Can you trademark a virtual assistant? UNDERWOOD v. BANK OF AMERICA

Can you trademark a virtual assistant? UNDERWOOD v. BANK OF AMERICA

A trademark is a word phrase or symbol that signals to consumers the identity of a producer of a product or service.  Trademark law in the United States is a combination of common law rights, state statutes and federal statutes.  Merely using a trademark in commerce grants the first user of a trademark common law rights to a trademark.  Many trademark users choose the register their trademark to enhance the rights associated with their trademark but registration is not necessary to begin using a trademark in commerce.  In the United States many states have methods to register a trademark with the state, but most trademark owners forgo state registration.  Instead trademark owners register their trademark with the United States Patent and Trademark Office which grants federal registration of the trademark.

The complicated patch work of laws related to trademarks as well as the laws related to other types of intellectual property frequently leads to confusion.  Copyright and patent law grant exclusive rights, while trademark law does not.

Trademark infringement is the unauthorized use of a trademark or service mark on competing or related goods and services. The success of a trademark infringement lawsuit depends on whether the defendant’s use of a trademark causes a likelihood of confusion in the average consumer.  This means that two parties could be using identical trademarks without infringing on each other’s rights if consumers are not confused about who produced which product.

A case which illustrates the confusion around the rights granted by trademark law is UNDERWOOD v. BANK OF AMERICA CORP 1:18-cv-02329 (D. Colo. 2018).  The defendant in this case is Bank of America, a major financial institution in the United States.  Bank of America recently started advertising a voice controlled virtual assistant that allows customers to perform simple banking tasks over the phone.  This service is marketed as Erica.  The defendant successfully registered Erica as a trademark with the United States Patent and Trademark Office in July 2018.

The plaintiff in this case is Erik Underwood.  The plaintiff came up with several business plans for websites have a virtual assistant called E.R.I.C.A.  The virtual assistant presents users with relevant local news stories or information about movies depending on which website a user visits.  The plaintiff has registered E.R.I.C.A. as a trademark in the state of Georgia in October 2010.  When the plaintiff learned about the defendant’s Erica product he sent a cease and desist letter to the defendant, attempted to file a federal trademark registration for Erica and commenced a trademark infringement lawsuit.

The initial complaint requested a preliminary injunction barring the defendant from using Erica.  A preliminary injunctions is not a final decision but a court’s ruling on a preliminary injunction frequently indicates the strength of a plaintiff’s claim.  The district court denied the plaintiff’s request for a preliminary injunction because the plaintiff failed to introduce any evidence of irreparable harm.  The court noted that  plaintiffs did not establish that denial of a preliminary injunction would diminish plaintiffs’ competitive position in the marketplace because there is no evidence establishing what position they have in the marketplace.

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