Underwood et al v. Bank of America Corporation

Filing 174

ORDER. This service mark infringement lawsuit is before the Court on remand from the United States Court of Appeals for the Tenth Circuit. The sole issue now is whether 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. The Court is not convinced there is evidence raising a genuine issue of material fact as to any of the three issues stated herein. However, the Court will provide an opportunity for supplemental briefing before ruling further. Accordingly, the parties may file for the Court's consideration supplemental briefs based on the Tenth Circuit's opinion on or before June 10, 2022. By Judge Raymond P. Moore on 5/10/2022. (trvo, )

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.
______________________________________________________________________________
ORDER
______________________________________________________________________________
This service mark infringement lawsuit 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’ claims premised on their E.R.I.C.A. service mark but otherwise affirmed summary
judgment for Defendant. The sole issue now is whether 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. The Tenth
Circuit has framed the three relevant factual issues as follows:
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
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).
Having reviewed and reconsidered the record in light of this standard, the Court is not
convinced there is evidence raising a genuine issue of material fact as to any of these three
issues. However, the Court will provide an opportunity for supplemental briefing before ruling
further.
Accordingly, the parties may file for the Court’s consideration supplemental briefs based
on the Tenth Circuit’s opinion on or before June 10, 2022.
DATED this 10th day of May, 2022.
BY THE COURT:

____________________________________
RAYMOND P. MOORE
United States District Judge

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