Sunday, February 21, 2016

Trademark Internet Use Collides Regionally in Florida

A trademark used in a particular region of the country may not be absolutely alone with the existence of the Internet.  Marketing a business on the Internet has a ubiquitous presence to the service seeking potential customer.  Whether your business is in the southeast, such as Florida, and there is the existence of a wider market business with a similar name entering the local area, seniority in use, market definition by geography and industry type service all come into play in addition to sales method.
A situation along these lines was encountered by a Gainesville Florida company named Uber Promotions (UP) which provides limousine services in the 352 area code area of Florida. Uber Technologies (UT) entered the Gainesville area in 2014 where Uber Promotions was already operating since 2006.  The plaintiff, UP filed suit claiming that UT was causing confusion, in that it argued that UT was causing and committing  trademark infringement, unfair competition, false designation of origin and argued for cancellation of UT’s United States Trademark Registration(s), under Trademark Act of 1946, and under Florida’s Registration and Protection of Trademarks Act, § 495.131-141, Fla.Stat. in addition to under common law.  The plaintiff subsequently proceeded with a filing for a preliminary injunction on which the District Court for the Northern District of Florida ruled granting in part and denying in part.  The court articulated its analysis weighing into several points among which included the likelihood of Plaintiff prevailing on the merits, the level of irreparable injury to the plaintiff if the injunctive relief without granting, the level of harm potentially experienced by plaintiff as opposed to what level of harm the Defendant would experience with the injunction, and if the preliminary injunction would be a disservice to the public.
Along that taxonomy of points, the court dealt with the aspect of possible trademark confusion by dissecting the intent of trademark use, the mark’s strength, and its similarity with an eye towards finding for the presence of there being confusion; with the notion that there was a need to further analyze the basis for there being actual confusion, the similarity of services, and the sales methods.  The court noted the importance of distilling evidence by weighing into the element of possible confusion in order to eliminate the potential of the judge’s subjective impression inclined toward finding the presence of confusion.    Articulating a discussion from an 11th Circuit case,* that not much evidence is needed to demonstrate the confusion because the example of the confusion of a few customers shows likelihood of confusion of many.

The court’s consideration of the injunctive relief claim not only assessed the likelihood of success on the merits,  the possibility of incurring irreparable injury, the injury in the absence of the injunction would be greater than what the opponent would experience from the injunction,  and that there would not be an adverse effect to the public interest, it as well considered the precedent of extending a presumption of irreparable harm to the movant once the movant demonstrates likelihood to succeed on the merits of a trademark infringement claim.**

The court reasoned that the seniority of the UP’s trademark stood to be considered but its demand for UT to change its trademark would be a disservice to the public, essentially respecting its national reach.  The court as well noted that there was dissimilarity in sales methods where UT’s approach was through the interphase of an application on a mobile device.  The element of confusion was given careful consideration.

Altogether, the court angled towards it exercising its discretion in devising appropriate relief given the need to balance the interests at stake of competing claims and the considered taxonomy of factors.  With this it ordered UT to address particular use of keywords as search criteria with Google, Yahoo, and Bing so that words referencing UP will not result with UT’s area code number.  As a way to distinguish how the general public could access either UT or the local provider UP, the court emphasized use of wording along with phone number distinction so that local Gainesville customers would not confuse UP’s number as the UT Gainesville area number.  The court exercised its equity jurisdiction authority to style the relief to the composition of the case allowing for flexibility.

However, while the court’s focus was weighing on the mechanics of search engines and balancing the interests of the UT and reducing the confusion with the local UP, it naively expects UT to ensure what Google is going to do. Organic results cannot be ensured yet the court expects Uber Technologies to ensure that Google search results display specific organic search results.  The court misses that Uber Technologies cannot use AdWords to assuage its affirmative disclosure obligation and it cannot guarantee placement.  The court also misses that UT’s use of words may be able to avoid results that lead to Uber Promotions, but UT cannot guarantee that organically its telephone number will not appear with variations of Uber Promotions.  In essence, UT will conceivably appear to be out of compliance with the order because it cannot guarantee the results mandated by the order.  It will have to rely on exerting a good faith effort to assuage the court.

See Uber Promotions, Inc. v. Uber Technologies, Inc., 2016 WL 617450 (N.D. Fla. Feb. 16, 2016).
* AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1544 (11th Cir. 1986).
** Siegel v. LePore, 234 F.3d 1163, 1176 (11th Cir. 2000).

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