A Colorado businessman seeking to stop Bank of America from using the name “Erica” for its virtual assistant has suffered a big setback: A federal judge has denied his request for a preliminary injunction that would have forced the bank to drop the name even before a final decision in the case was made.
“It’s silly for them to pursue it at this point," said New York intellectual property attorney Sam Israel, who is not involved in the case. "Under the best of circumstances, if you seek a preliminary injunction and you don’t get it, your case is cursed. The judge’s comments and the nature of the case in general makes it highly unlikely they’re going to get anywhere with those claims.”
The plaintiff, Erik Underwood, is the founder and president of a media technology company called My24HourNews.com. In 2006, he developed an idea to for a news app and for E.R.I.C.A. (Electronic Repetitious Informational Clone Application), a “fully interactive” virtual news anchor who would “give customizable, regional news.” In his business plan for My24HourNews.com, he said that E.R.I.C.A. “will talk, speak, and have a personality; and the user can customize the news that she reports.” E.R.I.C.A. is also described as “fully interactive,” “a type of artificial intelligence,” and “ultimately a soul without a body.” Underwood filed a trademark registration application for E.R.I.C.A. in Georgia in October 2010.
Bank of America began developing its Erica virtual financial assistant in 2016 and announced the name and idea in October of that year. The bank said it saw Underwood’s Georgia registration in a trademark search but concluded that it was invalid because it could not find the trademark in use and also saw that Underwood had moved from Georgia to Colorado. Bank of America registered the ERICA mark with the U.S. Patent Office in July 2018.
Underwood said the bank violated his trademark and that its use of the name Erica harms his company, as users would assume his service is affiliated with Bank of America.
In his Dec. 19 order rejecting the injunction request, U.S. District Judge Philip Brimmer in Colorado made several critiques of Underwood's case. The Charlotte Business Journal
Brimmer noted that My24Erica.com is currently a searchable movie database, and that all of its content is licensed from CodeCanyon. “Plaintiffs did not establish how many users the site has or how much web traffic the site receives,” Brimmer wrote. “Further, plaintiffs did not establish that My24Erica.com generates revenue.”
The judge also pointed out that the expert witnesses Underwood brought to the hearing were actually family members. “The Court assigns these declarations little weight,” Brimmer wrote.
Underwood said he remains optimistic that he will prevail.
“The judge did not rule on the merits of the case,” he said in an email Monday. “I feel very confident presenting a compelling case in front of a jury. This is a David-versus-Goliath situation. The facts are on our side, and in the end, I’m sure a jury will see it our way.”
The bank said its defense is strong.
“Bank of America publicly filed its trademark application more than two years ago and owns a trademark registration for Erica, our virtual financial assistant,” spokesman Chris Feeney said. “Erica currently has more than 4 million users since its full launch in June. As the court concurred after hearing the witnesses, plaintiffs' request for a preliminary injunction was without merit. After discovery, we fully expect to prove that plaintiffs lack any trademark rights that predate Bank of America’s trademark rights, and that our Erica virtual financial assistant does not cause any confusion with plaintiffs’ movie-related website.”
The judge’s determination in this preliminary hearing is not binding, but Underwood is almost sure to lose, Israel said.
The judge noted stark differences between Underwood’s site and the bank’s virtual assistant, which means it will be hard for Underwood’s attorneys to make a case that he has been harmed by the bank’s use of the name or that consumers will be confused, Israel explained. If the same product name is used, for instance, on hamburgers and on swimwear, there is no risk of anyone being misled. But if the same name is used for hamburgers and frankfurters, there could be confusion.
“The effort was made by plaintiff to try to make the distance between the products and services to be as a narrow as possible,” Israel said. “The judge sees through that and says the two are different. He just didn’t think it’s a real claim.”
The discovery process could continue until the end of June.
