The U.S. Supreme Court on Monday declined to review a Tenth Circuit decision that ruled in favor of Bank of America (BofA), finding that its virtual assistant "Erica" did not infringe on the trademark of an existing website with a similar name. This decision leaves in place the Tenth Circuit's ruling, which concluded that BofA’s Erica did not violate any established trademark rights of Erik Underwood’s “E.R.I.C.A.” website.

Background of the Trademark Dispute

The case originated when Erik Underwood, creator of the website www.my24erica.com, sued Bank of America after it launched its virtual assistant "Erica" in 2018. Underwood’s website allowed users to search for movies and actors and was registered as “E.R.I.C.A.” in Georgia in 2010. He claimed that Bank of America’s use of “Erica” for its virtual financial assistant infringed on his trademark.

Underwood argued that he had established rights in the "E.R.I.C.A." mark through his website, describing it as a virtual assistant, with source code and metadata designed to reflect this on search engines. However, the Tenth Circuit upheld a Colorado federal court’s summary judgment for BofA, ruling that Underwood’s use of “E.R.I.C.A.” did not amount to commercial use of the trademark, as required to establish protectable rights.

Tenth Circuit Findings and Supreme Court Petition

The Tenth Circuit’s April decision pointed out that descriptions of Underwood’s “E.R.I.C.A.” website merely referenced the concept of an AI-driven assistant and noted that it was “still under development.” The appellate court found that these descriptions did not amount to actual use of the trademark in commerce, as they didn’t indicate the source of a functioning personal assistant or search engine service. Consequently, the court ruled Underwood had not demonstrated a valid, protectable interest in the trademark.

In his Supreme Court petition, Underwood argued that the Tenth Circuit improperly assessed the evidence by examining statements on his website in isolation rather than considering the website as a whole, as a consumer would. He further asserted that the court ignored search engine metadata that presented his site as a virtual assistant service.

The Supreme Court’s refusal to hear the case effectively upholds the Tenth Circuit’s ruling, leaving Underwood without recourse for his trademark claim against Bank of America’s Erica assistant.

Responses from Counsel and Bank of America

Aaron Bradford, Underwood’s attorney from Sheridan Ross PC, expressed disappointment at the Supreme Court’s decision, saying the case provided a valuable opportunity to address evolving trademark issues in the digital age. Bank of America, which did not respond to Underwood’s petition, declined to comment on the outcome.

Underwood was represented by Aaron Bradford and Brian Boerman of Sheridan Ross PC, while Bank of America was represented in the Tenth Circuit by David H. Bernstein and Jared I. Kagan of Debevoise & Plimpton LLP.

This case underscores the complexities of trademark protection in digital and AI contexts, as the courts require clear, established commercial use for trademark claims to proceed.