PUBLISH
UNITED STATES COURT OF APPEALS
FOR THE TENTH CIRCUIT

________________ _________________ ERIK M. UNDERWOOD, a Colorado resident, and MY24HOURNEWS.COM, INC., a Colorado corporation, Plaintiffs - Appellants,

v. BANK OF AMERICA CORPORATION, a Delaware corporation, Defendan t - Appellee. No. 19-1349 No. 20-1087

________________ _________________ Appeal from the United States District Court For the District of Colorado (D.C. No. 1:18-CV-02329-RM-MEH)

________________ _________________ Marc A. Goldman, Massey & Gail, Wash ington, D.C., (Harol d R. Bruno III, and Nicholas F. Labor, Robinson Wa ters & O’Dorisio, P.C., Denv er, Colorado, with him on the briefs) for Plaintiffs – Appellants. David H. Bernstein, (Jeremy Feigelson, Jare d I. Kagan, and Alexandra P. Swain, with him on the brief), Debevoise & Plimpton LL P, New York, New York, for Defendant – Appellee.

________________ _________________ Before MATHESON , EBEL , and MORITZ , Circuit Judges.

________________ _________________ MATHESON , Circuit Judge.

________________ _________________ FILED United States Court of Appeals Tenth Circuit 

### April 30, 2021 Christopher M. Wolpert Clerk of Court2 Erik Underwood and My24HourNews.Com , Inc., (“Mr. Underwood” or the “Plaintiffs”), own two putative service marks: “E.R.I.C.A.” and “my24erica.com.” Mr. Underwood claims to have used these marks in his business, which o ffers internet-based search engine and personal assistant servic es. Bank of America Corporation (“BofA”) owns a registered federal trademark fo r a mobile banking application known as
“ERICA.” Mr. Underwood sued BofA fo r infringing his marks. BofA counterclaimed to cancel Mr. Underwood’s Georgia registration of his E.R.I.C.A. mark. The district court granted BofA’s motions for summary judgme nt on its cancellation counterclaim and on Mr. Underwood’s infringement claims. Exer cising jurisdiction under 28 U.S.C. § 1291, we affirm in part and v acate and remand in part.
I. BACKGROUND
A. Legal Background “The principle underlying trademark protec tion is that distinctive marks—words, names, symbols, and the like—can help dis tinguish a particular artisan’s goods from those of others.” B&B Hardware, Inc. v. Hargis Indus., Inc. , 575 U.S. 138, 142 (2015). 1 “The basic rule of trademark ownership in th e United States is prio rity of use,” which

1 The marks at issue in this case are service marks. Service marks are used to identify services, while trademarks are usedto identify goods. For the most part, “[s]ervice marks and trademarks are governed by identical standards.” See Chance v. Pac-Tel Teletrac Inc. , 242 F.3d 1151, 1156 (9th Cir. 2001 ). And “the term ‘trademark’ is generally understood to include marks used in the marketing of either goods or services.” Restatement (Third) of Unfair Compe tition § 9 cmt. f (Am. L. Inst. 1995).3 occurs through “use of a sy mbol to identify the goods or services of one seller and distinguish them from those offered by others.” 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Comp etition § 16:1 (5th ed. M ar. 2021 update) [hereinafter McCarthy]. “The foundation of current federal t rademark law is the Lanham Act.” Matal v.
Tam , 137 S. Ct. 1744, 1752 (20 17). “[T]he purpose of the La nham Act was to codify and unify the common law of unfair competition and trademark protection.” Inwood Lab’ys, Inc. v. Ives Lab’ys, Inc. , 456 U.S. 844, 861 n. 2 (1982) (White, J., concurring). “Under the Lanham Act, trademarks th at are used in commerce . . . ma y be federally registered.”
Tam , 137 S. Ct. at 1752 (quotation omitted). Section 43(a) of the La nham Act, 15 U.S.C. § 1125(a), “protects an unregistered mark.” See Centaur Commc’ns, Ltd. v. A/S/M Commc’ns, Inc. , 830 F.2d 1217, 1220 (2d Cir. 1987), overruled on other grounds by Paddington Corp. v. Attiki Imps. & Distribs., Inc. , 996 F.2d 577, 585 (2d Cir. 1993). Federally unregistered marks also “can be en forced under state common law, or if it has been registered in a State, under th at State’s registration system.” Tam , 137 S. Ct. at 1753. Federal and state trademark protecti ons generally parallel each other, and the former do not preempt the latter. See id.
B. Factual Background Initial Development of E.R.I.C.A. In 2009, Mr. Underwood developed a busin ess plan including a virtual assistant called E.R.I.C.A.—named for Mr. Underwood ’s sister and a backronym for Electronic Repetitious Informational Clone Application. Mr. Underwood envisi oned E.R.I.C.A. as4 an animated application “that you ask and you get informati on in return,” and that would “mimic[] human interaction.” App., Vol. 4 at 489. 2 Mr. Underwood explained that in 2009 E.R.I.C.A. was not “launched, but th ere was a demo associat ed with her” that appeared on his website , My24HourNews.Com. Id. at 489-90. Mr. Underwood took steps in 20 09 to attract investor interest in his business. He used a PowerPoint presentati on at business pitch meetings containing the following picture of E.R.I.C.A. to show “the concept of how E.R.I.C.A. would look” and “what she might say while interacting with the viewer as a finished end-product”:

App. (No. 19-1349), Vol. 2 at 314, 319, 321. Mr. Underwood gave a presentation at the Small Business Administration offi ce in Atlanta. Between 2009 and 2011, he distributed nearly 1,500 business cards featur ing a picture of E.R.I.C.A. Begi nning in February 2010, he distributed ro ughly 200 DVDs containi ng the E.R.I.C.A. demo.

2 Unless otherwise noted, citations are to th e Appendix and the parties’ briefs in case No. 20-1087.5 Georgia Registration In October 2010, Mr. Underw ood applied to register a s ervice mark in Georgia for “a multi national computer animated woman . . . [named] Erica.” App. (No. 19-1349), Vol. 1 at 142. On the application, Mr. Und erwood explained the serv ice associated with the mark: “E.R.I.C.A. verbally tells the news and curre nt events through cell phone and computer applications.” Id. The mark was approved fo r registration in Georgia. Proposed Joint Venture In 2012, Mr. Underwood gave a p resentation to AT&T. AT&T and My24HourNews.Com, Inc. discussed formin g a joint venture, but it never came to fruition. 3 my24erica.com In 2012, Mr. Underwood registered th e domain name my24erica.com with GoDaddy.com. 4 my24erica.com functioned “as a search engine . . . where [E.R.I.C.A.] can recall queries of movies [and] television sh ows.” App., Vol. 3 at 517. A user could enter a title into the search bar on my24erica.com, and E.R. I.C.A. could “offer her picks of her favorite kind of movies through an algo rithm code.” Id. The same picture of the

3 The failed joint venture has spawned multiple lawsuits. See My24HourNews.Com, Inc. v. AT&T Corp. , 791 F. App’x 788 (11th Cir. 2019) (unpublished); My24HourNews.Com, Inc. v. AT&T Corp. , No. 1:17-cv-06657-RA (S.D.N.Y. 2017); My24HourNews.Com, Inc. v. AT&T Corp. , No. 1:15-cv-012120-RMNYW (D. Colo. 2015). None is relevant to this appeal.

4 GoDaddy.com “is a domain na me registrar and a web hos ting provider.” It is a “company that other companies and individuals rely on to register their Internet domain names, and to host their website on [the Go Daddy] servers.” App., Vol. 2 at 301.6 computer-generated human face th at appeared on the PowerPoi nt presentation appeared in the top left corner of my24erica.com. my24erica.com also had a hyperlink to a Facebook page for My24HourNews.Com, which received 772 “likes” by September
2018. According to Mr. Underw ood, my24erica.com became publicly accessible in March 2015. See App., Vol. 5 at 1061. BofA cl aims that my24erica.com was not publicly accessible until June 2018. See Aplee. Br. at 40. In support of his assertion, Mr. U nderwood points to, among other things, declarations of individuals who claim to ha ve visited my24erica.com in the relevant time frame. The parties also introdu ced dueling expert reports. BofA submitted the report of Keena Willis, the Director of Global Subpoe na Compliance at GoDaddy.com, LLC, the hosting platform on which my24erica.com was allegedly hosted. She reviewed voluminous business records from GoDaddy.com and conc luded the “records indicate that, on or about June 27, 2018, Mr. Un derwood began hosti ng my24erica.com with GoDaddy.” App., Vol. 2 at 302. Mr. Underw ood, on the other hand, relied on the expert report of Jonathan Hochman, who investigated records a ssociated with my24erica.com and my24erica.com’s web hosting control pane l, database administration tool, and administrator portal. He concluded the website was launched on March 18, 2015. BofA’s Registered Mark In October 2016, BofA filed an “intent to use” applica tion with the United States Patent and Trademark Office (“USPTO”) for ERICA, a mark associated with “voice controlled information and person al assistant devices in the fi eld of banking and personal7 finance.” App., Vol. 1 at 36. The USPTO re gistered the mark in Ju ly 2018. The mark had a priority date based on the October 2016 filing date. See 15 U.S.C. § 1057(c).
C. Procedural Background Complaint Alleging that BofA’s markinfringed his E.R.I.C.A. and my24erica.com marks, Mr. Underwood sued Bo fA for (1) false association un der Section 43(a) of the Lanham Act, (2) common law service mark infring ement, (3) common law unfair competition, (4) violations of the Colorado Consumer Protection Act, and (5) service mark infringement under Georgia law.
Counterclaims BofA answered the complain t and brought six counterclaims: one for cancellation of the Georgia registration fo r the E.R.I.C.A. mark, and fi ve for declarations under the federal Declaratory Judgment Act that BofA had not violated (1) Section 43(a) of the Lanham Act, (2) common law service m ark protections, (3) common law unfair competition protections, (4) the Colorado C onsumer Protection Act, and (5) Georgia service mark protections. Motion for Partial Summary Judgment BofA moved for partial summa ry judgment on its cancellation counterclaim. The district court granted the mo tion and ord ered the Georgia Secretary of State to cancel the registration. The court found th at the “plaintiffs did not have valid grounds to register the trademark at the time of fili ng,” as required under Georgia law. App. (No. 19-1349),8 Vol. 2 at 396. Mr. Underwood filed an interl ocutory appeal from the district court’s grant of partial summary judgment. Motion for Summary Judgment BofA moved for summary judgment on Mr. Underwood’s infringement claims. The district court granted the motion. It found that Mr. Underwood had failed to demonstrate a protectable interest in his marks. On that basis, the district court dismissed Mr. Underwood’s claims for (1) violation of Section 43(a) of the Lanham Act, (2) common law service mark infringement, and (3) co mmon law unfair competition. 5 The district court entered final judgme nt, and Mr. Underwood timely appealed. We consolidated the two a ppeals and now resolve both.
II. DISCUSSION We address (A) our appellate jurisdicti on, (B) BofA’s cancellation counterclaim, and (C) Mr. Underwood’s infringement claims. We review the district court’s grant of summary judgment de novo, applying the same standard applied by the district court. See Sandoval v. Unum Life Ins. Co. of Am. , 952 F.3d 1233, 1236 ( 10th Cir. 2020). We view th e evidence and draw all reasonable inferences in the light most fav orable to Mr. Underwood. See Anderson v. Liberty Lobby,
Inc. , 477 U.S. 242, 255 (1986). Summary judg ment is proper “if the movant shows that

5 The district court did not expressly address BofA’s remaining counterclaims. It also declined to exercise s upplemental jurisdiction over Mr . Underwood’s claims under Colorado and Georgia law, and it dismi ssed those claims without prejudice.9 there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a).
A. Jurisdiction Before the district court entered fina l judgment, BofA moved to dismiss Mr. Underwood’s interlocutory appeal, arguing we lack appellate jurisdic tion. We need not address this issue because Mr. Underwood file d a second notice of appeal from the final judgment the district court entered after granting summary judgment on Mr. Underwood’s infringement claims. The dist rict court’s summary judgment order and final judgment constituted a “final deci sion” appealable u nder 28 U.S.C. § 1291. 6 Even if Mr. Underwood’s interlocutory ap peal was premature, the interlocutory “notice of appeal filed before the district c ourt dispose[d] of all claims” became effective when Mr. Underwood obtained a “final ad judication before the court of appeals

6 Ordinarily, a “grant of summary judgment [is] not an appealable final order [if] a counterclaim . . . remain[s] unadjudicated when the district c ourt enter[s] summary judgment.” See Lewis v. B.F. Goodrich Co. , 850 F.2d 641, 642 (10th Cir. 1988) (en banc). But here, BofA’s five unadjudicat ed counterclaims do not deprive us of jurisdiction. In them , BofA sought declarations that it was not liable to Mr. Underwood for his claims against BofA. When the district court gran ted BofA’s motion for summary judgment on Mr. Underwood’s infringeme nt claims, BofA’s five unadjudicated counterclaims became moot. Adjudicating th em would not have “settl[ed] . . . some dispute which affect[ed] the behavior of [Mr. Underwood] toward [BofA].” See Rio Grande Silvery Minnow v. Bureau of Reclamation , 601 F.3d 1096, 1110 (10th Cir. 2010) (quotations omitted). Thus, no twithstanding the unadjudicated counterclaims, the district court’s order disposing of Mr. Underwood’s infringement claims was a final appealable order under 28 U.S.C. § 1291 because it “end[ed] the litigati on on the merits and le[ft] nothing for the court to do but execute the judgment.” Miami Tribe of Okla. v. United States , 656 F.3d 1129, 1137 (10th Cir. 2011) (quoting Coopers & Lybrand v. Livesay , 437 U.S. 463, 467 (1978)).10 consider[ed] the case on its merits.” Ruiz v. McDonnell , 299 F.3d 1173, 1179 (10th Cir. 2002); see also Cook v. Baca , 625 F. App’x 348, 352 ( 10th Cir. 2015) (unpublished) (“Because final judgment has entered in these consolidated cases, [the appellant’s] first notice of appeal has ripened.”). 7 Thus, we have jurisdiction over both of th e district court’s orders. We deny as moot BofA’s motion to dismiss Mr. Underwood’s first appeal. 8
B. Cancellation Counterclaim The district court found that the Ge orgia registration for Mr. Underwood’s E.R.I.C.A. mark should be ca ncelled because the registra tion was improperly granted under Georgia law. We agree.

7 Although not precedential, we find the reasoning of unpublishe d decisions cited in this opinion instructive. See 10th Cir. R. 32.1 (“Unpu blished decisions are not precedential, but may be cited fo r their persuasive value.”); see also Fed. R. App. P. 32.1.

8 We also deny BofA’s request for attorn ey fees and costs in connection with moving to dismiss the interlocutory appeal . Although BofA point s to out-of-circuit authority suggesting Mr. Underwood had no non-frivolous arguments that we had interlocutory jurisdiction, it is unsettled in th is circuit whether a district court’s order directing cancellation of a trademark regist ration is immediately appealable under 28 U.S.C. § 1292(a)(1). We cannot say that an award of fees and costs is appropriate under 28 U.S.C. § 1927 because Mr. Underwood’s attorneys did not act “recklessly or with indifference to the law.” See Steinert v. Winn Grp., Inc. , 440 F.3d 1214, 1221 (10th Cir. 2006) (quotations omitted). Similarly, an aw ard is inappropriate under Federal Rule of Appellate Procedure 38 because Mr. Underw ood’s arguments on interlocutory appellate jurisdiction were not “w holly without merit.” Braley v. Campbell , 832 F.2d 1504, 1510 (10th Cir. 1987) (en banc ) (quotations omitted).11 Additional Legal Background “[W]hen interpreting Georgi a trademark law, we lookfor guidance to general principles of American trademark law as reflec ted in persuasive federal precedents . . . and in trademark law treatises.” McHugh Fuller Law Grp., PLLC v. PruittHealth, Inc. , 794 S.E.2d 150, 154 (Ga. 2016).

a. Georgia trademark applications An applicant for a Georgia trademark must provide “[a] description of the goods or services in connection with which the mark is used and the mode or manner in which the mark is used in connection with su ch goods or services,” and “[t]he date when the trademark or service was first used anywhere, ” and in Georgia. Ga. Code Ann. § 10-1- 442(a)(2)-(3). A service mark is “used” “when it is used to identify the services of one person and to distinguish them from the services of others a nd such services are sold or otherwise rendered in [Georgia].” Id. § 10-1-440(c). Unlike fed eral law, which allows for registration on the basis of intent to use a mark, see 15 U.S.C. § 1051(b); VersaTop Support Sys., LLC v. Ga. Expo, Inc. , 921 F.3d 1364, 1369 (Fed. Cir. 2019), Georgia law requires the registrant to use the mark before registration, see Ga. Code Ann. § 10-1- 440(c); id. § 10-1-442(a)(2)-(3). b. Cancellation A party seeking cancellation of a trad emark registration “must prove two elements: (1) that it has standing; and (2 ) that there are valid gr ounds for canceling the registration.” Cunningham v. Laser Golf Corp. , 222 F.3d 943, 945 (Fed . Cir. 2000). The standing element in the cancella tion context is distinct from Article III standing and is not12 jurisdictional. See id . Cancellation standing requires “t hat the party seeking cancellation believe that it is likely to be damaged by the registration.” Id. In Georgia, “[t]he Secretary of State sh all cancel . . . [a]ny registration concerning which a court of competent jurisdiction sha ll find that [t]he registration was granted improperly.” Ga. Code Ann. § 10-1-448(a)(3 )(C). Thus, a valid ground for cancellation arises when a Georgia mark is registered and the registrant did not “u se” the mark prior to registration within the meaning of Georgia law. See Aycock v. Eng’g, Inc. v. Airflite,
Inc. , 560 F.3d 1350, 1357 (Fed. Cir. 2009) (“The registration of a mark that does not meet the use requirement is void ab initio.”).

c. Reforming a registration In some instances, reformation of a regi stration is appropriate rather than full cancellation. An “applicant’s nonuse of its ma rk on some of the id entified services” in the registration is distinct from an “applicant’ s complete failure to make use of its mark before filing the application on any of its identified services.” Grand Canyon W. Ranch v. Hualapai Tribe , Opp. No. 91162008, 2006 WL 802407, at *2 (T.T.A.B. 2006). Although “the harsh remedy of voiding the application [i]s appropriate” for complete failure to use the mark before registration, “applicants that have used the mark in connection with some of the goods or services identifie d in their applications, but not others, may cure this problem by amending their applicati ons to delete the offending goods and services.” See Kelly Servs., Inc. v. Creative Harbor, LLC , 846 F.3d 857, 869 (6th Cir. 2017) (quotations omitted).13 Analysis Mr. Underwood’s Georgia registrati on should be cancelled because the registration was “granted improperly” and there is no basis for reformation.

a. Registration was “granted improperly” The registration for the E.R.I.C.A. mark was “granted improperly.” See Ga. Code Ann. § 10-1-448(a)(3)(C). 9 First, Mr. Underwood does not contest in his briefs that BofA has standing because “being sued for infring ement is sufficient to support standing for a counterclaim for cancellation.” World Mkt. Ctr. Venture, LLC v. Tex. Int’l Prop. Assocs. , No. 2:08-cv01753-RCJ-GWF, 2009 WL 3303758, at *3 (D. Nev. Oct. 14, 2009). The continuing Georgia registration gave BofA “a reasonable belief that there is a likelihood of damage

9 BofA pled its cance llation counterclaim under Ga. Code Ann. § 10-1- 448(a)(3)(D), contending the registration was “fraudulently-obtained.” App. (No. 19-1349), Vol. 1 at 28, 31, 48. Without amending the counterclai m, BofA moved for partial summary judgment under Ga. Code Ann. § 10-1-448(a)(3)(C), arguing the registration “was g ranted improperly.” See id. at 78. In his response brief to the motion for summary judgment, Mr. Underwood acknowledged that “[t]he Defendant does not seek summary judgment under the fraud prong of the Georgia statute, but rather pursuant to section (C) pertaining to an improperly g ranted registration.” App. (No. 19-1349), Vol. 2 at 153 (citation omitted). And the dist rict court granted th e motion on the ground that the registration was “granted improperl y,” not that it was “fraudulently obtained.” Id. at 398. The district court thus prop erly decided the issue of cancellation on the “granted improperly” ground by consent of the parties under Federal Rule of Civil Procedure 15(b)(2). Ru le 15(b)(2) provides: “When an issue not raised by the pleadings is tried by the parties’ express or implied cons ent, it must be treated in all respect as if raised in the pleadings. . . . [F ]ailure to amend does no t affect the result of the trial of that issue.” See also Sinclair Wyo. Re fin. Co. v. A&B Builders, Ltd. , 989 F.3d 747, 777 n.18 (10th Cir. 2021) (noting th at Rule 15(b) can apply to counterclaims at summary judgment).14 caused by the continuing registra tion of the [E.R.I.C.A.] mark,” see 3 McCarthy § 20:46, by jeopardizing the incontestability of Bo fA’s registered federal service mark, see 15 U.S.C. § 1065 (describing the “incontest able” rights of a federal registration holder “except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquire d under the law of any State . . .”). Second, BofA has valid grounds to seek cancellation of Mr. Underwood’s Georgia registration. In opposing BofA’s motion fo r partial summary judgment, Mr. Underwood “admit[ted] . . . that prior to 2015 [he] di d not use the Georgia trademark in connection with a service that ‘verbally tells the news and current events through cell phone and computer applications.’” App. (No. 19-1349) , Vol. 2 at 151. His admission that he had not used the Georgia trademar k with the services specified on the Georgia registration resolves the question whether the services were “used” before October 2010. See Ga. Code Ann. § 10-1-442(a)(2)-(3); id. § 10-1-440(c). Becaus e Mr. Underwood did not satisfy the statutory use requirement for registration, the district court correctly ordered that it be cancelled. 10

10 Mr. Underwood is incorrect that canc ellation “is reserved for a finding of fraud.” See Aplt. Br. (No. 19-1349) at 9. In Geor gia, cancellation because a “registration was obtained fraudulently,” Ga. Code A nn. § 10-1-448(a)(3)(D), and cancellation because a “registration was granted improperly,” id. § 10-1-448(a)(3)(C), are separate grounds.15 b. No basis for reformati on of the registration Mr. Underwood argues that ra ther than cancelling the registration, the district court should have reformed the registration to reflect that he used the E.R.I.C.A. mark “in partial conformity with the registration.” Ap lt. Br. (No. 19-1349) at 6. We disagree. Mr. Underwood cannot show any basis to reform his Georgia registration. The Georgia registration lists only a single servic e associated with th e E.R.I.C.A. mark: “E.R.I.C.A. verbally tells the news and cu rrent events via cell phones and computer applications.” App. (No. 19-1349), Vol. 1 at 141 (capita ls omitted). Mr. Underwood’s admission that he did not use the mark in co nnection with the only service listed on the registration before October 2010 means that he cannot show a necessary precondition for reformation—that he us ed the mark with “ some of the goods or services identified in the[] application[], but not others.” Kelly Servs. , 846 F.3d at 869 (emphasis added). Mr. Underwood’s suggestion that the dist rict court could have reformed the registration to “a computer animated woman” lack s merit. Aplt. Br. (No. 19-1349) at 7. The “computer animated woman” language co mes from the registration’s description of the E.R.I.C.A. mark, not from the registration’s list of services that the mark purported to identify or distinguish. See App. (No. 19-1349), Vol. 1 at 141. Under trademark law principles, “it is the trade, and not th e mark, that is to be protected.” Hanover Star Milling Co. v. Metcalf , 240 U.S. 403, 416 (1916), superseded on othe r grounds by 15 U.S.C. § 1072. Without a showing of the relevant serv ices the mark identifies and distinguishes, the mark itself is not protectible. See 2 McCarthy § 16:1 (“The way to obtain rights in a business symbol is to actually use it as a mark.”).16 Finally, Mr. Underwood’s arg ument that mitigating circ umstances counsel against complete cancellation is unavailing. He urges that his statement of use in the Georgia application was harmless or unintentional rath er than fraudulent. Bu t because the basis for cancellation here is that the registrati on was “granted improperly,” not that it was “obtained fraudulently,” it is irrelevant that Mr. Underwood “did not purposely misstate his use,” or that “the Georgia Secretary of State directly led [Mr.] Underwood to believe that his website-use and promo tional-use were sufficient to file a use-based application.” Aplt. Br. (No. 19-1349) at 11.
* * * * We affirm the cancellation of Mr. Un derwood’s Georgia registration.
C. Infringement Claims The district court granted summary judgme nt to BofA on Mr. Underwood’s claims that BofA infringed his E.R.I.C.A. and my24erica.com service marks. On appeal, Mr. Underwood argues he established a protectable interest in both marks through actual and analogous use. On the E.R.I.C.A. mark , we vacate summary judgment because the district court applied the wrong legal sta ndard for actual use. We affirm summary judgment on the my24erica.com mark. Additional Legal Background

a. Section 43(a) Section 43(a) of the Lanham Act prohibits anyone, “in connection with any goods or services, . . . [from] us[ing] in commerce any word, term, name, sy mbol, or device, or any combination thereof, . . . which is lik ely to cause confusion.” 15 U.S.C.17 § 1125(a)(1)(A). 11 To prevail under Section 43(a), a plaintiff must show “(1) that the plaintiff has a protectable interest in the mark ; (2) that the defendant has used an identical or similar mark in commerce; and (3) that the defendant’s use is likely to confuse
customers.” 1-800 Contacts, Inc. v. Lens.com, Inc. , 722 F.3d 1229, 1238 (10th Cir. 2013) (citation and quotations omitted). This appeal addresses only the first element, whether Mr. Underwood has a protectable interest in the E.R.I.C.A. and my24erica.com marks. When, as here, the plaintiff’s marks are unregistered, the plainti ff has the “burden to de monstrate that [the mark] is protectable under § 43(a).” Donchez , 392 F.3d at 1216. b. Protectable interest A plaintiff acquires a protectable interest by “us[ing] a distinct mark in
commerce.” See B&B Hardware , 576 U.S. at 142. “[S]o lo ng as a person is the first to use a particular mark,” that person will prev ail against subsequent users of the mark. See ITC Ltd. v. Punchgini, Inc. , 482 F.3d 135, 147 (2d Cir. 2007). Under the Lanham Act, the plaintiff must make “bona fide use of a ma rk in the ordinary cour se of trade, and not . . . merely to reserve a right in a mark.” 15 U.S.C. § 1127. A service mark is used in

11 The opinion’s discussion of the Lanham Act Section 43(a) claim is applicable to the other two claims on which the district court granted summary judgment: common law service mark infringement an d common law unfair competition. See Donchez v. Coors Brewing Co. , 392 F.3d 1211, 1219 (10th Cir. 2004) (common law service mark infringement has similar elements as a claim under Section 43(a)); Suntree Techs., Inc. v. Ecosense Int’l, Inc. , 693 F.3d 1338, 1345 (11th Cir. 2012) (same for common law unfair competition); see also 1 McCarthy § 1:19.50 (noting that Section 43(a) “federalized” the common law of trademark infri ngement and unfair competition).18 commerce “when it is used or di splayed in the sale or advertising of services and the services are rendered in commerce.” Id. The plaintiff’s “use of a ma rk in commerce . . . must be sufficient to establish ownership rights for a plaintiff to recover against s ubsequent users under section 43(a).” Planetary Motion, Inc. v. Techsplosion, Inc. , 261 F.3d 1188, 1195 (11th Cir. 2001). This requirement has its roots in the common law “rule of trademark ownership in the United States[,] priority of us e.” 2 McCarthy § 16:1. 12 Whether such prior use is sufficient to confer a protectable interest inthe mark does not turn on whether the use was for profit, but instead on whether the activ ities “bear elements of comp etition, notwithstanding [a] lack of an immediate profit-motive.” Planetary Motion , 261 F.3d at 1200; see id. at 1199 (“Common law unfair competition protection exte nds to non-profit or ganizations because they nonetheless engage in competition with other organizations.”). The parties agree that a plaintiff may show use sufficient to establish a protectable interest through (1) “actua l use in the market,” Allard Enters., In c. v. Advanced

12 As stated above, the first element of a § 43(a) claim requires a plaintiff to establish a protectable interest in a mark, wh ile the second and thir d elements correspond to the defendant’s infringing conduct. Both a plaintiff’s protectable interest and a defendant’s infringing conduct require use of a mark in commerce. In this appeal, we need only address th e first element. The “use of commerce” language in § 43(a) serves the further purpose of “reflect[ing] Congress’s intent to legislat e to the limits of its authority under the Commerce Clause, rather than to limit the Lanham Act to profit-seeking uses of a trademark.” United We Stand Am., Inc. v. Un ited We Stand, Am. N.Y., Inc. , 128 F.3d 86, 92-93 (2d Cir. 1997); see 15 U.S.C. § 1127 (“The word ‘commerce’ means all commerce which may lawfully be regulated by Congress. ”). The conduct in th is case is regulable because both the plaintiff’s ma rks and the defendant’s mark ar e used on the internet, and “the Internet is generally an instru mentality of interstate commerce.” Id.19 Programming Res., Inc. , 146 F.3d 350, 354 (6th Cir. 1 998) (quotations omitted); or (2) “prior use analogous to trad emark or service mark use,” Herbko Int’l, Inc. v. Kappa Books, Inc. , 308 F.3d 1156, 1162 (Fed. Cir. 2002). As to either, the plaintiff must show use of the mark as a service mark, which means use “to identify and distinguish the services of one person, incl uding a unique service, from the services of others and to indicate the source of the services, even if th at source is unknown. ” 15 U.S.C. § 1127. i. Actual use Actual use of a mark consists of “atte mpt[s] to complete genuine commercial transactions.” Allard Enters. , 146 F.3d at 359. A servi ce mark is used in commerce when services are “rendered to others,” that is, “[when] the service provider in fact benefits third parties, regardless of its reason for providing its services.” Morningside Grp. Ltd. v. Morningside Cap. Grp., LLC , 182 F.3d 133, 138 (2d Cir. 1999) (quotations omitted). To establish actual use, “[t]he exte nt or duration of use is of no particular significance other than to the extent that it demonstrates [an] in tention to adopt.” Drexel Enters., Inc. v. Richardson , 312 F.2d 525, 527 (10th Cir. 1962). Even “a single use in trade may sustain trademarks rights if followe d by continuous commercial utilization.” Blue Bell, Inc. v. Farah Mfg. Co. , 508 F.2d 1260, 1265 (5th Cir. 1975). The use must be part of a bona fide transaction, and not, for example, use indicating “the mere intent to reserve a mark for later use.” Allard Enters. , 146 F.3d at 359 (emphasis added). Although “a website that bears a trademark may constitute a bona fide use in commerce,” the website must “identify [the] goods or services [the owner] could have provided through or in connection with the website.” Specht v. Google Inc. , 747 F.3d20 929, 934 (7th Cir. 2014); see also Schreiber v. Dunabin , 938 F. Supp. 2d 587, 598 (E.D. Va. 2013) (noting that merely “operating a website available on the Internet is not equivalent to use in United States commerc e”). “The important question is not how readily a mark will be notic ed but whether, when noticed , it will be understood as identifying and indicating the origin of the se rvices.” TMEP § 1 301.02 (8th ed. Oct. 2018). ii. Analogous use In contrast to actual use, which is us e of the mark in a genuine transaction involving the provision of good s or services, analogous use is use in commerce that is non-transactional. It typically consists of “promotional efforts” for the goods or services at issue, FN Herstal SA v. Clyde Armory Inc. , 838 F.3d 1071, 1081 (11th Cir. 2016), such as “advertising brochures, cata logs, newspaper ads, and artic les in newspapers and trade publications,” T.A.B. Sys. v. Pactrel Teletrac , 77 F.3d 1372, 1375 (F ed. Cir. 1996). No genuine transaction is required to acquire a protectable interest in the mark. Although actual use need not have a “substantial impact on the purchasing public,” analogous use must be “of such a nature and extent as to create public identification of the target term withthe [user’s] product or service.” See T.A.B. Sys. , 77 F.3d at 1375-76. “[A]nalogous use must be use that is open and notorious,” that is, “of such a nature and extent that the mark has become popu larized in the public mind so that the relevant segment of the public id entifies the marked go ods with the mark’s adopter.” Am. Express v. Goetz , 515 F.3d 156, 161-62 ( 2d Cir. 2008) (quotations omitted).21 Analysis Mr. Underwood argues thatbefore BofA’s October 2016 priority date, he established protectable interests through bo th actual use and analogous use of the E.R.I.C.A. mark and the m y24erica.com mark. On the E. R.I.C.A. mark, we find the district court (1) addressed act ual use but did so under an in correct legal standard, and (2) correctly found there was insuffi cient analogous use of the E.R.I.C.A. mark. On the my24erica.com mark, we find it was not actually or analogously used as a service mark.

a. E.R.I.C.A. mark i. Actual use Mr. Underwood argues he can show actual use of the E.R.I.C.A. mark because, “by March 2015, [he] was using the E.R.I.C.A. . . . mark[] on his My24erica.com website . . . to provide actual search-engi ne and personal-assistant servi ces to the public.” Aplt. Br. at 31; see id. at 5 (“The record demonstrates that Mr. Underwood used the E.R.I.C.A. mark in conjunction with actual services provided to the gen eral public no later than March 2015 . . . .”). The district court passe d upon this issue but applied the wrong legal standard. We therefore vacat e the summary judg ment in favor of BofA on Mr. Underwood’s infringement claims concerning the E.R.I.C.A. mark and remand for the district court to apply the correct actual use standard. 1) District court passed on actual use BofA asserts that Mr. Underwood failed to present an actual use argument to the district court. See Aplee. Br. at 15. Even so, we ma y consider actual use on appeal if the “district court explicitly consider[ed] and resolve [d] [the] issue of la w on the merits.”22 Tesone v. Empire Mktg. Strategies , 942 F.3d 979, 991 (10th Cir. 2019). Courts may review a question “not pressed so lo ng as it has been passed upon.” Lebron v. Nat’l R.R. Passenger Corp. , 513 U.S. 374, 379 (1995) (quotations omitted). A district court “passes upon an issue wh en it applies the relevant law to the relevant facts.” Tesone , 942 F.3d at 992 (quotations omitte d). The district court’s order addressed actual use by considering and reje cting it as a basis for Mr. Underwood’s protectable interest in the E.R.I.C.A. mark. 13 Because the district court “recognized that the [actual use] theory [Mr. Underwood] presents on appeal was at play in the litigation and rejected it,” the issue is properly before us. See Mid Atl. Cap. Corp. v. Bien , 956 F.3d 1182, 1195 n.6 (10th Cir. 2020). The district court identified two ways to meet the Lanham Act’s protectableinterest requirement: (1) when “actual sales have occurred,” or (2) through “analogous use.” App., Vol. 6 at 1450

. In its explanation of the background legal principles, the court’s discussion of analogous use dwarfed its brief mention of “actual sales.” And if the court had not discussed actual sales furt her, we might conclude it had not passed upon the issue of actual use.

13 Mr. Underwood did not waive through inadequate appellate briefing the argument that the district court passed upon the issue of actual use. Responding to BofA’s response brief argument that he forfeite d the actual use issue in district court, Mr. Underwood cited “authority” and provided “anal ysis” to argue that the district court passed upon the issue of actual use. See Burke v. Regalado , 935 F.3d 960, 1018 n.44 (10th Cir. 2019). Nor did he waive this argume nt by presenting it for the first time in the reply brief. We will consider such an argume nt when, as here, the “new issue argued in the reply brief is offered in response to an argument raised in the appellee’s brief.” Beaudry v. Corr. Corp. of Am. , 331 F.3d 1164, 1166 n.3 (10th Cir. 2003).23 But the district court addressed whether Mr. Underwood had a protectable interest in the E.R.I.C.A. mark in two sections th at were clearly set off with “[f]irst” and “[s]econd” identifiers. See id. at 1450-51. In the first sec tion on actual use, the court found that “it [wa]s undisputed that no cust omers purchased goods or services offered under the mark,” and that the Plaintiffs had not “generated any revenue from their use of the mark.” Id. at 1450. It also found that the Pl aintiffs had never used the mark in connection with the services descri bed in the Georgia registration. Id. at 1450-51. The court therefore rejected that Mr. Underwood ha d established a protectable interest in the E.R.I.C.A. mark through actual sales and use of the mark. 14 In the second section on analogous use, the court explained that “Pla intiffs have not presented evidence of any promotional activities, in cluding hosting of th e website, demonstrating that a substantial share of the consuming public was reached or came to identify the E.R.I.C.A. mark with their services.” Id. at 1451. It therefore rejected Mr. Underwood’s reliance on analogous

use. The district court’s actual use analysis applied what it believed to be “relevant law to the relevant facts.” Tesone , 942 F.3d at 992 (quotations omitted). The court identified as “relevant law” that actual us e sufficient to establish a prot ectable interest arises when

14 In the introductory part of the order, the district court stated, “In determining that Plaintiffs had failed to satisfy the prere quisites for Georgia registration, the Court did not reach the issue of whether Plaintiffs had presented sufficient evidence of ‘analogous use’ that would establish priority over Defe ndant’s use of its mark. On that basis, Defendant now moves for summary judgment and dismissal of the entire case.” App., Vol. 6 at 1449 (citation omitted). This pa ssage does not alter that the court also addressed the issue of actual use.24 “customers purchase[] goods or services offered under the mark,” or when the user “generates any revenue from their use of the ma rk.” App., Vol. 6 at1450. It identified the “relevant facts” as follows : (1) “it is undisputed that no customers purchased goods or services offered under the mark”; (2) “nor have Plaintiffs gene rated any revenue from their use of the mark”; and (3) “Plaintiffs have not shown that they ever used their mark with any service . . . as describe d in the Georgia registration.” Id. at 1450-51. The court did not simply address actual use in passing, but instead “develop[e d] additional facts” concerning whether Mr. Underwood could estab lish a protectable interest through actual use by reference to sales, re venue, and use of the mark in connection with services. See United States v. Criollo-Casteneda , 89 F. App’x 173, 175 (10th Cir. 2004) (unpublished). 15 Although the district court’s analysis of ac tual use lacked case citations, the court “resolve[d] an issue of law on the merits.” See United States v. Hernandez-Rodriguez , 352 F.3d 1325, 1328 (10th Cir. 2003). 16 The court’s reasoning, though brief,

15 As explained below, the district court made two legal errors in its actual use analysis. A district court need not decide an issue correctly to have passed upon the issue. The “passed upon” argument usually aris es when an appellant seeks reversal on an issue that the appellee argues was forfeited in district court. See Tesone , 942 F.3d at 991-93.

16 In fact, the entire order had few citati ons. The district court cited only two district court opinions for the analogous use standard, see App., Vol. 6 at 1450, and its analogous use analysis cited only an additiona l district court and Ninth Circuit opinion, see id. at 1451-52. Also, until to day, we have discussed the actual use standard in any depth only once, in Drexel Enterprises, Inc. v. Richardson , 31 F.2d 525, 526-27 (10th Cir. 1962). Thus, in context, the order’s lackof citations to actual use authorities does25 “evaluate[d] th[e] legal issue” of actual use to the extent it believed was required to give a “comprehensive resolution.” See Criollo-Casteneda , 89 F. App’x at 175. 2) Legal error and remand The district court applied the wrong legal st andard to the issue of actual use of the E.R.I.C.A. mark. We therefore remand for the court to apply the correct standard. “When the court of appeals notices a lega l error, it is not ordinarily entitled to weigh the facts itself and reac h a new conclusion; instead, it must remand to the district court for it to make a new determ ination under the correct law.” United States v. Hasan , 609 F.3d 1121, 1129 (10th Cir. 2010). When the district court has taken “an erroneous view of the law, a remand is the proper course unless the record permits only one resolution of the factual issue.” Pullman-Standard v. Swint , 456 U.S. 273, 292 (1982). Here, the district court committed two le gal errors. First, it assumed that customers must have “purchased” the services offered or that Mr. Underwood must have generated revenue to qualify as actual use. App., Vol. 6 at 1450-51. But a service mark is used when “the service provider in fact benefits third parties, regardless of its reason for providing its services.” Morningside Grp. , 182 F.3d at 138. Second, the court erred by limiting the services at issue to those listed in the Georgia registration. It should have considered the search engine and personal a ssistant services that Mr. Underwood claims my24erica.com offered and that form the basis of Mr. Underw ood’s Section 43(a) claim.

not mean the court failed to apply “rel evant law” to the “relevant facts.” See Tesone , 942 F.3d at 992.26 See, e.g. App., Vol. 1 at 18 (describing my24erica .com in the complaint as, among other things, “an interactive global search engine platform”). Under the correct view of the law, to establish a protectable interest in the E.R.I.C.A. mark based on actual use, Mr. Underwood must establish (1) my24erica.com—the only place where Mr. Unde rwood claims services were offered in connection with the mark—was publicly accessible before BofA’s priority date of October 2016; (2) search engi ne and personal assistant se rvices on my24erica.com were “rendered to others” before October 2016, Morningside Grp. , 182 F.3d at 138 (quotations omitted); and (3) as it appeared on the my24erica.com webs ite display, the E.R.I.C.A. mark “clearly identif[ied] and distinguish[ed]” the services offered “on the website,” 2 McCarthy § 16:32.70. We decline to address these factual i ssues under the correct actual use legal standard in the first instance. Instead, we remand “out of an abundance of caution and in the interest of justice, because we have difficulty concluding th at the record leads ineluctably to only one result” on the issue of actual use. See In re Woods , 743 F.3d 689, 707 (10th Cir. 2014). 17
ii. Analogous use Our remand is limited to the actual use i ssue because the district court did not err in concluding that Mr. Underwood could not sh ow analogous use of the E.R.I.C.A. mark.

17 As explained above, BofA’s counterclaims became moot in light of the district court’s disposition of Mr. Unde rwood’s infringement claims. On remand, the district court should address BofA’s counterclaims.27 Thus, on remand, Mr. Underwood may not pu rsue his analogous use theory for the E.R.I.C.A. mark. For a finding of analogous use of the E.R.I.C.A. mark before October 2016, Mr. Underwood relies on evidence of (1) use at bus iness meetings, (2) distribution of around 1,500 business cards to undisclosed people, (3) distribution of around 200 promotional DVDs to undisclosed people, and (4) use at a meeting with AT&T in preparation for the failed joint venture. He also cites the my24erica.com website itself and the 772 Facebook likes purportedly associated with the my24erica.com website . No reasonable jury could find analogous use from this evidence. First, there is no evidence that any of the promotional activities in the years 2009 to 2012—the use of the mark in a PowerP oint presentation at business meetings, on business cards, on promotional DVDs, and w ith AT&T—were known outside of a small handful of industry actors. Su ch behind-the-scenes activities are insufficient to show that the mark was “popularized in the public mind.” See Goetz , 515 F.3d at 162 (quotations omitted) (using a slogan “only in communicati ons with a few commer cial actors within the credit card industry” was in sufficient to demonstrate an association in the public mind). When “the use of . . . marks in the pr ovision of services [i]s limited to a handful of presentations [and] seminars,” that is the “sort of minimal activity [that] is insufficient to satisfy the ‘use’ el ement of the test.” Int’l Healthcare Exch. v. Glob. Healthcare Exch., LLC , 470 F. Supp. 2d 365, 371 (S.D.N.Y. 20 07). Based on the lack of evidence that members of the general public recei ved the business cards or the DVDs, these28 promotional activities do not demonstrate a “substantia l impact on the purchasing public.” See FN Herstal , 838 F.3d at 1081 (quotations omitted). Second, the evidence concerni ng my24erica.com itself—the fact of its existence and the Facebook likes—is insu fficient to demonstrate wide spread association in the public mind between the Plaintiffs’ search engine services and the E.R.I.C.A. mark. Even assuming that the 772 likes on th e My24HourNews.Com Facebook page as of October 2018 indicate that 772 people visited my24erica.com at some point and used its services, that evidence would not create a fact question about analogous use. Mr. Underwood needed to establish protec tability as of October 2016. But the record does not show how ma ny people visited my24erica.com before October 2016. Even if we credited all 772 likes to the peri od before October 2016, the website usage is insufficient to show that a significant segm ent of the public asso ciated the E.R.I.C.A. mark with the search engine services. In T.A.B. Systems , the Federal Circuit found that “purchaser perception must involve more th an an insubstantial number of potential customers. For example, if the potential mark et for a given service were 10,000 persons, then advertising shown to have reached only 20 to 30 people as a matter of law could not suffice.” T.A.B. Sys. , 77 F.3d at 1377. T.A.B. Systems shows the weakness of Mr. Unde rwood’s analogous use argument because there is a wide gap between the “pot ential market” for his internet services and the actual number of users. Though he claims to have offered services globally over the internet, Mr. Underwood can po int to evidence of no more than 772 users total before October 2016. See Westrex Corp. v. New Sensor Corp. , Opp. Nos. 91168152 &29 91170940, 2007 WL 1676790, at *5 (T.T.A .B. 2007) (finding no analogous use when despite efforts to publicize the business, there was little, if any, response). The low number of users relative to the “potential market” demonstrates that no more than “an insubstantial number of potential customers” we re aware of my24erica.com, let alone that they were aware of the services offered on the website and associated the E.R.I.C.A. mark with those services. Thus, Mr. Underwood’s analogou s use theory lacks merit. b. my24erica.com mark Mr. Underwood has failed to establish a pr otectable interest in the my24erica.com mark. 18 To qualify as a service mark that has been used in commerce, whether under an actual or analogous use theory, the mark must “identify and distinguish the services of one person . . . from the services of others.” 15 U.S.C. § 1127. Because there is no dispute of fact that my24erica.com did not pe rform this function, it is not protectable. In certain situations, a domain name ma y be protectable unde r the Lanham Act. See U.S. Pat. & Trademark Off. v. Booking.com B. V. , 140 S. Ct. 2298, 2308 (2020). But

18 The district court did not separately address whether the my24erica.com mark is protectable, even though Mr. Underwood’s comp laint, App., Vol. 1 at 19, and opposition to summary judgment, App., Vol. 2 at 428, asserted that his infringement claims were based on his ownership of th e E.R.I.C.A. and my24erica.com marks. The parties have fully briefed the issue of the protectability of the my24erica.com mark on appeal, the record is fully developed, our review is de novo, and the outcome is clear. We therefore exercise our discretion to address the issue rather than remand. See Anixter v. HomeStake Prod. Co. , 77 F.3d 1215, 1229 ( 10th Cir. 1996) (reaching an issue not reached by the district court when it was properly before the district court, fu lly briefed on appeal, and no further fact-finding was necessary).30 the “mere registration of a domain name [i]s not sufficient.” Brookfield Comm’cns v. W. Coast Ent’mt Corp. , 174 F.3d 1036, 1052 (9th Cir. 1999 ). Like all marks, a domain name must be “used to identify and distingui sh the source of goods or services” to be protectable. 1 McCarthy § 7:17 .50. “Out of the millions of domain names, probably only a small percentage also play the ro le of a trademark or service mark.” Id. A domain name is protectable if the domain itself has an “association with [the services] in the mind of the public based on the evid ence of the length and nature of the use of the [domain name] mark.” St. Luke’s Cataract & Laser Inst. v. Sanderson , 573 F.3d 1186, 1209 (11th Cir. 2009). The baseline association the public has w ith a domain name is to use it to “identif[y] an addre ss on the Internet,” Booking.com , 140 S. Ct. at 2303 n.1, “an identifier somewhat analogous to a telephone number,” Brookfield Comm’cns , 174 F.3d at 1044; 1 McCarthy § 7:17.50 (“Like a street addre ss or telephone number, every domain name serves the purely technological f unction of locating a web site in cyberspace.”). It is thus normally difficult for a plaintiff to show th at, beyond serving this logistical locationidentifying function, the domain name is also “used to identify and to distinguish goods or services.” See Brookfield Comm’cns , 174 F.3d at 1051. Mr. Underwood cannot show th at my24erica.com is one of the “small percentage” of domain names that qualify as service ma rks. There is no evidence Mr. Underwood deployed the designation my24eric a.com for anything more than “as an address by means of which one may reach [his] Internet website.” In re Vicki Roberts , Serial No. 76649075, 2008 WL 19 44634, at *4 (T.T.A.B. 2008). For example, there is no evidence31 that my24erica.com, as opposed to the E. R.I.C.A. mark, had a prominent place on the website, or that anything in the display “focused the web-user’s attention on that name.” See St. Luke’s , 573 F.3d at 1207. Nor did the my 24erica.com domain name appear on any advertisements or other promotio nal materials, in contrast to the My24HourNews.Com name. See id. The my24erica.com mark is thus not entitled to protection.
III. CONCLUSION On BofA’s cancellation counterclaim, we affirm summary judgment against Mr. Underwood. On Mr. Underwood’s infringe ment claims, (1) we vacate summary judgment for BofA on the E.R.I.C .A. mark and remand for the district court to apply the correct actual use standard, and (2) we a ffirm summary judgme nt for BofA on the my24erica.com mark. Proceedings on remand shall be consistent with this opinion.