996 F.3d 1038
10th Cir.2021Background
- Underwood developed a virtual assistant concept called E.R.I.C.A. (demo/promo materials starting in 2009), registered a Georgia service‑mark application in October 2010 describing the service as “E.R.I.C.A. verbally tells the news and current events via cell phones and computer applications.”
- Underwood registered the domain my24erica.com in 2012; he contends the site offered search/personal‑assistant services by March 2015, while GoDaddy records and BofA contend hosting began in June 2018.
- Bank of America filed an intent‑to‑use federal trademark application for ERICA in October 2016 and obtained federal registration in July 2018 (priority date Oct. 2016).
- Underwood sued BofA for trademark infringement (Lanham Act §43(a) and related state common‑law claims); BofA counterclaimed to cancel Underwood’s Georgia registration.
- The district court granted summary judgment: cancelled Underwood’s Georgia registration and held Underwood lacked a protectable interest in both marks; Underwood appealed.
- The Tenth Circuit affirmed cancellation and affirmed lack of protection for my24erica.com, but vacated and remanded the E.R.I.C.A. infringement decision because the district court used an incorrect legal standard for actual use.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Cancellation of Georgia registration | Underwood implied his pre‑2010 promotional use justified registration or mitigation against cancellation | BofA: registration was improperly granted because Underwood did not use the registered service before filing | Registration affirmed cancelled: Underwood admitted he had not used the mark for the specific services listed before filing, so cancellation proper; reformation unavailable |
| E.R.I.C.A. — Actual‑use protectable interest | Underwood: my24erica.com provided search/personal‑assistant services by March 2015, rendering services to the public under the E.R.I.C.A. mark | BofA: no bona fide use — no sales, revenue, or clear public access before BofA’s Oct. 2016 priority date | Vacated and remanded: district court applied wrong standard (required purchases/revenue and confined services to Georgia registration); remand to apply correct actual‑use test (public accessibility, services rendered to others, and mark identifying services on the site) |
| E.R.I.C.A. — Analogous‑use protectable interest | Underwood: promotional activities (presentations, ~1,500 business cards, ~200 DVDs, meeting with AT&T, Facebook likes) created public identification | BofA: promotional efforts were limited/insular and insufficient to create public association with services | Affirmed against Underwood: evidence insufficient to show open, notorious, public identification before Oct. 2016 |
| my24erica.com — Domain as protectable service mark | Underwood: domain name and website traffic (Facebook likes) show mark identification | BofA: domain merely an internet address; no evidence domain identified source of services to public | Affirmed for BofA: my24erica.com functioned only as an address, not a mark identifying/distinguishing services; not protectable |
Key Cases Cited
- B&B Hardware, Inc. v. Hargis Indus., 575 U.S. 138 (U.S. 2015) (explains priority of use and role of trademark distinctiveness)
- Matal v. Tam, 137 S. Ct. 1744 (U.S. 2017) (describes federal registration under the Lanham Act)
- Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (U.S. 1982) (Lanham Act purpose and unfair competition background)
- 1‑800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2013) (elements of a §43(a) claim: protectable interest, defendant use, likelihood of confusion)
- Morningside Grp. Ltd. v. Morningside Cap. Grp., LLC, 182 F.3d 133 (2d Cir. 1999) (service mark use exists when services are rendered to others even without profit)
- Specht v. Google Inc., 747 F.3d 929 (7th Cir. 2014) (website bearing a mark may be use in commerce only if it identifies goods/services provided)
- T.A.B. Sys. v. Pactrel Teletrac, 77 F.3d 1372 (Fed. Cir. 1996) (analogous use must produce public identification of the mark with the user’s goods/services)
- U.S. Pat. & Trademark Off. v. Booking.com B.V., 140 S. Ct. 2298 (U.S. 2020) (domain names can function as trademarks in some circumstances)
- Brookfield Commc’ns v. W. Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999) (mere domain registration is ordinarily insufficient for trademark protection)
- Drexel Enters., Inc. v. Richardson, 312 F.2d 525 (10th Cir. 1962) (even a single bona fide use can sustain trademark rights)
- Cunningham v. Laser Golf Corp., 222 F.3d 943 (Fed. Cir. 2000) (cancellation standing requires belief of likely damage from the registration)
- Kelly Servs., Inc. v. Creative Harbor, LLC, 846 F.3d 857 (6th Cir. 2017) (distinguishes reformation of registrations for partial nonuse from cancellation for complete nonuse)