Erik M. Underwood v. Bank of America Corporation

CourtDistrict Court, S.D. New York
DecidedJanuary 12, 2026
Docket1:25-cv-05007
StatusUnknown

This text of Erik M. Underwood v. Bank of America Corporation (Erik M. Underwood v. Bank of America Corporation) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Erik M. Underwood v. Bank of America Corporation, (S.D.N.Y. 2026).

Opinion

DOCUMENT □ UNITED STATES DISTRICT COURT ELECTRONICALLY FILED □ SOUTHERN DISTRICT OF NEW YORK DOC #:. : □□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□ XK DATE FILED: __ 1/12/2026 - ERIK M. UNDERWOOD, Plaintiff, 25-CV-5007 (JPC)(SN) -against- REPORT AND RECOMMENDATION BANK OF AMERICA CORPORATION, Defendant. □□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□ SARAH NETBURN, United States Magistrate Judge. TO THE HONORABLE JOHN P. CRONAN: For more than seven years and in multiple forums, Plaintiff Erik Underwood has been seeking to protect his alleged rights in a Georgia state trademark registration for the mark E.R.I.C.A. Among other actions, he sued Bank of America in the U.S. District Court for the District of Colorado, alleging trademark infringement and false designation of origin under the Lanham Act, common law trademark claims, and unfair competition under Colorado and Georgia law. Plaintiff lost those claims, despite exercising all appellate relief. This action revives many of those claims, by relitigating the precise claims, recasting them in different dress, or presenting them under different legal theories. Accordingly, Bank of America moves to dismiss the complaint for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6). Separately, Plaintiff moves for a preliminary injunction seeking a $100 billion constructive trust “to protect public investors from ongoing concealment and fraud” and to prohibit Bank of America from further commercial use of the E.R.I.C.A. mark. Compl., J 10(j), 16. I recommend GRANTING Bank of America’s motion to dismiss and DENYING Plaintiff's motion for a preliminary injunction as moot.

BACKGROUND I. Factual Background The following facts are drawn from Plaintiff’s complaint. See Compl., ECF No. 1. In 2009, Plaintiff developed an AI-based assistant called E.R.I.C.A. as part of his digital media platform My24HourNews.com. Compl., ¶17. E.R.I.C.A. was designed to provide personalized

search capabilities, concierge services, and chatbot functionality. Id. In 2010, Plaintiff registered the E.R.I.C.A. trademark in Georgia and then licensed the E.R.I.C.A. mark to My24HourNews.com. Id., ¶ 18. Two years later, he launched a dedicated website, My24Erica.com, to host the E.R.I.C.A. search assistant services and secured a joint venture with AT&T to develop and scale the E.R.I.C.A. technology. Compl., ¶¶ 19-20. In 2013, Plaintiff began discussions with Bank of America in which he disclosed certain features of E.R.I.C.A. Id., ¶ 3.1 By 2015, Plaintiff expanded E.R.I.C.A.’s capabilities to enable e- commerce transactions. Id., ¶ 4. In 2016, Plaintiff met again with senior employees of Bank of America to explore potential partnership opportunities and again disclosed certain features and

aspects of E.R.I.C.A. Id., ¶ 5. Shortly thereafter, Bank of America began pursuing a federal trademark registration for the E.R.I.C.A. mark in connection with its mobile banking technology. Id., ¶ 6. As part of its trademark application process, Bank of America reviewed existing uses of the E.R.I.C.A. mark, including Plaintiff’s Georgia registration. Id., ¶ 7. In November 2016, Bank of America began promoting a new AI virtual assistant branded E.R.I.C.A. for integration into its mobile platform. Id., ¶ 9. Aware of Plaintiff’s prior registration, the Bank internally tested alternative names—including “Addy,” “Kira,” and “Bank of America Assist” before ultimately

1 Starting on page 15 of the Complaint, after paragraph 20, the paragraphs start over at number 1 and then continue through paragraphs 154. Citations are to the paragraphs as enumerated by Plaintiff. launching E.R.I.C.A. in 2018, calling it a “transformative digital financial assistant.” Compl., ¶¶ 9-10. Plaintiff alleges that, given Bank of America’s market power, he could not effectively market his own E.R.I.C.A. software. He objected to the Bank’s use of the E.R.I.C.A. name, and Bank of America invited him to New York to discuss a potential resolution. Id., ¶¶ 13-14. At the same time, however, Bank of America finalized its trademark application with the USPTO and

registered it in July 2018. Id., ¶ 15. Bank of America’s trademark counsel submitted sworn declarations asserting that Bank of America was the rightful owner and first user of the mark. Id. Plaintiff later contacted GoDaddy.com seeking a declaration confirming his prior use of the website My24Erica.com. Id., ¶ 21. GoDaddy declined, citing company policy to not participate in legal declarations or get involved in lawsuits. However, in March 2019, an attorney from Debevoise & Plimpton contacted GoDaddy regarding Plaintiff’s account and was connected with employee Keena Willis. Id., ¶ 22. Willis then signed a declaration prepared by Debevoise & Plimpton stating that Plaintiff’s website was not hosted on GoDaddy in 2015 or 2016 and was first activated in June 2018. Id., ¶ 28.

II. Prior Proceedings Plaintiff outlines much of his efforts to protect his alleged trademark rights in his complaint, while Bank of America raises some prior proceedings as part of its claim that Plaintiff’s trademark claim is “exceptional,” such that attorney’s fees are warranted. The Court describes them briefly here for context. In August 2018, Plaintiff petitioned the USPTO’s Trademark Trial and Appeal Board (TTAB) to cancel Bank of America’s registration of the E.R.I.C.A. mark. The TTAB suspended those proceedings once Plaintiff filed his Georgia State court action in 2024. In September 2018, Plaintiff filed suit in the United States District Court for the District of Colorado asserting claims for trademark infringement, false designation of origin, and unfair competition under the Lanham Act and related state-law claims. See Underwood v. Bank of America Corp. (“Underwood I” or the “Colorado Action”), No. 18-cv-2329 (RM)(MEH) (D. Colo. Sept. 11, 2018), ECF No. 1 (“Colo. Compl.”). The Colorado district court granted Bank of

America’s motion for partial summary judgment on its counterclaim and ordered cancellation of Plaintiff’s Georgia registration. See Underwood I, 2019 WL 8375952 (D. Colo. Aug. 16, 2019). The district court held that the Georgia registration was improperly issued because Plaintiff had not used the mark in commerce in Georgia when he first filed his trademark application. Id. at *4. Later, the Colorado district court granted Bank of America’s motion for summary judgment on the remaining claims, holding that Plaintiff lacked any legally protectable trademark rights. See Underwood I, 2020 WL 616358, at *2-3 (D. Colo. Feb. 10, 2020). The Court found insufficient analogous use of the E.R.I.C.A. mark and rejected Plaintiff’s assertion of rights based on the domain name of My24Erica.com. Id. Plaintiff appealed both grants of summary

judgment, and the Court of Appeals for the Tenth Circuit affirmed the district court’s holding but remanded for the limited purpose of determining whether Plaintiff had established protectable rights in the E.R.I.C.A. mark through the actual use in commerce. Underwood v. Bank of America Corp., 996 F.3d 1038, 1051, 1057-58 (10th Cir. 2021). On remand, the Colorado district court granted summary judgment for Bank of America, finding no protectable rights, and the Court of Appeals affirmed. Underwood I, 2022 WL 3212929, at *2-3, aff’d, No. 22-1402, 2024 WL 1670592 (10th Cir. Apr. 18, 2024), pet. for rehearing and rehearing en banc denied (10th Cir. May 28, 2024), pet. for cert. denied, 145 S. Ct. 439 (2024). In addition, Plaintiff has pursued actions concerning the E.R.I.C.A. mark in several other forums, including: (1) Underwood v. Godaddy.Com LLC and Bank of America Corp., et al., No. CV2022-014389 (Maricopa Super. Ct.), which was dismissed with prejudice in 2023; (2) Underwood v. State of Georgia, No.

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Erik M. Underwood v. Bank of America Corporation, Counsel Stack Legal Research, https://law.counselstack.com/opinion/erik-m-underwood-v-bank-of-america-corporation-nysd-2026.