It’s Uber Confusion for Business Suing Over Shared Name

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By Anandashankar Mazumdar

Florida-based IT company Uber Operations LLC wants ride-hailing company Uber Technologies Inc. to stop using the Uber name because of confusion that has disrupted its business, according to a trademark lawsuit filed Aug. 29.

The company, which started using the name Uber Operations in 2004, said that it has had to take down signage and cease answering phones so that people seeking business with Uber Technologies stop showing up at its door. The Florida company has even received death threats meant for the Silicon Valley company, Uber Operations said in its complaint filed in the U.S. District Court for the Northern District of Florida ( Uber Operations, LLC v. Uber Technologies, Inc. , N.D. Fla., No. 17-391, complaint filed 8/29/17 ).

“The public has come to assume that Uber Operations’ services are really Uber Tech’s or that Uber Operations has become somehow connected to Uber Tech, and Uber Operations has thus lost the value of its trademark, i.e., its corporate identity and control over its goodwill and reputation,” Uber Operations said in its complaint.

This kind of confusion is known as reverse confusion in trademark law. Reverse confusion can happen when the first user of a trademark, in this case Uber Operations, is mistaken for a user that started using the trademark in question later but has become more well-known.

The Florida company is asking the court for an injunction barring Uber Technologies from using the names “Uber” and “Uber Xchange,” for trebled actual damages, disgorgement of profits, and attorneys’ fees.

Older User of Trademark Mistaken for Newer User

Uber Operations is a data integration and cloud computing services company that offers IT services primarily in the health care field. It uses the domain names uberops.com, uberoperations.com, uberexchange.com, and ubermover.com. It holds federal trademark registrations on “Uber Operations,” “UberXchange,” and “UberMover.”

Uber Technologies was founded after 2008, and registered its “Uber” trademark in 2011.

According to the complaint, Uber Operations has received thousands of phone calls, email messages, and fax transmissions meant for Uber Technologies. It said it also routinely receives private information about Uber Technologies’ drivers, financing applications, and personal items like mobile telephones. It sends all its incoming calls to voicemail in order to screen out the ones meant for Uber Technologies. The company has also received inquiries from state regulators meant for the other Uber.

“Uber Operations has not been able to ignore them, and has had to repeatedly advise attorneys and government agents that Uber Operations is not Uber Tech,” according to the complaint. The company even gets negative online reviews meant for Uber Technologies.

Uber Technologies didn’t immediately respond to Bloomberg BNA’s request for comment.

Ausley & McMullen P.A. represented Uber Operations.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at AMazumdar@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

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