Underwood et al v. Bank of America Corporation

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Raymond P. Moore
Civil Action No. 18-cv-02329-RM-MEH
ERIK M. UNDERWOOD, a Colorado citizen, and,
MY24HOURNEWS.COM, INC., a Colorado corporation,
Plaintiffs,
v.
BANK OF AMERICA CORPORATION, a Delaware corporation,
Defendant.
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ORDER
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This service mark infringement case is before the Court on remand from the United
States Court of Appeals for the Tenth Circuit. See Underwood v. Bank of Am. Corp., 996 F.3d
1038 (10th Cir. 2021). The Tenth Circuit vacated summary judgment in Defendant’s favor on
Plaintiffs’ infringement claims premised on their prior actual use of their purported E.R.I.C.A.
service mark but otherwise affirmed summary judgment for Defendant. The Court now
considers whether there is evidence Plaintiffs had a protectable interest in the E.R.I.C.A. mark
through actual use before October 2016, focusing on the three relevant factual issues identified
by the Tenth Circuit:
Under the correct view of the law, to establish a protectable interest in the
E.R.I.C.A. 	mark 	based 	on 	actual 	use, 	[Plaintiffs] 	must 	establish
(1) my24erica.com—the only place where Mr. Underwood claims services were
offered in connection with the mark—was publicly accessible before [Defendant’s]
priority date of October 2016; (2) search engine and personal assistant services on
my24erica.com were rendered to others before October 2016; and (3) as it appeared
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on the my24erica.com website display, the E.R.I.C.A. mark clearly identified and
distinguished the services offered on the website.
Id. at 1057 (citations, quotation marks, and brackets omitted).
I. 	LEGAL STANDARD
Summary judgment is appropriate only if there is no genuine dispute of material fact and
the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a); Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 250 (1986); Stone v. Autoliv ASP, Inc., 210 F.3d 1132, 1136
(10th Cir. 2000); Gutteridge v. Oklahoma, 878 F.3d 1233, 1238 (10th Cir. 2018). Applying this
standard requires viewing the facts in the light most favorable to the nonmoving party and
resolving all factual disputes and reasonable inferences in his favor. Cillo v. City of Greenwood
Vill., 739 F.3d 451, 461 (10th Cir. 2013). However, “if the nonmovant bears the burden of
persuasion on a claim at trial, summary judgment may be warranted if the movant points out a
lack of evidence to support an essential element of that claim and the nonmovant cannot identify
specific facts that would create a genuine issue.” Water Pik, Inc. v. Med-Sys., Inc., 726 F.3d
1136, 1143-44 (10th Cir. 2013). “The mere existence of some alleged factual dispute between
the parties will not defeat an otherwise properly supported motion for summary judgment; the
requirement is that there be no genuine issue of material fact.” Scott v. Harris, 550 U.S. 372,
380 (2007) (citation omitted). A fact is “material” if it pertains to an element of a claim or
defense; a factual dispute is “genuine” if the evidence is so contradictory that if the matter went
to trial, a reasonable jury could return a verdict for either party. Anderson, 477 U.S. at 248.
II. 	BACKGROUND
In October 2016, Defendant filed a successful application to register its ERICA mark
with the Untied States Patent and Trademark Office. Because Plaintiffs’ purported E.R.I.C.A.
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mark is unregistered, Defendant is entitled to summary judgment on claims premised on the use
of its mark and to declaratory relief on its counterclaims unless Plaintiffs have raised a genuine
issue of material fact as to their actual use of the E.R.I.C.A. mark before October 2016.1
Having considered supplemental briefing following remand (ECF Nos. 180, 181), the
Court concludes there is no evidence raising a genuine issue of material fact as to the second and
third issues identified above, and therefore Defendant is entitled to prevail on the last remaining
issue in this case.
III. 	DISCUSSION
Because the E.R.I.C.A. mark is not registered, Plaintiffs bear the burden of establishing
that it is protectable. See Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research,
527 F.3d 1045, 1050 (10th Cir. 2008); see also United Drug Co. v. Theodore Rectanus Co.,
248 U.S. 90, 97, (1918) (“[T]he right to a particular mark grows out of its use, not its mere
adoption.”). As pertinent here, a service mark is “in use in commerce . . . when it is used or
displayed in the sale or advertising of services and the services are rendered in commerce.”
15 U.S.C. § 1127. Thus, while an actual sale of the services is not required, services not solely
for the benefit of the performer must be rendered to others. See Burns v. Realnetworks, Inc.,
359 F. Supp. 2d 1187, 1192 (W.D. Okla. 2004); Morningside Grp. Ltd. v. Morningside Cap.
Grp., L.L.C., 182 F.3d 133, 138 (2d Cir. 1999). “Further, the claimant must have used the
claimed mark to identify its services.” Morningside Grp., 182 F.3d at 138.
1 Pursuant to the Tenth Circuit’s ruling, Plaintiffs may not pursue their analogous use theory for the E.R.I.C.A. mark
and have failed to establish a protectable interest—either through actual or analogous use—in their purported
my24erica.com mark.
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For present purposes, the Court assumes there is sufficient evidence in the record to
present a genuine issue as whether Plaintiffs’ website was publicly accessible before
October 2016. Lacking, however, is any evidence that search engine or personal assistant
services were rendered to anyone who accessed the website before October 2016.2 Plaintiffs
have adduced evidence merely showing that certain individuals “visited” or “interacted with” the
website before October 2016 and, vaguely, that “content was available” at the website in 2015.
(ECF No. 180 at 7.) However, they fail to cite any evidence of content suggestions,
recommendations, or search results that were provided to anyone at all, much less any evidence
that shows any such services were rendered before October 2016. As a result, Plaintiffs have
adduced no evidence that they in fact benefited third parties during the relevant timeframe.
See Morningside Grp., 182 F.3d at 138.
Also lacking is any evidence that the E.R.I.C.A. mark, as it appeared on Plaintiffs’
website before October 2016, clearly identified and distinguished any such services allegedly
being provided. For example, Plaintiffs point to no evidence that any individuals who visited its
website during that timeframe associated the mark with the website’s services. See Schreiber
v. Dunabin, 938 F. Supp. 2d 587, 598 (E.D. Va. 2013) (“[O]perating a website available on the
Internet is not equivalent to use in United States commerce.”); Spect v. Google Inc., 758 F. Supp.
2d 570, 592 (N.D. Ill. 2010) (“[M]ere advertising is not a bona fide use in commerce of a
mark.”). Accordingly, the Court finds Plaintiffs have failed to adduce evidence sufficient to
show their mark was in use in commerce before October 2016.
2 It is undisputed that Plaintiffs have provided no evidence of any customers that purchased goods or services under
the E.R.I.C.A. mark and that Plaintiffs have generated no revenue from their use of it. (ECF No. 122 at 7-8, ¶¶ 6, 7.)
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IV. 	CONCLUSION
In the absence of any evidence that Plaintiffs rendered search engine or personal assistant
services before October 2016, or that such services were clearly identified and distinguished by
their E.R.I.C.A. mark, they cannot establish a protectable interest in the mark based on actual
use. Therefore, Defendant is entitled to summary judgment on Plaintiffs’ remaining
infringement claims and on its counterclaims for declaratory relief. The Clerk is directed to
ENTER JUDGMENT accordingly and CLOSE this case.
DATED this 9th day of August, 2022.
BY THE COURT:
____________________________________
RAYMOND P. MOORE
United States District Judge
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