Reprinted with permission from the August 2025 issue (PDF) of The Intellectual Property Strategist. © 2025 ALM Global Properties, LLC. Further duplication without permission is prohibited. All rights reserved
By Aaron Bradford and Allen Adamson (Metaforce)
Engaging logos, icons, or symbols for your company are essential, and easier to create than ever. A myriad of AI tools and freelance options empower rapid creation of stylish and cool logos in what feels like a heartbeat, and at a fraction of the price. But the days of slapping your fresh brand or a refreshed mark on a package are in the past. A recent 10th Circuit decision reminds companies and brand managers that successful branding requires intentional connections between a selected mark and the company's offering. Put differently, protectable rights are created the same way a successful brand is established — linking your Mark and your company's offering in the minds of the consumer is a must. The good news? Regardless of your company's size or marketing budget, this necessary connection can be achieved.
What happened?
In Underwood v. Bank of America Corp. (2024 U.S.P.Q.2d 727), Erik Underwood named his search engine and virtual assistant "ERICA" on the website www.my24Erica.com and claimed infringement when Bank of America adopted "ERICA" for its virtual assistant featured on its online banking services. However, Underwood's claim failed because the 10th Circuit found that his use of ERICA on the website "did not allow for a direct association between the mark and the services offered." The 10th Circuit noted that the service descriptions were obscure and did not establish a genuine connection between the search engine technology and the "ERICA" mark.
What can we learn from this outcome?
The Court's analysis underlines the importance of establishing strong connections between your brand and your company. Strong trademark rights arise not just from use but from the strength of the bonds formed between your chosen Mark and the services/products you offer. Despite Underwood's website containing references to ERICA, the Court determined these references appeared disconnected, with some suggesting ERICA was an aspirational service still in development. In contrast, others implied it referred to a person. The Court considered each reference in isolation rather than examining how they might work together to establish meaning for consumers.
Particularly noteworthy was the Court's refusal to consider how Underwood had programmed his website to display "ERICA is a search engine and personal assistant application" next to his favicon displayed in search engine results. This explicit connection intentionally created by the trademark owner was insufficient given the lack of connection between the Mark and the service once the user landed on the site. This aspect of the ruling creates significant implications for online businesses, as it suggests that the "front door" many consumers use to discover services (search engines) might not be considered when evaluating trademark use.
This case highlights several critical principles for trademark practitioners:
- Use must create a clear connection between the Mark and the service/products
Subtle or muted uses of your Mark, a style in modern branding, could undermine trademark rights. The connection between your brand and service must be deliberate and unmistakable.
FedEx's evolution offers one of the most compelling examples of how deliberate brand architecture can establish powerful connections between marks and services. While FedEx represents a large-scale example with substantial resources, these same principles apply equally to businesses of any size. When the firm I was with had the opportunity to work with the company during its transformation from Federal Express to FedEx, we faced a critical strategic question: how to maintain clear associations between the brand and its expanding portfolio of services.
The solution wasn't merely cosmetic, it was structural. FedEx developed what branding professionals call a "branded house" architecture, where the master brand (FedEx) directly connects to each service offering through a carefully designed system of color coding and descriptive naming. Look at how FedEx Express leverages the company's signature purple and orange, while FedEx Ground uses purple and green, and FedEx Freight incorporates purple and red.
What makes this approach so effective from a trademark perspective is how deliberately FedEx reinforces these connections across customer touchpoints. The FedEx wordmark complete with its hidden forward-pointing arrow between the E and X appears consistently on every truck, uniform, package, and digital interface. But the color system instantly communicates which specific service you're engaging with. The Mark is not isolated; it's systematically connected to particular service offerings.
This starkly contrasts Underwood's approach with "ERICA," where references to the Mark failed in the Court's eyes to connect the underlying service offering with the selected Mark. The Court noted how references to ERICA were inconsistent and, in some cases, suggested a service still in development rather than one actively being provided. Use of more systematic connections, as illustrated by FedEx's systematic architecture linking Mark to service, could have saved the ERICA mark in the Underwood case.
The lesson for companies is clear: establishing strong trademark rights requires more than occasional references to your Mark; it demands systematic, consistent connections between that Mark and the specific goods or services you provide.
FedEx's approach of using consistent naming conventions (FedEx + descriptive term) and distinctive color coding creates immediate recognition not just of the brand, but of the precise service being offered. Small and mid-sized companies can create similarly powerful mark service connections without massive budgets. A local bakery might use consistent color schemes across packaging, signage, and social media, always pairing their wordmark with appetizing bread imagery. A boutique consulting firm might develop a simple but consistent system of pairing its logo with specific service descriptors. The fundamental goal of creating a clear mental connection between your Mark and offering in the consumer's mind is achievable at any scale and with modest resources.
- Context matters: How your Mark appears across different touchpoints creates the overall impression that establishes trademark rights
In the past, establishing trademark connections was comparatively straightforward. We had limited touchpoints: television advertising across just three networks, print media, in-store promotions, and packaging. The challenge was execution quality, not managing the complexity of virtual and actual interactions.
Today's omnichannel landscape has exponentially multiplied these touchpoints. Brands must establish and maintain connections across social media platforms (each with distinct requirements and audiences), mobile applications, voice assistants, influencer partnerships, pop-up experiences, branded content, merchandise, and dozens more interaction points. This proliferation creates both opportunity and risk for trademark owners.
Success requires much more than consistently plastering your logo on marketing touchpoints. It requires that you comprehend your audience to ensure you are communicating your brand message clearly through each interaction. This requires a 360 degree analysis of how a marketplace of consumers will interact with your Mark. The court's analysis in Underwood confirms that they are looking for meaningful connections between marks and services across multiple touchpoints, not just superficial placement next to the service.
For trademark practitioners, this means advising clients to conduct regular touchpoint audits, ensuring each interaction reinforces the connection between Mark and the offering. The strongest protections emerge not from rigid uniformity but from strategic consistency that builds cumulative meaning across the consumer journey. Businesses with limited resources can prioritize key touchpoints where customers most frequently engage with their brand, ensuring those critical interactions clearly communicate the mark service connection.
- Digital presence requires attention: In the online environment, trademark owners must be deliberate about establishing the connection between their marks and services
The digital landscape presents unique challenges for establishing trademark connections that weren't imaginable when I worked on major brand transformations in the 1990s. Today, brands must vigilantly maintain connections across an ever-expanding digital ecosystem.
The Underwood case illustrates how easily digital presence can undermine trademark protection. While Underwood's website mentioned "ERICA" as a search engine, the Court found these references, while present and seemingly explicit, disconnected and inconsistent. This digital disconnection proved fatal to his trademark claim.
This means carefully auditing how trademarks appear across digital touchpoints for today's brands, ensuring consistent presentation in social media profiles, mobile applications, voice assistant invocations, and emerging platforms. It means considering how logos render at different sizes and on other devices. Most importantly, it means ensuring that digital experiences clearly connect the Mark with the specific services offered, not just decorating digital assets with brand elements. The beauty of digital media is that even smaller companies with modest budgets can achieve this consistency without massive investment. A well-designed website template and thoughtful social media strategy can establish the same clear connections that traditionally required expensive media campaigns.
The Court's finding in Underwood that search engine metadata didn't constitute sufficient use is particularly telling for digital brands. Many marketers focus extensively on search optimization while neglecting to create clear associations between their marks and services once users arrive at their digital destinations. True trademark strength requires both visibility and connection—getting found and being understood.
This is particularly relevant as consumers pivot from traditional search engines to generative AI searching that often scrubs the Brands from the query results it generates. The days of lists of favicons and hyperlinks are limited as search engines look to aggregate content from websites, agnostic to brand, and supply search engine users with useful content. This is a reality that online brands will have to grapple with when they consider how they are going to connect their Mark with their offering.
- Registration is highly recommended
The Trademark Office will assess and confirm the sufficiency of the connections between the Mark and the product/service when considering use-based applications. The Trademark Office will tell you that the connections between your Mark and your service/product require improvement and far better timing than years later, when trying to enforce your Mark against another.
Registration enables a presumption of validity that can be critical in enforcement actions. Had Underwood secured federal registration for ERICA in connection with search engine services, the outcome might have been different. Registration forces applicants to demonstrate actual use in business, creating a record of the connection between Mark and services that can later prove decisive in litigation.
Beyond providing legal advantages, the registration process serves as a helpful review of how effectively a company connects its Mark to its offerings. Trademark examiners review use examples, often requiring applicants to provide better evidence of the mark-service connection. While sometimes frustrating, this feedback helps businesses strengthen these connections before disputes arise. This process offers the same valuable benefits to startups and small businesses as to major corporations, making it an accessible way for companies of any size to strengthen their mark-service connections before potential issues arise.
The Business Value of Strong Trademark Connections
The Underwood case aligns perfectly with what we observe in successful brand strategy. Strong brands drive business results as the selected words, names, or symbols communicate the core brand promise to target consumers. They aren't just registered trademarks sitting idle—they're actively deployed across customer touchpoints, reinforcing their presence and value proposition with each interaction.
When brands establish relevant differentiation in the marketplace through consistent association with the product or service, they naturally receive the resources and attention needed to maintain their legal protection. After all, companies don't allocate significant budgets to protect brands that aren't actively driving revenue. The most valuable trademarks are those attached to brands that matter to consumers and contribute to the bottom line.
In today's competitive landscape, this principle has never been more critical. As markets and consumer attention fragment across channels, the brands that maintain strong, consistent connections between their marks and offerings will secure stronger legal protections and build more resilient businesses. Every touchpoint serves dual purposes: strengthening consumer relationships and solidifying trademark rights. Creating these powerful connections doesn't require Fortune 500 budgets. It requires clarity, consistency, and careful attention to how consumers experience your brand, qualities that are accessible to businesses of any size. Smart companies recognize that these objectives are perfectly aligned, both requiring the same disciplined approach to brand management.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
