir.2007) (quoting Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 358 (11th Cir.1997)); see
Tech registered "UBERCAB" in 2010 and "UBER" in 2011. It argues that its registration of the "UBER" mark should "tack back" to the earlier registration date of "UBERCAB" because the two marks "create the same, continuing commercial impression." ECF No. 63, at 10. Although this is a question of fact, see Hana Financial, Inc. v. Hana Bank, ___ U.S. ___, 135 S.Ct. 907, 912, 190 L.Ed.2d 800 (2015), this Court is confident that Tech would be able to convince a jury that UBER and UBERCAB would be "considered the same mark" by a reasonable consumer, see id. at 910. Accordingly, for purposes of this preliminary injunction proceeding, Tech's "UBER" mark will be deemed to have been (effectively) registered federally on August 31, 2010.
Registration of a trademark with the United States Patent and Trademark Office constitutes "constructive notice of the registrant's claim of ownership thereof." 15 U.S.C. § 1072. Furthermore, "federal registration... constitutes constructive use of the mark." Allard Enters., Inc. v. Advanced Programming Res., Inc., 249 F.3d 564, 572 (6th Cir.2001); 15 U.S.C. § 1057(c). In this case, Tech is considered to have used the mark "UBER" everywhere in the United States as of August 31, 2010 because of its registration of that mark.
"[T]he scope of protection accorded [a common-law] mark is coextensive only with the territory throughout which it is known and from which it has drawn its trade." Tana v. Dantanna's, 611 F.3d 767, 780 (11th Cir.2010). In addition, a mark may have protection in "a zone of reasonable future expansion" beyond that territory. Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1027 (11th Cir. 1989). "The extent of the zone is generally considered as of the date of the junior user's first use." Id. at 1028.
The doctrine of future expansion is clearly applicable when the junior user is the holder of a common-law trademark, but things are perhaps different when the junior user is the holder of a federally-registered trademark and its "use" is constructive use under 15 U.S.C. § 1057(c). The Eleventh Circuit has noted that "federal registration has the practical effect of freezing a prior user's enforceable trademark rights thereby terminating any right to future expansion beyond the [senior] user's existing territory." Dantanna's, 611 F.3d at 780-81 (emphasis added). This statement seems to indicate that the future expansion doctrine doesn't apply when the junior user acquires rights through registration rather than through actual use. But the court cited for this principle the Sixth Circuit case Allard Enterprises, which actually held that the future expansion doctrine is applicable in such a case. Allard Enters., Inc., 249 F.3d at 573-75.
Another issue is what type of constructive use can be ascribed to Tech. Its trademark registrations are for "computer software for coordinating transportation services," ECF No. 41-1, at 2, 10, so perhaps it can only claim constructive use of its marks in connection with its app, and
It is not necessary to resolve these issues. Even assuming that Promotions is entitled to a "zone of reasonable future expansion" beyond its core trade area in Gainesville, Promotions has not established that it would have expanded in any way prior to the relevant date. Whatever date is used — August 31, 2010, the date of Tech's earliest registration; June 14, 2011, the date of Tech's registration of the "UBER" mark; or even mid-2014, when Tech expanded throughout Florida — there is scant evidence that Promotions was at any point on the verge of expanding its operations throughout Florida. While it is true that Promotions has transported passengers or arranged for the transportation of passengers to many cities in Florida (and some places outside of Florida),
Promotions has mostly served customers in the Gainesville area. Its relatively infrequent forays beyond that area are not enough to make its marks "known" and thus protectable against Tech. This is because "the geographic area in which an unregistered trademark is `in use' is defined as the area in which the use of [a] similar mark would create a likelihood of confusion." Dorpan, S.L. v. Hotel Meliá, Inc., 728 F.3d 55, 63-64 (1st Cir.2013). It is difficult to believe that Promotions would be able to show that its infrequent trips to Jacksonville, Tampa, etc. were so memorable that the local citizenry was likely to be confused when Tech later moved into town. The one possible exception is Promotions' bus service to Ocala Poker and Jai Alai in Reddick, Florida. The record is not entirely clear on this point, but it appears that Promotions has been providing service there (perhaps on and off) for many years, and certainly since before 2010. ECF No. 27-5. This might be the only area outside of Alachua County in which Promotions would be able to establish enforceable common-law trademark rights.
Promotions argues that both forward and reverse confusion are occurring and are likely to occur, but admits that reverse confusion seems like a much larger threat. ECF No. 71, at 83-84. That is an understatement. This is, in many ways, a classic reverse confusion case, cf. A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 228 (3d Cir. 2000), and there is scant evidence that would support a finding that Promotions is substantially likely to prevail on anything other than a reverse confusion theory.
"[R]everse confusion occurs when `the junior user saturates the market with a similar trademark and overwhelms the senior user.'" Id. (quoting Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 475 (3d Cir.1994)). "The harm flowing from reverse confusion is that `[t]he public comes to assume the senior user's products are really the junior user's or that the former has become somehow connected to the latter.... [T]he senior user loses the value of the trademark — its product identity, corporate identity, control over its goodwill and reputation, and ability to move into new markets.'" Id. (quoting Ameritech, Inc. v. Am. Info. Tech. Corp., 811 F.2d 960, 964 (6th Cir.1987)). "As in a direct confusion claim, the ultimate question in a reverse confusion claim is whether there is a likelihood of consumer confusion as to the source or sponsorship of a product." Id. at 229.
Every circuit uses some n-factor test for likelihood of confusion, where n is an integer that is almost certainly too large for the task at hand.
Before jumping in, it is important to note four things. First, "there is nothing magical about these `factors'; they operate only as a heuristic device to assist
Second, it is vital to always keep in mind the "actual market conditions and the type of confusion alleged" when conducting the analysis. Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 534 (2d Cir.2005) (Calabresi, J.). This is because "`real world' confusion is the confusion that the [Lanham] Act seeks to eliminate," and the existence of such confusion is best assessed when marks are compared "in light of the way in which the marks are actually displayed" or perceived by consumers. Id. at 538-39. Here, reverse confusion is at issue, which means the "market conditions" we should be concerned with are the conditions under which a consumer encounters the senior user's (Promotions') mark.
Third, it is also vital to keep in mind "the persons who are (or are not) likely to be confused." See Clarke Checks, 711 F.2d at 979 n.22. This is a reverse confusion case, which means that the largest class of people who might be confused are people familiar with Tech's marks who then encounter Promotions' marks. See Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 490 (2d Cir.1988) (tying reverse confusion to "consumers initially aware of [the junior user's mark who] may believe that [the senior user's] mark they later encounter originates with [the junior user]"). Certainly confusion could occur with consumers initially aware of Promotions' mark who then encounter Tech's mark — this has apparently actually happened, in fact — but this is less likely given the relative commercial strength of the companies and their marks. Promotions primarily serves and advertises to college students and others in the same age range — young people, roughly speaking. See, e.g., ECF No. 27-1, at 8-9 ¶¶ 19-22; ECF No. 27-5; ECF No. 36-1, at 43. Thus, when assessing likelihood of confusion, the key demographic to keep in mind is young people, particularly college students, in the Gainesville area.
Fourth, when an alleged infringer's marks are used in connection with multiple goods or services, it may be that the use of those marks in connection with some goods or services — but not others — creates a likelihood of consumer confusion. See, e.g., H. Lubovsky, Inc. v. Esprit de Corp., 627 F.Supp. 483, 492-93 (S.D.N.Y. 1986) (finding no likelihood of confusion as to the defendant's use of its marks on sportswear, but a likelihood of confusion as to the use of its marks on shoes). In this case, Tech uses its "UBER" mark in connection with a number of services: UberX, UberXL, UberBLACK, UberEVENTS, and so on. See ECF No. 37, at 7-8 ¶ 9. As explained more fully below in Part III. C.11, the UberEVENTS service is different from Tech's other services in that it is
The first factor to be considered is the strength of Promotions' marks. Dantanna's, 611 F.3d at 774-75. However, because this is a reverse-confusion case, it is the conceptual and not the commercial strength of Promotions' marks that matters. See A&H Sportswear, 237 F.3d at 231-32. The parties disagree on this point, with Promotions claiming that "UBER" and "ÜBER" are arbitrary or fanciful in nature, and thus "strong" marks, ECF No. 27, at 19, and Tech claiming that they are descriptive (at least when combined with "PROMOTIONS") and thus weaker, ECF No. 63, at 26-27. Furthermore, Tech points out that many companies have registered marks with "UBER" in them, thus reducing the conceptual strength of Promotions' marks. ECF No. 63, at 27.
It seems clear that Promotions' use of "UBER" by itself is at least suggestive, if not arbitrary. Although Promotions' founders may have chosen the name of their company because it means "the best," id. at 26, their motivation or intent behind picking the name is irrelevant; what matters is what impression the mark leaves on consumers. The difference between a descriptive mark and a suggestive mark is that the former "identifies a characteristic or quality of an article or service" while the latter "suggests ... a characteristic of the goods or services and requires an effort of the imagination by the consumer in order to be understood as descriptive." Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 115 (5th Cir.1979).
"UBER PROMOTIONS" or "ÜBER PROMOTIONS" is a closer call, not least because of the "self-laudatory mark" principle. This principle is simply the idea that, generally speaking, a term such as "best" or "super" that "extol[s] some feature or attribute of ... goods or services" is descriptive in nature and likely to be too weak to be trademarked. 2 McCarthy on Trademarks and Unfair Competition § 11:17, Westlaw (4th ed., database updated Dec. 2015) [hereinafter McCarthy]. The German term "über" means "above" or "over" or "beyond," and can also be combined with other German terms to form compound nouns such as "Übermensch" ("Superman") and adverbs such as "überaus" ("extremely" or "exceedingly").
The second factor is the similarity of Promotions' and Tech's marks. Dantanna's, 611 F.3d at 775. In assessing similarity, it is important to view the marks as an ordinary consumer would, and not in an artificial context. See Sun-Maid Raisin Growers of Cal. v. Sunaid Food Prods., Inc., 356 F.2d 467, 469 (5th Cir.1966); see also A&H Sportswear, 237 F.3d at 216 (noting that when comparing marks, "an effort must be made to move into the mind of the roving consumer"). This means, among other things, remembering that memory is imperfect, and that a consumer encountering one mark after exposure to another mark may be confused even when the marks differ greatly in some important respects. See, e.g., Northam Warren Corp. v. Univ. Cosmetic Co., 18 F.2d 774, 775 (7th Cir.1927) ("Whether there is an infringement of a trade-mark does not depend upon the use of identical words, nor on the question as to whether they are so similar that a person looking at one would be deceived into the belief that it was the other; but it is sufficient if one adopts a trade-name or a trade-mark so like another in form, spelling, or sound that one, with a not very definite or clear recollection as to the real trade-mark, is likely to become confused or misled.").
Promotions can only hope to prevail on a reverse-confusion theory, so our typical consumer is someone who is familiar with Tech and who then encounters Promotions. But there are many classes of consumers "familiar with" Tech — there are those who have used Tech's services by accessing them through Tech's app; those who have perhaps been along for an Uber ride with someone else who but who have not themselves downloaded or used Tech's app; and those who have heard of Tech and have a general idea of what services it provides, but who have never used Tech's app or been along for a ride with a Tech driver partner. And there are many ways in which a consumer might "encounter" Promotions — through its website; by seeing a flyer; through its Facebook page; or by finding it through a Google search. In assessing the similarity of the marks, each type of familiarity and each type of encounter must be kept in mind.
Tech is probably correct that for Tech users/customers, the visual differences between Tech's app and Promotions' logo, together with the fact that Promotions usually includes "Promotions" in its name, suggest that confusion is relatively unlikely. ECF No. 63, at 28-29. But the visual differences are much less significant for those consumers less familiar with Tech. The examples of Tech's advertising and promotional materials provided in the record suggest that the most important feature of Tech's mark is the word "Uber"
In sum, Tech's and Promotions' marks are fairly similar, at least to a certain portion of the public. Tech may be quite correct that "anyone who uses [Tech's] services and comes across [Promotions'] advertising will know the difference," ECF No. 63, at 29, but there are many who have come across Tech but have not used its services. For that group, the marks may be quite similar. Cf. Stork Restaurant v. Sahati, 166 F.2d 348, 358-59 (9th Cir.1948) (noting that while a "worldly-wise passerby would not be ... deceived" into thinking that "an unpretentious night club displaying the sign `Stork Club' in or near San Francisco ... was in any way affiliated with the celebrated New York establishment," "[t]he law ... protects not only the intelligent, the experienced, and the astute, ... [but] also the ignorant, the inexperienced, and the gullible"). This factor tilts slightly in favor of Promotions.
The third factor is the "similarity between the goods and services offered under the two marks." Dantanna's, 611 F.3d at 775. Because the ultimate "likelihood of confusion" question is whether consumers may come to believe that Promotions' services are in some way affiliated with Tech's services, see Axiom Worldwide, 522 F.3d at 1222 n.9, it is not necessary that the services offered by the two companies be precisely the same, or even that they be competitive with one another; rather, confusion may result where the services are so related that a single entity is likely to be behind both. See E. Remy Martin & Co., S.A. v. Shaw-Ross Int'l Imports, Inc., 756 F.2d 1525, 1530 (11th Cir.1985).
Despite the fact that both Tech's and Promotions' services involve passenger transportation, there is no doubt that the services differ in many important respects. Tech's services all involve driver partners using their own vehicles to transport customers. Promotions, in contrast, arranges
These differences are not so great that they weigh heavily against confusion, particularly in light of Tech's expanding roster of transportation options. Around August 2015, for instance, Tech introduced UberXL to the Gainesville market. ECF No. 37-1, at 144. This option allows customers to request larger cars such as SUVs or minivans. Id. UberPOOL, a service that allows customers traveling in similar directions to share a car and save money, is not yet available in Gainesville, but it very well could be soon. ECF No. 37, at 18 ¶ 27. This growing family of Tech services and options makes it more likely that a consumer might mistake Promotions' services as being in some way affiliated with Tech.
Those more familiar with Tech will likely be saved from confusion by the fact that Promotions' services lack the most salient (or perhaps infamous) feature of Tech's services: the use of driver partners, many of whom are moonlighting as drivers, ECF No. 63, at 159, using their own vehicles as taxis. On the other hand, those who only know that Tech has something to do with transportation or that it provides something like a taxi service could very well think that Promotions and Tech are affiliated based on Promotions' services. Ultimately, this factor doesn't weigh heavily in favor of either party, though it tilts slightly in favor of Tech.
The fourth factor is the "similarity of the actual sales methods used by the holders of the marks, such as their sales outlets and customer base." Dantanna's, 611 F.3d at 775. "This factor takes into consideration where, how, and to whom the parties' products [or services] are sold." Frehling Enters., Inc. v. Int'l Select Grp., Inc., 192 F.3d 1330, 1339 (11th Cir.1999).
This factor weighs heavily in favor of Tech. Tech's services are accessed through an app on a smartphone or other mobile device, whereas one must call, e-mail, text, or send a Facebook message to Promotions in order to set up a ride. Farzad Dep. at 183. Anyone who has used Tech's services has necessarily downloaded and used its app, and it seems relatively unlikely that such users would think that Promotions was affiliated with Tech. And even people who have only heard of Tech may very well know that its services have something to do with an app, and may therefore be less likely to be confused when confronted with Promotions' services, which are accessed via quite different mechanisms.
The fifth factor is the "similarity of advertising methods" used by Tech and Promotions. Dantanna's, 611 F.3d at 775. Both Tech and Promotions make extensive use of social media to advertise. See, e.g., ECF Nos. 27-10, 36-1; Gore Dep. 268-71. In fact, there is evidence that some of Tech's "affiliates" — people who advertise Tech's services via social media in exchange for a commission — have placed advertisements for Tech's services on Promotions' Facebook page. ECF No. 36-1. While Tech is correct that the look of Promotions' advertisements is quite different from the look of Tech's advertisements, ECF No. 63, at 33, the fact remains that both companies' extensive use of social media — and especially Tech's affiliates' use of Promotions' own Facebook page to post advertisements — raises the likelihood that consumers will come into contact with both marks, which in turn raises the likelihood
Furthermore, Tech has apparently used Google AdWords to ensure that certain searches conducted using Google will lead to an ad for Tech being displayed above the search results.
The sixth factor is the "intent of the alleged infringer to misappropriate the proprietor's good will." Dantanna's, 611 F.3d at 775. This factor needs to be tweaked in a reverse-confusion case, since the concern is not that an alleged infringer will try to use a plaintiff's good name to gain business, but rather that it will "push[ ] its [smaller] rival out of the market," thus "usurp[ing] [the rival's] business identity." A&H Sportswear, 237 F.3d at 232. Furthermore, only intent to "usurp identity" through confusion is relevant; there is nothing unlawful about intending to compete. Id.
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. 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.
The final factor is "the existence and extent of actual confusion in the consuming public." Dantanna's, 611 F.3d at 775. Evidence of actual confusion "is the most persuasive evidence in assessing likelihood of confusion." Id. at 779. Clearly understanding this, the parties vigorously dispute how to interpret the numerous phone calls received by Promotions from customers looking for Tech. Promotions claims that these phone calls constitute "extraordinary" evidence of actual confusion, ECF No. 27, at 26, while Tech argues that these calls are the result of "inattention and indifference," not confusion. ECF No. 63, at 34-37.
Each party overstates its case. Undoubtedly some of the people who called Promotions looking for Tech were indeed "confused" within the meaning of the Lanham Act — that is, they understood they were calling Promotions and thought Promotions was affiliated with Tech. But Tech doesn't have an easy-to-find phone number,
If this is confusion at all, it is not the type of confusion that's important in a trademark-infringement case.
The e-mails received by Promotions from customers looking for Tech are slightly more helpful to Promotions' case, but some of them again suggest carelessness as much as, if not more than, confusion. The e-mail from a customer in Vietnam is clearly intended for Tech — the e-mailer followed up with an "oops" e-mail almost immediately. ECF No. 27-16, at 9-10. The Los Angeles customer appears to be someone so easily confused that even trademark law cannot protect her. Id. at 6-8.
The two instances of confusion on the part of former customers of Promotions are more helpful to Promotions' case. These customers clearly understood what Promotions is, understood what Tech is, and thought they were affiliated. Farzad Dep. 127-30; Friedman Dep. 140. Similarly, the evidence in the record of a few Tech customers — and even some driver partners and others affiliated with Tech — thinking that Tech and Promotions were somehow related is evidence of actual confusion within the meaning of the Lanham Act.
In sum, there is definitely evidence of actual confusion in the record, though not as much as Promotions claims or as little as Tech claims. The evidence of customers calling and e-mailing Promotions looking for Tech is in many ways the least important subset of this evidence. The types of requests being made by the callers, the fact that Tech doesn't have an easy-to-find phone number, the fact that someone conducting a Google search for a local Gainesville number for Tech would get Promotions' number, the relative commercial strength of the two companies — all of these facts strongly suggest that most of the callers were not confused within the meaning of the Lanham Act, but were either misdirected, careless, or both. As for the e-mails, there are only five of them presented in the record, at least two of which could easily be chalked up to carelessness. Furthermore, many of the callers and e-mailers who were confused were likely quickly put straight, and "[s]hort-lived confusion or confusion of individuals casually acquainted with a business is worthy of little weight." Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d 1160, 1167 (11th Cir.1982). That said, it strains credulity to think that at least some of the many dozens of callers were not actually confused, and certainly two of the e-mailers were. The evidence of confusion on the part of former Promotions customers and current Tech customers and driver partners is worth more weight than the phone call and e-mail evidence, see id. but there are only a few such instances. Still, even a few instances of actual confusion on the part of customers is "worthy of some consideration." Id. Putting all of this together, the actual confusion factor weighs in favor of Promotions, but it by no means weighs so heavily that a finding of a likelihood of confusion is inevitable.
The "intent to infringe" factor is unimportant, the "strength of the mark" factor does not really favor a finding of confusion, and the "similarity of marks" and the "similarity of advertising methods" factors together favor a finding of confusion. The remaining three factors — actual confusion, similarity of services, and similarity of sales methods — deserve more discussion.
The one factor that weighs most heavily against Promotions is the dissimilarity in the sales methods of the two companies. Tech's services are accessed through a smartphone app.
What this means is that the group of people who might be likely to be confused are people who have heard of, but not used, Tech's services. But the people who
Were there no evidence of actual confusion, the foregoing analysis based on the other factors would counsel against finding that Promotions had shown a substantial likelihood of success on the issue of likelihood of confusion, though it would be a close call. But there is evidence of actual confusion, and the Eleventh Circuit has repeatedly emphasized the importance of such evidence. See, e.g., Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 936 (11th Cir. 2010) ("evidence of actual confusion is the most weighty consideration" in the likelihood of confusion analysis). Great weight is given to this factor for two reasons. First, actual confusion is direct evidence of precisely the occurrence that the "likelihood of confusion" inquiry is trying to assess the probability of. Second, giving great weight to evidence of actual confusion helps ensure that a judge doesn't rely (perhaps subconsciously) too heavily on his own subjective view of the likelihood of confusion. Cf. Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 633 (9th Cir.2008) (holding that a finding of no likelihood of confusion based solely on dissimilarity of marks was improper because it created "the potential for a judge to elevate his or her own subjective impressions of the relative dissimilarity of the marks over evidence of, for example, actual confusion"). In analyzing the other factors, this Court has of course tried to put itself into the shoes of an average consumer, and has tried to avoid giving too much weight to its own subjective impressions, but such efforts are perhaps doomed. See Societe Anonyme de la Grande Distillerie E. Cusenier Fils Aine & Cie. v. Julius Wile Sons & Co., 161 F.Supp. 545, 547 (S.D.N.Y.1958) ("[A] finding on infringement is by necessity a subjective determination by the trial judge based on his visceral reactions as to the likelihood of confusion the allegedly infringing mark will create in the minds of the public."). Giving serious weight to evidence of actual confusion helps counteract the empathetic deficiencies that necessarily distort the analysis of the remaining factors.
It is true that there is not a huge amount of evidence of actual confusion in the record — perhaps five or so instances of people who truly thought that Promotions and Tech were related despite having a more-than-casual relationship with the two entities, plus some fraction of the callers.
It's a close call, but Promotions has established a substantial likelihood of success on the merits of the "likelihood of confusion" element of its claims. Because it has also established that it's substantially likely to succeed in showing that it has enforceable trademark rights in the Gainesville area in the "UBER PROMOTIONS" mark, Promotions is substantially likely to succeed in showing that Tech has infringed on its mark by using its "UBER" marks in the Gainesville area.
Everything that has been said so far has not taken into account Tech's new "UberEVENTS" service. That service, if allowed to grow in the Gainesville area pending trial, would substantially increase the risk of consumer confusion for three independent reasons. First, the more "Uber_____" services there are, the more likely it is that a consumer might think that Promotions is just another branch on the Uber Technologies tree. Second, UberEVENTS is accessed through a webpage, thus eliminating one of the key differences between Tech and Promotions. Third, the service allows users to coordinate transportation at a set time in the future for a large number of people, just like Promotions. Granted, the method by which people are transported is quite different from Promotions — one imagines that most driver partners' vehicles are less lively than a party bus — but the nature of the service is far closer to the services offered by Promotions than any of Tech's other offerings.
To put this in terms of the factors, the "similarity of sales methods" factor is less tilted towards Tech and the "similarity of services" factor tips in favor of Promotions when assessing Tech's use of its UBER marks in connection with its UberEVENTS service. While the question of whether Promotions is substantially likely to succeed on the merits of its claim vis-à-vis UberX, etc. is a close call, these minor adjustments to the factors push Promotions' claim vis-à-vis UberEVENTS well past the edge. Promotions has easily met its burden of showing that it is substantially likely to succeed on the merits of its claim that Tech's use of its UBER marks in connection with the UberEVENTS service creates a likelihood of consumer confusion.
Tech asserted laches and estoppel as affirmative defenses in its original answer, ECF No. 15, and again in its answer to the amended complaint, ECF No. 70, but it didn't press those defenses at all in its opposition to the preliminary injunction motion, ECF No. 63, or at the hearing. These defenses would certainly fail in relation to Tech's UberEVENTS service, which didn't even start until after this lawsuit was brought. As for the remainder of Tech's offerings, Tech's failure to press any argument is fatal to it at this stage. When a party moving for preliminary injunctive relief has shown a substantial likelihood of success on the merits of a claim, the burden shifts to the nonmoving party
"[P]laintiffs seeking preliminary [injunctive] relief [must] demonstrate that irreparable injury is likely in the absence of an injunction." Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 22, 129 S.Ct. 365, 172 L.Ed.2d 249 (2008) (emphasis in original). Moreover, it is not all future injuries that matter, but only those that would occur "before a decision on the merits can be rendered." Id. (quoting 11A Charles A. Wright et al., Federal Practice and Procedure § 2948.1 (2d ed. 1995)).
If preliminary injunctive relief is denied in this case, what will likely happen? First of all, Tech will likely continue to grow in the Gainesville area, just as it has grown steadily in the past year and a half. ECF No. 44-1, at 2; ECF No. 37, at 29 ¶ 51; Gore Dep. 247-48. More and more people will become familiar with Tech, either by downloading its app and using its services, encountering its advertisements, or hearing about it through word-of-mouth. Some of these people (and some people already familiar with Tech) will become confused when they encounter Promotions' marks, and may mistakenly associate Promotions with Tech.
But so what? Where's the harm? The harm usually cited as flowing from confusion in a reverse-confusion case is the loss to the senior user of the "value of the trademark — its product identity, corporate identity, [and] control over its goodwill and reputation." A&H Sportswear, 237 F.3d at 228. This harm is usually deemed irreparable because loss of reputation, goodwill, etc. is not easy to quantify and can't readily be remedied with money damages or a post-trial injunction. See Kraft Foods Grp. Brands LLC v. Cracker Barrel Old Country Store, Inc., 735 F.3d 735, 741 (7th Cir.2013) (Posner, J.) ("[I]rreparable harm is especially likely in a trademark case because of the difficulty of quantifying the likely effect on a brand of a nontrivial period of consumer confusion."). It seems clear that if Promotions is harmed by confusion between now and the time of trial, that harm will be difficult, if not impossible, to quantify, and will thus be irreparable.
Still, the harm must be "likely" to occur for injunctive relief to be appropriate. Three considerations suggest that it is likely. First is the already-mentioned anticipated growth of Tech in the Gainesville market. The bigger Tech gets, the more likely confusion becomes, and the less control Promotions has over what people think of it. Tech's growth has been rapid, and much harm could be done to Promotions' reputation in the nine-plus months until trial.
Second is Tech's UberEVENTS service, which is, for reasons discussed above in Part III.C.11, likely to exacerbate consumer confusion. Because it is more directly competitive with Promotions' services, UberEVENTS may even cause Promotions to lose business due to forward or initial interest confusion.
With all due respect to Tech, Promotions has every reason not to want potential customers and other members of the public to associate it with a company that has inspired protests in cities around the world.
Promotions bears the burden of showing "that the threatened injury to [it] outweighs whatever damage the injunction may cause to" [Tech]. Davidoff & Cie, S.A. v. PLD Int'l Corp., 263 F.3d 1297, 1300 (11th Cir.2001). In conducting this measurement, it is important to remember that the harm to Tech will depend on the particular form of injunctive relief considered. Put a different (but completely equivalent) way, "the scope of an injunction should be determined by balancing harm to the plaintiff, other means of avoiding such harm, and the relative inconvenience to the defendant." Foxtrap, Inc. v. Foxtrap, Inc., 671 F.2d 636, 640 (D.C.Cir.1982) (per curiam). As discussed above in Part II.C, this Court has discretion to tailor relief so as best to serve the interests of the parties and the public.
Promotions asks this Court "to enjoin [Tech]'s use of the mark UBER, and any similar variation, in connection with its software app, its transportation services, event services and related brand names, in and to the State of Florida and to Florida consumers of [Promotions'] Services or [Tech]'s Services." ECF No. 27, at 39. As discussed above in Part III.B.2, Promotions is only substantially likely to succeed in showing that it has enforceable trademark rights against Tech in the Gainesville area, so this Court will certainly not enjoin Tech from using its marks anywhere else in Florida. The most Promotions can hope for is an injunction that would bar Tech from using its marks in connection with its services in Alachua County.
The parties disagree as to the practical effect that such an injunction would have. Promotions claims that Tech need not stop operating in the Gainesville market altogether — it could instead make a new app with a new name and operate as a sort of parallel universe version of itself in the Gainesville area. ECF No. 27, at 37; ECF No. 71, at 140-45. (Actually, Promotions proposed that Tech do this throughout Florida, consistent with its request for an injunction covering the entire state. Id.) Tech points out that this would be infeasible, if not impossible, to do from a technical standpoint, and would in any event not be economically wise. ECF No. 37, at 24-26 ¶¶ 39-43.
Promotions' proposal does indeed seem impracticable for two reasons. First, there are the technological and economic impediments identified by Tech. Second, forcing Tech to change its name only in Gainesville would force it to give up the value of its trademark — Tech would basically be starting over, and would have to mount a massive campaign to introduce itself to the Gainesville public. Promotions' proposal seems to ignore the value of name recognition and brand identity, which are the very things that trademark law seeks to protect.
In truth, the practical effect of enjoining Tech's use of its marks in the Gainesville area would probably be that Tech would simply stop operating there. See ECF No. 37, at 28 ¶ 49. This seems like a drastic remedy. The harm to Tech would be great — not in terms of lost profits, perhaps, but in terms of setting back Tech's efforts to build a customer base in the area. Tech has been operating in Gainesville for almost a year and a half and has made significant efforts to grow its business there; forcing it to leave town for nine months would do incalculable harm to that progress.
While it is true that "the injury a defendant might suffer if an injunction were imposed may be discounted by the fact that the defendant brought that injury upon itself," Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 290 F.3d 578, 596 (3d Cir.2002), the amount of such discounting should depend on the willfulness of the infringement. Cf. Opticians Ass'n of Am. v. Indep. Opticians of Am., 920 F.2d 187, 197 (3d Cir.1990) (taking into account the fact that the defendant had "openly, intentionally, and illegally appropriated the [plaintiff's] marks, despite being warned not to" in conducting the balancing analysis). Here, there is no real indication that Tech acted with an intent to cause consumer confusion in order to benefit itself.
Additionally, the fact that some of the harm to Promotions could have been avoided had Promotions filed suit earlier must be taken into account. Promotions waited over a year after Tech moved into the Gainesville market to file suit. While its delay may not be so unjustified that
Putting all of this together, it seems clear that Promotions has 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.
An injunction along the lines of the one requested by Promotions would be inappropriate for another reason. An injunction may be, and in many cases is, valued differently by different parties. See, e.g., BEM I, LLC v. Anthropologie, Inc., 301 F.3d 548, 553 (7th Cir.2002) (Posner, J.). For instance, if Promotions were a Manhattan-or Chicago-based company, complying with a preliminary injunction preventing Tech from using its marks in Promotions' area for nine months might well cost Tech many, many times more money than Promotions could ever hope to make in profits. Such an injunction would effectively be a windfall to Promotions, as it could sell the right to enforce the injunction to Tech in exchange for a sum far exceeding its anticipated profits but still far below the cost to Tech of obeying the injunction. The award of a permanent, rather than a preliminary, injunction of that nature — entered after a finding of infringement — might be appropriate in such a case since the enjoined activity would violate trademark law. Cf. In re Brand Name Prescription Drugs Antitrust Litig., 123 F.3d 599, 610 (7th Cir.1997) (Posner, J.) (injunction preventing a defendant from engaging in unlawful activity doesn't deprive the defendant of a legally-protected interest, and therefore value of injunction to defendant shouldn't count in determining whether diversity jurisdiction threshold is met). But a preliminary injunction is more problematic because the plaintiff is receiving something of great value to the defendant (the injunction) based on a mere likelihood of success, which raises the distinct possibility that the entry of the preliminary injunction will wrongfully give the plaintiff a windfall.
Certainly this is a concern in any preliminary injunction proceeding — that's why movants must post injunction bonds, see Nokia Corp. v. InterDigital, Inc., 645 F.3d 553, 560 (2d Cir.2011) — but it's particularly problematic in reverse confusion cases, which usually involve a small, regional plaintiff taking on a large national behemoth. One court characterized the problem in the following terms:
H. Lubovsky, 627 F.Supp. at 496-97.
To slightly tweak a metaphor offered by this Court during the hearing, a preliminary injunction should not serve as a bazooka in the hands of a squirrel, used to extract from a more fearsome animal a bounty which the squirrel would never be able to gather by his own labors — at least not when the larger animal is mostly without sin.
While an injunction along the lines requested by Promotions would harm Tech more than the absence of any relief would harm Promotions, a more narrowly-tailored injunction — one that would do less harm to Tech while still preventing some harm to Promotions — might be in order. In particular, an injunction aimed at (1) preventing people looking for Tech's phone number from coming across Promotions' phone number and (2) preventing UberEVENTS from causing further confusion would be appropriate.
Many, many people have called Promotions looking for Tech. Some of these people are undoubtedly confused, with that confusion resulting from the fact that Promotions comes up when one searches "Uber Gainesville phone" or "Uber Gainesville phone number" on Google. Requiring Tech to set up a local (352 area code) number to handle calls from Tech customers and driver partners in the area would help reduce confusion and would not be unduly burdensome to Tech. Relief of this nature is often awarded to reduce confusion in trademark cases. See generally McCarthy § 30:7.
As for UberEVENTS: as discussed above in Part III.C.11, if Tech is allowed to continue to use its "UBER" marks in connection with UberEVENTS in the Gainesville area, there is an increased risk of consumer confusion — including forward confusion and loss of sales — and harm to Promotions' ability to control its name in the event transportation field. UberEVENTS is a new service, and "[u]sage in th[e] [Gainesville] community is minimal." ECF No. 71, at 73. With that in mind, it seems clear that an injunction preventing Tech from using its marks in connection with UberEVENTS pending a resolution of the merits of this case would do very little damage to Tech while preventing a non-negligible amount of harm to Promotions. It also seems that compliance with such an injunction would not be unduly burdensome from a technological standpoint — Tech would just have to ensure that any customer inputting an Alachua County address into the form on the UberEVENTS page would be unable to proceed.
Tech's lack of an easy-to-find phone number and its recently-launched UberEVENTS service are two facets of its business that are likely to cause confusion among customers but are also not so central to Tech's operation that injunctive relief would do much harm to Tech. For that reason, an injunction (1) requiring Tech to maintain a local phone number, and to take steps to make the number easily findable; and (2) preventing Tech from using its marks in connection with its UberEVENTS service in the Gainesville area pending trial would do less harm to Tech than the lack of any injunctive relief would do to Promotions.
A preliminary injunction may not issue unless a movant shows that the "injunction is in the public interest." Winter,
In this case, enjoining Tech from using its marks in connection with its services in Gainesville would not serve the public interest. While such an injunction would certainly reduce consumer confusion, its negative effects would be far more serious. As discussed above in Part V.A, Tech would likely (at least temporarily) pull out of the Gainesville market, which would negatively impact Tech's driver partners. ECF No. 37, at 26-27 ¶¶ 44-45. Tech would also have to cease participating in its "Freedom in Motion" program, in which it "facilitates on-demand, subsidized transportation services for residents of senior citizen communities," and in the "Safe Rides" program, "which gives university students discounted rates on their rides when returning home late at night." Id. at 28-29 ¶ 50.
The public's interest in having on-demand transportation would also be disserved by granting the relief Promotions requests. Tech provides a lower-cost alternative to traditional taxi services that has apparently grown in popularity with Gainesville riders as of late. See id. at 29 ¶ 51. Yanking that away — particularly when Promotions is not directly competitive with Tech and could not fill the void left by Tech's departure
On the other hand, the more limited relief discussed above in Part V.C would serve the public interest. The limited injunction would help reduce confusion, but it would not force Tech to abandon any of its programs. While enjoining any further growth of UberEVENTS might impact Tech's driver partners, the effect is likely to be very minor given the fact that UberEVENTS is relatively new and has not yet taken off in Gainesville.
"[A] court may issue a preliminary injunction ... only if the movant gives security in an amount that the court considers proper to pay the costs and damages sustained by any party found to have been wrongfully enjoined or restrained." Fed. R. Civ. P. 65(c). Tech asked for a security bond of $64 million, but that was based upon a broad injunction covering all of Florida. ECF No. 63, at 44. Given the very limited scope of the injunction, a bond in that amount would be excessive.
It's very hard to estimate how much money Tech might lose by not operating its UberEVENTS service for nine months,
Promotions is substantially likely to succeed in showing that Tech has infringed on its common-law trademark rights in the Gainesville area. It is also likely to suffer irreparable harm absent any injunctive relief pending a trial on the merits. However, enjoining Tech from using its marks in connection with any of its services in the Gainesville area would do more harm to Tech than Promotions would suffer in the absence of injunctive relief, and would also not serve the public interest. A more limited injunction aimed at preventing people looking for Tech's phone number from coming across Promotions' phone number and at preventing Tech from using its marks in connection with its UberEVENTS service would do less harm to Tech than Promotions would suffer in the absence of any relief and would also serve the public interest.
Accordingly,
ECF No. 63, at 136-37. This doesn't prove anything, of course, but it tends to support the conclusion that many of the callers to Promotions don't even realize they're talking to Promotions.
