Trademarks
Underwood v. Bank of America
Date: Nov. 4, 2024
Issue: Under Colorado’s trademark law, did Bank of America’s trademark registration of its online personal assistant constitute trademark infringement?
Case Summary: The U.S. Supreme Court denied a petition to examine whether BofA infringed on a movie website owner’s trademark by launching and registering a trademark for its online personal assistant.
Erik Underwood, creator of a movie website, sued BofA claiming it infringed on his trademark registration when it created its virtual assistant. Underwood created My24Erica.com, which enables users to search for movies and actors, and he obtained a Georgia state trademark registration for “ERICA.” In 2015, Underwood began using the mark on his website. In 2018, BofA launched its online personal assistant “Erica.” BofA argued Underwood failed to establish protectable rights in the ERICA mark before BofA adopted its mark.
A Colorado federal court granted BofA’s motion for summary judgment, ruling that Underwood could not establish trademark priority in the ERICA mark. Under trademark priority, whoever was first to sell goods or services under a particular mark is considered the rightful trademark owner. On appeal, the Tenth Circuit ruled to establish priority, Underwood had to show the ERICA mark “as it appeared on the website display, clearly identified and distinguished the services offered on the website.” The Tenth Circuit remanded for further proceedings. On remand, Underwood tried to identify statements on the My24Erica.com website showing the connection between the ERICA mark and its search engine, which allegedly offered “personal assistant services” on the website. Still, the district court granted summary judgment to BofA, ruling that Underwood could not establish a connection between the ERICA mark and the services offered on the website.
In a 3-0 decision, a Tenth Circuit panel affirmed. The panel noted that to establish a claim for trademark infringement under federal law, a plaintiff must show the plaintiff has a protectable interest in the mark; the defendant has used an identical or similar mark in commerce; and the defendant’s use is likely to confuse customers. Conceding the last two elements were established, the panel examined whether Underwood had a protectable interest in the mark. According to the panel, a plaintiff can establish a protectable interest in an unregistered service mark through “actual use in the market” and actual use must take place in commerce. The panel also explained the use of a mark on a website “may constitute a bona fide use in commerce,” but the website must “identify the goods or services … provided through or in connection with the website.” However, the panel held that Underwood failed to establish that the website clearly distinguished the services offered. As a result, he could not show a protectable interest in the unregistered mark. Underwood petitioned the U.S. Supreme Court for review.
In his petition for certiorari, Underwood argued the Tenth Circuit adopted a flawed, context-free approach to evaluating evidence, creating a circuit split with other courts. According to Underwood, the Tenth Circuit improperly analyzed each piece of evidence in isolation, leading to inconsistent conclusions about using the ERICA mark on My24Erica.com. The Tenth Circuit interpreted two website statements separately — one referring to an aspirational search engine and the other to a person providing movie suggestions — without considering how consumers would understand these statements together or in the broader context of the evidence. Underwood asserted that this piecemeal approach contradicted other circuits’ requirement to consider evidence holistically as if piecing together a puzzle. Even more so, Underwood argued the Tenth Circuit disregarded critical evidence, such as using the ERICA mark in a metatag linking it to My24Erica.com’s services. For these reasons, Underwood urged the Court to grant certiorari to clarify the proper framework for evaluating such evidence.
Bottom Line: The Supreme Court’s denial means the Tenth Circuit ruling stands, applying to Oklahoma, Kansas, New Mexico, Colorado, Wyoming, and Utah.
Documents: Petition
