New Roadblock To UBER’S Entry Into Florida

Our firm, along with Santucci Priore, P.L., filed suit on behalf of our mutual client, Florida company Uber Promotions, Inc., against California based Uber Technologies, Inc. last week for trademark infringement, unfair competition and related claims seeking an injunction to stop the California company from using the marks UBER and ÜBER in Florida and in interstate commerce.  The Complaint filed in the United States District Court in and for the Northern District of Florida, Case # 1:15-cv-00206-MW-GRJ, also seeks an order to cancel the California company’s federal trademark registration, to block a pending application, and for an award of money damages, punitive damages, treble damages, and attorneys’ fees.

The purposes of the lawsuit is to mitigate consumer confusion, which is occurring on a daily basis. The Florida company receives calls and emails from customers looking for, or complaining about the Defendant, and from Defendant’s own drivers and employees looking for, or complaining about the Defendant. Uber Promotions, Inc. has no affiliation with, and has never authorized the use of the UBER trademarks by Uber Technologies, Inc., the maker of the Uber software application.

As alleged in the Complaint, the Florida Plaintiff used the trademark UBER, continuously, with passenger transportation and vehicle charter services, several years before the Defendant registered or started using it anywhere, i.e., since 2006, as opposed to 2010 on the part of the Defendant.  When the California Defendant recently began entering into various Florida markets and started using Plaintiff’s exact name “Uber Promotions” in social media, the problems exacerbated.

The legal team representing the Plaintiff, include Alexander Brown and Scott Smiley of the Concept Law Group and Michael I. Santucci of Santucci Priore, P.L., who frequently works with us on intellectual property matters, and, in fact, works under the same roof in Fort Lauderdale as a collective intellectual property think tank.  Santucci was partly responsible for obtaining a Two Hundred Forty Million Dollar ($240,000,000) verdict against The Walt Disney Company in 2002 for misuse of other intellectual property.  Alexander Brown successfully tried a New York copyright/trade secret infringement case against Security Mutual Life Insurance Company in 2011 that resulted in a Twenty Six Million Dollar ($26,000,000) jury verdict for his client and was trial counsel in a 2010 Florida case with patent attorney Scott Smiley, in which they obtained a nearly Twenty Five Million Dollar ($25,000,000) jury verdict against The Home Depot.