ERIK M. UNDERWOOD, a Colorado resident, and MY24HOURNEWS.COM, INC., a Colorado corporation, Plaintiffs - Appellants, v. BANK OF AMERICA CORPORATION, a Delaware corporation, Defendant - Appellee.
No. 19-1349
No. 20-1087
UNITED STATES COURT OF APPEALS FOR THE TENTH CIRCUIT
April 30, 2021
MATHESON, EBEL, and MORITZ, Circuit Judges.
PUBLISH. Appeal from the United States District Court For the District of Colorado (D.C. No. 1:18-CV-02329-RM-MEH). Christopher M. Wolpert, Clerk of Court.
David H. Bernstein, (Jeremy Feigelson, Jared I. Kagan, and Alexandra P. Swain, with him on the brief), Debevoise & Plimpton LLP, New York, New York, for Defendant – Appellee.
OPINION
MATHESON, Circuit Judge.
Mr. Underwood sued BofA for infringing his marks. BofA counterclaimed to cancel Mr. Underwood’s Georgia registration of his E.R.I.C.A. mark. The district court granted BofA’s motions for summary judgment on its cancellation counterclaim and on Mr. Underwood’s infringement claims. Exercising jurisdiction under
I. BACKGROUND
A. Legal Background
“The principle underlying trademark protection is that distinctive marks—words, names, symbols, and the like—can help distinguish a particular artisan’s goods from those of others.” B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 142 (2015).1 “The basic rule of trademark ownership in the United States is priority of use,” which
“The foundation of current federal trademark law is the Lanham Act.” Matal v. Tam, 137 S. Ct. 1744, 1752 (2017). “[T]he purpose of the Lanham Act was to codify and unify the common law of unfair competition and trademark protection.” Inwood Lab’ys, Inc. v. Ives Lab’ys, Inc., 456 U.S. 844, 861 n.2 (1982) (White, J., concurring). “Under the Lanham Act, trademarks that are used in commerce . . . may be federally registered.” Tam, 137 S. Ct. at 1752 (quotation omitted). Section 43(a) of the Lanham Act,
B. Factual Background
1. Initial Development of E.R.I.C.A.
In 2009, Mr. Underwood developed a business plan including a virtual assistant called E.R.I.C.A.—named for Mr. Underwood’s sister and a backronym for Electronic Repetitious Informational Clone Application. Mr. Underwood envisioned E.R.I.C.A. as
Mr. Underwood took steps in 2009 to attract investor interest in his business. He used a PowerPoint presentation at business pitch meetings containing the following picture of E.R.I.C.A. to show “the concept of how E.R.I.C.A. would look” and “what she might say while interacting with the viewer as a finished end-product”:
App. (No. 19-1349), Vol. 2 at 314, 319, 321. Mr. Underwood gave a presentation at the Small Business Administration office in Atlanta. Between 2009 and 2011, he distributed nearly 1,500 business cards featuring a picture of E.R.I.C.A. Beginning in February 2010, he distributed roughly 200 DVDs containing the E.R.I.C.A. demo.
In October 2010, Mr. Underwood applied to register a service mark in Georgia for “a multi national computer animated woman . . . [named] Erica.” App. (No. 19-1349), Vol. 1 at 142. On the application, Mr. Underwood explained the service associated with the mark: “E.R.I.C.A. verbally tells the news and current events through cell phone and computer applications.” Id. The mark was approved for registration in Georgia.
3. Proposed Joint Venture
In 2012, Mr. Underwood gave a presentation to AT&T. AT&T and My24HourNews.Com, Inc. discussed forming a joint venture, but it never came to fruition.3
4. my24erica.com
In 2012, Mr. Underwood registered the domain name my24erica.com with GoDaddy.com.4 my24erica.com functioned “as a search engine . . . where [E.R.I.C.A.] can recall queries of movies [and] television shows.” App., Vol. 3 at 517. A user could enter a title into the search bar on my24erica.com, and E.R.I.C.A. could “offer her picks of her favorite kind of movies through an algorithm code.” Id. The same picture of the
According to Mr. Underwood, my24erica.com became publicly accessible in March 2015. See App., Vol. 5 at 1061. BofA claims that my24erica.com was not publicly accessible until June 2018. See Aplee. Br. at 40.
In support of his assertion, Mr. Underwood points to, among other things, declarations of individuals who claim to have visited my24erica.com in the relevant time frame. The parties also introduced dueling expert reports. BofA submitted the report of Keena Willis, the Director of Global Subpoena Compliance at GoDaddy.com, LLC, the hosting platform on which my24erica.com was allegedly hosted. She reviewed voluminous business records from GoDaddy.com and concluded the “records indicate that, on or about June 27, 2018, Mr. Underwood began hosting my24erica.com with GoDaddy.” App., Vol. 2 at 302. Mr. Underwood, on the other hand, relied on the expert report of Jonathan Hochman, who investigated records associated with my24erica.com and my24erica.com’s web hosting control panel, database administration tool, and administrator portal. He concluded the website was launched on March 18, 2015.
5. BofA’s Registered Mark
In October 2016, BofA filed an “intent to use” application with the United States Patent and Trademark Office (“USPTO”) for ERICA, a mark associated with “voice controlled information and personal assistant devices in the field of banking and personal
C. Procedural Background
1. Complaint
Alleging that BofA’s mark infringed his E.R.I.C.A. and my24erica.com marks, Mr. Underwood sued BofA for (1) false association under Section 43(a) of the Lanham Act, (2) common law service mark infringement, (3) common law unfair competition, (4) violations of the Colorado Consumer Protection Act, and (5) service mark infringement under Georgia law.
2. Counterclaims
BofA answered the complaint and brought six counterclaims: one for cancellation of the Georgia registration for the E.R.I.C.A. mark, and five for declarations under the federal Declaratory Judgment Act that BofA had not violated (1) Section 43(a) of the Lanham Act, (2) common law service mark protections, (3) common law unfair competition protections, (4) the Colorado Consumer Protection Act, and (5) Georgia service mark protections.
3. Motion for Partial Summary Judgment
BofA moved for partial summary judgment on its cancellation counterclaim. The district court granted the motion and ordered the Georgia Secretary of State to cancel the registration. The court found that the “plaintiffs did not have valid grounds to register the trademark at the time of filing,” as required under Georgia law. App. (No. 19-1349),
4. Motion for Summary Judgment
BofA moved for summary judgment on Mr. Underwood’s infringement claims. The district court granted the motion. It found that Mr. Underwood had failed to demonstrate a protectable interest in his marks. On that basis, the district court dismissed Mr. Underwood’s claims for (1) violation of Section 43(a) of the Lanham Act, (2) common law service mark infringement, and (3) common law unfair competition.5
The district court entered final judgment, and Mr. Underwood timely appealed. We consolidated the two appeals and now resolve both.
II. DISCUSSION
We address (A) our appellate jurisdiction, (B) BofA’s cancellation counterclaim, and (C) Mr. Underwood’s infringement claims.
We review the district court’s grant of summary judgment de novo, applying the same standard applied by the district court. See Sandoval v. Unum Life Ins. Co. of Am., 952 F.3d 1233, 1236 (10th Cir. 2020). We view the evidence and draw all reasonable inferences in the light most favorable to Mr. Underwood. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Summary judgment is proper “if the movant shows that
A. Jurisdiction
Before the district court entered final judgment, BofA moved to dismiss Mr. Underwood’s interlocutory appeal, arguing we lack appellate jurisdiction. We need not address this issue because Mr. Underwood filed a second notice of appeal from the final judgment the district court entered after granting summary judgment on Mr. Underwood’s infringement claims. The district court’s summary judgment order and final judgment constituted a “final decision” appealable under
Even if Mr. Underwood’s interlocutory appeal was premature, the interlocutory “notice of appeal filed before the district court dispose[d] of all claims” became effective when Mr. Underwood obtained a “final adjudication before the court of appeals
Thus, we have jurisdiction over both of the district court’s orders. We deny as moot BofA’s motion to dismiss Mr. Underwood’s first appeal.8
B. Cancellation Counterclaim
The district court found that the Georgia registration for Mr. Underwood’s E.R.I.C.A. mark should be cancelled because the registration was improperly granted under Georgia law. We agree.
“[W]hen interpreting Georgia trademark law, we look for guidance to general principles of American trademark law as reflected in persuasive federal precedents . . . and in trademark law treatises.” McHugh Fuller Law Grp., PLLC v. PruittHealth, Inc., 794 S.E.2d 150, 154 (Ga. 2016).
a. Georgia trademark applications
An applicant for a Georgia trademark must provide “[a] description of the goods or services in connection with which the mark is used and the mode or manner in which the mark is used in connection with such goods or services,” and “[t]he date when the trademark or service was first used anywhere,” and in Georgia.
b. Cancellation
A party seeking cancellation of a trademark registration “must prove two elements: (1) that it has standing; and (2) that there are valid grounds for canceling the registration.” Cunningham v. Laser Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000). The standing element in the cancellation context is distinct from Article III standing and is not
In Georgia, “[t]he Secretary of State shall cancel . . . [a]ny registration concerning which a court of competent jurisdiction shall find that [t]he registration was granted improperly.”
c. Reforming a registration
In some instances, reformation of a registration is appropriate rather than full cancellation. An “applicant’s nonuse of its mark on some of the identified services” in the registration is distinct from an “applicant’s complete failure to make use of its mark before filing the application on any of its identified services.” Grand Canyon W. Ranch v. Hualapai Tribe, Opp. No. 91162008, 2006 WL 802407, at *2 (T.T.A.B. 2006). Although “the harsh remedy of voiding the application [i]s appropriate” for complete failure to use the mark before registration, “applicants that have used the mark in connection with some of the goods or services identified in their applications, but not others, may cure this problem by amending their applications to delete the offending goods and services.” See Kelly Servs., Inc. v. Creative Harbor, LLC, 846 F.3d 857, 869 (6th Cir. 2017) (quotations omitted).
Mr. Underwood’s Georgia registration should be cancelled because the registration was “granted improperly” and there is no basis for reformation.
a. Registration was “granted improperly”
The registration for the E.R.I.C.A. mark was “granted improperly.” See
First, Mr. Underwood does not contest in his briefs that BofA has standing because “being sued for infringement is sufficient to support standing for a counterclaim for cancellation.” World Mkt. Ctr. Venture, LLC v. Tex. Int’l Prop. Assocs., No. 2:08-cv-01753-RCJ-GWF, 2009 WL 3303758, at *3 (D. Nev. Oct. 14, 2009). The continuing Georgia registration gave BofA “a reasonable belief that there is a likelihood of damage
Second, BofA has valid grounds to seek cancellation of Mr. Underwood’s Georgia registration. In opposing BofA’s motion for partial summary judgment, Mr. Underwood “admit[ted] . . . that prior to 2015 [he] did not use the Georgia trademark in connection with a service that ‘verbally tells the news and current events through cell phone and computer applications.’” App. (No. 19-1349), Vol. 2 at 151. His admission that he had not used the Georgia trademark with the services specified on the Georgia registration resolves the question whether the services were “used” before October 2010. See
Mr. Underwood argues that rather than cancelling the registration, the district court should have reformed the registration to reflect that he used the E.R.I.C.A. mark “in partial conformity with the registration.” Aplt. Br. (No. 19-1349) at 6. We disagree.
Mr. Underwood cannot show any basis to reform his Georgia registration. The Georgia registration lists only a single service associated with the E.R.I.C.A. mark: “E.R.I.C.A. verbally tells the news and current events via cell phones and computer applications.” App. (No. 19-1349), Vol. 1 at 141 (capitals omitted). Mr. Underwood’s admission that he did not use the mark in connection with the only service listed on the registration before October 2010 means that he cannot show a necessary precondition for reformation—that he used the mark with “some of the goods or services identified in the[] application[], but not others.” Kelly Servs., 846 F.3d at 869 (emphasis added).
Mr. Underwood’s suggestion that the district court could have reformed the registration to “a computer animated woman” lacks merit. Aplt. Br. (No. 19-1349) at 7. The “computer animated woman” language comes from the registration’s description of the E.R.I.C.A. mark, not from the registration’s list of services that the mark purported to identify or distinguish. See App. (No. 19-1349), Vol. 1 at 141. Under trademark law principles, “it is the trade, and not the mark, that is to be protected.” Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 416 (1916), superseded on other grounds by
* * * *
We affirm the cancellation of Mr. Underwood’s Georgia registration.
C. Infringement Claims
The district court granted summary judgment to BofA on Mr. Underwood’s claims that BofA infringed his E.R.I.C.A. and my24erica.com service marks. On appeal, Mr. Underwood argues he established a protectable interest in both marks through actual and analogous use. On the E.R.I.C.A. mark, we vacate summary judgment because the district court applied the wrong legal standard for actual use. We affirm summary judgment on the my24erica.com mark.
1. Additional Legal Background
a. Section 43(a)
Section 43(a) of the Lanham Act prohibits anyone, “in connection with any goods or services, . . . [from] us[ing] in commerce any word, term, name, symbol, or device, or any combination thereof, . . . which is likely to cause confusion.”
This appeal addresses only the first element, whether Mr. Underwood has a protectable interest in the E.R.I.C.A. and my24erica.com marks. When, as here, the plaintiff’s marks are unregistered, the plaintiff has the “burden to demonstrate that [the mark] is protectable under § 43(a).” Donchez, 392 F.3d at 1216.
b. Protectable interest
A plaintiff acquires a protectable interest by “us[ing] a distinct mark in commerce.” See B&B Hardware, 576 U.S. at 142. “[S]o long as a person is the first to use a particular mark,” that person will prevail against subsequent users of the mark. See ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 147 (2d Cir. 2007). Under the Lanham Act, the plaintiff must make “bona fide use of a mark in the ordinary course of trade, and not . . . merely to reserve a right in a mark.”
The plaintiff’s “use of a mark in commerce . . . must be sufficient to establish ownership rights for a plaintiff to recover against subsequent users under section 43(a).” Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1195 (11th Cir. 2001). This requirement has its roots in the common law “rule of trademark ownership in the United States[,] priority of use.” 2 McCarthy § 16:1.12 Whether such prior use is sufficient to confer a protectable interest in the mark does not turn on whether the use was for profit, but instead on whether the activities “bear elements of competition, notwithstanding [a] lack of an immediate profit-motive.” Planetary Motion, 261 F.3d at 1200; see id. at 1199 (“Common law unfair competition protection extends to non-profit organizations because they nonetheless engage in competition with other organizations.”).
The parties agree that a plaintiff may show use sufficient to establish a protectable interest through (1) “actual use in the market,” Allard Enters., Inc. v. Advanced Programming Res., Inc., 146 F.3d 350, 354 (6th Cir. 1998) (quotations omitted); or (2) “prior use analogous to trademark or service mark use,” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162 (Fed. Cir. 2002). As to either, the plaintiff must show use of the mark as a service mark, which means use “to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown.”
i. Actual use
Actual use of a mark consists of “attempt[s] to complete genuine commercial transactions.” Allard Enters., 146 F.3d at 359. A service mark is used in commerce when services are “rendered to others,” that is, “[when] the service provider in fact benefits third parties, regardless of its reason for providing its services.” Morningside Grp. Ltd. v. Morningside Cap. Grp., LLC, 182 F.3d 133, 138 (2d Cir. 1999) (quotations omitted). To establish actual use, “[t]he extent or duration of use is of no particular significance other than to the extent that it demonstrates [an] intention to adopt.” Drexel Enters., Inc. v. Richardson, 312 F.2d 525, 527 (10th Cir. 1962). Even “a single use in trade may sustain trademarks rights if followed by continuous commercial utilization.” Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265 (5th Cir. 1975). The use must be part of a bona fide transaction, and not, for example, use indicating “the mere intent to reserve a mark for later use.” Allard Enters., 146 F.3d at 359 (emphasis added).
Although “a website that bears a trademark may constitute a bona fide use in commerce,” the website must “identify [the] goods or services [the owner] could have provided through or in connection with the website.” Specht v. Google Inc., 747 F.3d 929, 934 (7th Cir. 2014); see also Schreiber v. Dunabin, 938 F. Supp. 2d 587, 598 (E.D. Va. 2013) (noting that merely “operating a website available on the Internet is not equivalent to use in United States commerce”). “The important question is not how readily a mark will be noticed but whether, when noticed, it will be understood as identifying and indicating the origin of the services.” TMEP § 1301.02 (8th ed. Oct. 2018).
ii. Analogous use
In contrast to actual use, which is use of the mark in a genuine transaction involving the provision of goods or services, analogous use is use in commerce that is non-transactional. It typically consists of “promotional efforts” for the goods or services at issue, FN Herstal SA v. Clyde Armory Inc., 838 F.3d 1071, 1081 (11th Cir. 2016), such as “advertising brochures, catalogs, newspaper ads, and articles in newspapers and trade publications,” T.A.B. Sys. v. Pactrel Teletrac, 77 F.3d 1372, 1375 (Fed. Cir. 1996). No genuine transaction is required to acquire a protectable interest in the mark.
Although actual use need not have a “substantial impact on the purchasing public,” analogous use must be “of such a nature and extent as to create public identification of the target term with the [user’s] product or service.” See T.A.B. Sys., 77 F.3d at 1375-76. “[A]nalogous use must be use that is open and notorious,” that is, “of such a nature and extent that the mark has become popularized in the public mind so that the relevant segment of the public identifies the marked goods with the mark’s adopter.” Am. Express v. Goetz, 515 F.3d 156, 161-62 (2d Cir. 2008) (quotations omitted).
Mr. Underwood argues that before BofA’s October 2016 priority date, he established protectable interests through both actual use and analogous use of the E.R.I.C.A. mark and the my24erica.com mark. On the E.R.I.C.A. mark, we find the district court (1) addressed actual use but did so under an incorrect legal standard, and (2) correctly found there was insufficient analogous use of the E.R.I.C.A. mark. On the my24erica.com mark, we find it was not actually or analogously used as a service mark.
a. E.R.I.C.A. mark
i. Actual use
Mr. Underwood argues he can show actual use of the E.R.I.C.A. mark because, “by March 2015, [he] was using the E.R.I.C.A. . . . mark[] on his My24erica.com website . . . to provide actual search-engine and personal-assistant services to the public.” Aplt. Br. at 31; see id. at 5 (“The record demonstrates that Mr. Underwood used the E.R.I.C.A. mark in conjunction with actual services provided to the general public no later than March 2015 . . . .”). The district court passed upon this issue but applied the wrong legal standard. We therefore vacate the summary judgment in favor of BofA on Mr. Underwood’s infringement claims concerning the E.R.I.C.A. mark and remand for the district court to apply the correct actual use standard.
1) District court passed on actual use
BofA asserts that Mr. Underwood failed to present an actual use argument to the district court. See Aplee. Br. at 15. Even so, we may consider actual use on appeal if the “district court explicitly consider[ed] and resolve[d] [the] issue of law on the merits.”
A district court “passes upon an issue when it applies the relevant law to the relevant facts.” Tesone, 942 F.3d at 992 (quotations omitted). The district court’s order addressed actual use by considering and rejecting it as a basis for Mr. Underwood’s protectable interest in the E.R.I.C.A. mark.13 Because the district court “recognized that the [actual use] theory [Mr. Underwood] presents on appeal was at play in the litigation and rejected it,” the issue is properly before us. See Mid Atl. Cap. Corp. v. Bien, 956 F.3d 1182, 1195 n.6 (10th Cir. 2020).
The district court identified two ways to meet the Lanham Act’s protectable interest requirement: (1) when “actual sales have occurred,” or (2) through “analogous use.” App., Vol. 6 at 1450. In its explanation of the background legal principles, the court’s discussion of analogous use dwarfed its brief mention of “actual sales.” And if the court had not discussed actual sales further, we might conclude it had not passed upon the issue of actual use.
The district court’s actual use analysis applied what it believed to be “relevant law to the relevant facts.” Tesone, 942 F.3d at 992 (quotations omitted). The court identified as “relevant law” that actual use sufficient to establish a protectable interest arises when
Although the district court’s analysis of actual use lacked case citations, the court “resolve[d] an issue of law on the merits.” See United States v. Hernandez-Rodriguez, 352 F.3d 1325, 1328 (10th Cir. 2003).16 The court’s reasoning, though brief,
2) Legal error and remand
The district court applied the wrong legal standard to the issue of actual use of the E.R.I.C.A. mark. We therefore remand for the court to apply the correct standard.
“When the court of appeals notices a legal error, it is not ordinarily entitled to weigh the facts itself and reach a new conclusion; instead, it must remand to the district court for it to make a new determination under the correct law.” United States v. Hasan, 609 F.3d 1121, 1129 (10th Cir. 2010). When the district court has taken “an erroneous view of the law, a remand is the proper course unless the record permits only one resolution of the factual issue.” Pullman-Standard v. Swint, 456 U.S. 273, 292 (1982).
Here, the district court committed two legal errors. First, it assumed that customers must have “purchased” the services offered or that Mr. Underwood must have generated revenue to qualify as actual use. App., Vol. 6 at 1450-51. But a service mark is used when “the service provider in fact benefits third parties, regardless of its reason for providing its services.” Morningside Grp., 182 F.3d at 138. Second, the court erred by limiting the services at issue to those listed in the Georgia registration. It should have considered the search engine and personal assistant services that Mr. Underwood claims my24erica.com offered and that form the basis of Mr. Underwood’s Section 43(a) claim.
Under the correct view of the law, to establish a protectable interest in the E.R.I.C.A. mark based on actual use, Mr. Underwood must establish (1) my24erica.com—the only place where Mr. Underwood claims services were offered in connection with the mark—was publicly accessible before BofA’s priority date of October 2016; (2) search engine and personal assistant services on my24erica.com were “rendered to others” before October 2016, Morningside Grp., 182 F.3d at 138 (quotations omitted); and (3) as it appeared on the my24erica.com website display, the E.R.I.C.A. mark “clearly identif[ied] and distinguish[ed]” the services offered “on the website,” 2 McCarthy § 16:32.70.
We decline to address these factual issues under the correct actual use legal standard in the first instance. Instead, we remand “out of an abundance of caution and in the interest of justice, because we have difficulty concluding that the record leads ineluctably to only one result” on the issue of actual use. See In re Woods, 743 F.3d 689, 707 (10th Cir. 2014).17
ii. Analogous use
Our remand is limited to the actual use issue because the district court did not err in concluding that Mr. Underwood could not show analogous use of the E.R.I.C.A. mark.
For a finding of analogous use of the E.R.I.C.A. mark before October 2016, Mr. Underwood relies on evidence of (1) use at business meetings, (2) distribution of around 1,500 business cards to undisclosed people, (3) distribution of around 200 promotional DVDs to undisclosed people, and (4) use at a meeting with AT&T in preparation for the failed joint venture. He also cites the my24erica.com website itself and the 772 Facebook likes purportedly associated with the my24erica.com website. No reasonable jury could find analogous use from this evidence.
First, there is no evidence that any of the promotional activities in the years 2009 to 2012—the use of the mark in a PowerPoint presentation at business meetings, on business cards, on promotional DVDs, and with AT&T—were known outside of a small handful of industry actors. Such behind-the-scenes activities are insufficient to show that the mark was “popularized in the public mind.” See See Goetz, 515 F.3d at 162 (quotations omitted) (using a slogan “only in communications with a few commercial actors within the credit card industry” was insufficient to demonstrate an association in the public mind). When “the use of . . . marks in the provision of services [i]s limited to a handful of presentations [and] seminars,” that is the “sort of minimal activity [that] is insufficient to satisfy the ‘use’ element of the test.” Int’l Healthcare Exch. v. Glob. Healthcare Exch., LLC, 470 F. Supp. 2d 365, 371 (S.D.N.Y. 2007). Based on the lack of evidence that members of the general public received the business cards or the DVDs, these
Second, the evidence concerning my24erica.com itself—the fact of its existence and the Facebook likes—is insufficient to demonstrate widespread association in the public mind between the Plaintiffs’ search engine services and the E.R.I.C.A. mark. Even assuming that the 772 likes on the My24HourNews.Com Facebook page as of October 2018 indicate that 772 people visited my24erica.com at some point and used its services, that evidence would not create a fact question about analogous use.
Mr. Underwood needed to establish protectability as of October 2016. But the record does not show how many people visited my24erica.com before October 2016. Even if we credited all 772 likes to the period before October 2016, the website usage is insufficient to show that a significant segment of the public associated the E.R.I.C.A. mark with the search engine services. In T.A.B. Systems, the Federal Circuit found that “purchaser perception must involve more than an insubstantial number of potential customers. For example, if the potential market for a given service were 10,000 persons, then advertising shown to have reached only 20 to 30 people as a matter of law could not suffice.” T.A.B. Sys., 77 F.3d at 1377.
T.A.B. Systems shows the weakness of Mr. Underwood’s analogous use argument because there is a wide gap between the “potential market” for his internet services and the actual number of users. Though he claims to have offered services globally over the internet, Mr. Underwood can point to evidence of no more than 772 users total before October 2016. See Westrex Corp. v. New Sensor Corp., Opp. Nos. 91168152 & 91170940, 2007 WL 1676790, at *5 (T.T.A.B. 2007) (finding no analogous use when despite efforts to publicize the business, there was little, if any, response). The low number of users relative to the “potential market” demonstrates that no more than “an insubstantial number of potential customers” were aware of my24erica.com, let alone that they were aware of the services offered on the website and associated the E.R.I.C.A. mark with those services.
Thus, Mr. Underwood’s analogous use theory lacks merit.
b. my24erica.com mark
Mr. Underwood has failed to establish a protectable interest in the my24erica.com mark.18 To qualify as a service mark that has been used in commerce, whether under an actual or analogous use theory, the mark must “identify and distinguish the services of one person . . . from the services of others.”
In certain situations, a domain name may be protectable under the Lanham Act. See U.S. Pat. & Trademark Off. v. Booking.com B. V., 140 S. Ct. 2298, 2308 (2020). But
The baseline association the public has with a domain name is to use it to “identif[y] an address on the Internet,” Booking.com, 140 S. Ct. at 2303 n.1, “an identifier somewhat analogous to a telephone number,” Brookfield Comm’cns, 174 F.3d at 1044; 1 McCarthy § 7:17.50 (“Like a street address or telephone number, every domain name serves the purely technological function of locating a web site in cyberspace.”). It is thus normally difficult for a plaintiff to show that, beyond serving this logistical location-identifying function, the domain name is also “used to identify and to distinguish goods or services.” See Brookfield Comm’cns, 174 F.3d at 1051.
Mr. Underwood cannot show that my24erica.com is one of the “small percentage” of domain names that qualify as service marks. There is no evidence Mr. Underwood deployed the designation my24erica.com for anything more than “as an address by means of which one may reach [his] Internet website.” In re Vicki Roberts, Serial No. 76649075, 2008 WL 1944634, at *4 (T.T.A.B. 2008). For example, there is no evidence
The my24erica.com mark is thus not entitled to protection.
III. CONCLUSION
On BofA’s cancellation counterclaim, we affirm summary judgment against Mr. Underwood. On Mr. Underwood’s infringement claims, (1) we vacate summary judgment for BofA on the E.R.I.C.A. mark and remand for the district court to apply the correct actual use standard, and (2) we affirm summary judgment for BofA on the my24erica.com mark. Proceedings on remand shall be consistent with this opinion.