A Colorado business owner is trying to shut down Bank of America’s use of the name “Erica” for its virtual assistant.
Erik Underwood, who has a business called
Underwood says he registered the service mark E.R.I.C.A. with the state of Georgia in 2010 but that his filing applies nationally. The name is an acronym that stands for “electronic repetitious informational clone application." The name also corresponds to the birth name of Underwood's twin sister, Erika.
Underwood’s E.R.I.C.A. is the search engine for My24erica.com, an entertainment news aggregation site.
Bank of America disputes the lawsuit and has filed a counterclaim. The bank says Erica is based on the last five letters of its name. The virtual assistant is a feature within its mobile banking app that answers customers' questions about their accounts.
In his lawsuit, Underwood accuses the bank of unfair competition. Bank of America’s use of the name Erica, “if allowed to continue, [is] likely to create confusion and reverse confusion. ... Because of the defendant's size and resources, consumers are likely to believe that it is Underwood and My24 that are the junior users and that it is Underwood and My24 that are unfairly competing.”
Underwood seeks to have Bank of America’s federal trademark for Erica canceled and to force the bank to stop using the name Erica. He also seeks damages; the lawsuit did not specify a dollar amount.
Bank of America declined a request for an interview. It said in a written statement: "The claims are without merit. Bank of America publicly filed for the trademark more than two years ago and owns the trademark registration for ERICA, our virtual financial assistant. Erica currently has more than 4 million customers. Users have doubled nearly every month since its full launch in June, and there has been no confusion whatsoever with the plaintiff or his website.”
The bank also hired a research firm to survey 650 consumers to determine whether consumers might think that Bank of America is the source of, or is affiliated with, My24erica.com and, if so, whether this is due to BofA's use of the “Erica” name for its virtual assistant. None of the respondents said they would confuse the two, according to a court filing by the bank.
Though the two Erica services do not look alike today, Underwood said his business plans include financial news, real-time stock trading and other features in My24’s Erica that are similar to the bank’s Erica.
“We both have personal assistants, we both have search engine functions, their Erica does similar things that our Erica does,” Underwood said in an interview. “Just because I don’t provide banking services doesn’t mean there isn’t confusion.”
Underwood said a Bank of America customer he spoke with assumed he had done a deal with BofA to use the name.
“Because they have millions of customers, everyone thinks Erica belongs to Bank of America instead of me,” Underwood said. “They damaged me because the rollout we have planned in the second generation of Erica will be greatly diminished; people will think I’m infringing on Bank of America’s trademark when it’s the other way around.”
Underwood said he offered a licensing deal to Bank of America, the terms of which he would not share. Bank of America rejected it, he said.
“Bank of America clearly does not respect intellectual property,” Underwood said. “They think because they have trillions of dollars of assets they can bulldoze my IP rights and trademark rights. I just want to protect my intellectual property and stop Bank of America from using a trademark that doesn’t belong to them — it belongs to me.”
In the counterclaim filed Oct. 9, Bank of America said Underwood is using the courts to try to extort the bank. The bank claims Underwood’s Georgia patent registration was fraudulently obtained because his application stated he was using the E.R.I.C.A. mark and logo in 2010, whereas, according to the bank, the technology had not yet been developed.
The bank also said he has “engaged in a campaign of harassment and misrepresentation in an effort to force Bank of America to pay him tribute for the right to use the Erica name.” The counterclaim notes that the bank has spent $60 million on the development of, and infrastructure for, Erica.
Bank of America also said that though Underwood claims he has used the Erica mark on My24erica.com since 2015, "a forensic investigation proves that there was no content on this website prior to July 2, 2018, which is after the date that Mr. Underwood threatened Bank of America with legal action."
The bank said that when a trademark attorney conducted a trademark search for the name Erica, he came across Underwood's Georgia registration among 200-plus legal claims on the name Erica. But according to the bank, the attorney looked into it and concluded that the mark was not in use because he could not find any sign of it being used, and because Underwood had not filed a national patent for the name and had moved to Colorado.
The attorney also concluded that there would be no confusion between the bank's Erica and Underwood's E.R.I.C.A. because "the marks differed significantly in form, appearance and impression; the services identified in Mr. Underwood's registration were starkly different from Bank of America's planned use; and Bank of America intended to use Erica as a sub-brand that would be available on the Bank of America app and available only to Bank of America customers," according to the counterclaim.
The bank seeks to cancel Underwood's Georgia service mark.
New York attorney Sam Israel, who is not involved in the matter, said Underwood could have a case if My24erica.com had plans to offer a service similar to Bank of America’s.
“The problem is that in general, the mark itself is not a strong mark,” Israel said. “People’s names are not strong marks. So what they would really have to show in this situation is that there is a lot of goodwill already attached to the mark. Overall it doesn’t seem like the most promising suit.”
