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Case 3:18-cv-01159-AC Document 1 Filed 06/29/18 Page 1 of 17

Kevin M. Hayes, OSB #012801
Email: kevin.hayes@klarquist.com
Jeffrey S. Love, OSB #873987
Email: jeffrey.love@klarquist.com
KLARQUIST SPARKMAN, LLP
121 S.W. Salmon Street, Suite 1600
Portland, Oregon 97204
Telephone: 503-595-5300

Attorneys for Plaintiff
RED SHIELD INSURANCE COMPANY

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

PORTLAND DIVISION

RED SHIELD INSURANCE COMPANY, Case No.: 3:18-cv-1159

Plaintiff, COMPLAINT FOR
TRADEMARK INFRINGEMENT AND
v. UNFAIR COMPETITION

RED SHIELD ADMINISTRATION, INC., DEMAND FOR JURY TRIAL

Defendant.

Plaintiff Red Shield Insurance Company (“Red Shield Insurance Company” or Plaintiff),

by its attorneys, for its Complaint against Defendant, alleges as follows:

SUMMARY

1. Plaintiff is a Washington corporation based in Portland, Oregon, that was

incorporated in 1979.

2. Plaintiff began offering insurance under the trademark RED SHIELD in 1979 and

has, since then, continuously offered insurance under the trademark RED SHIELD.

3. Plaintiff sells insurance policies throughout Oregon. The policies are written

through local insurance agents.

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 1
Case 3:18-cv-01159-AC Document 1 Filed 06/29/18 Page 2 of 17

4. Plaintiff has achieved an “A” (Excellent) Rating from A.M. Best for its financial

strength (an important metric to consumers).

5. To protect its valuable RED SHIELD trademark, Plaintiff has federally registered

a family of RED SHIELD trademarks. Exhibits 1, 2 and 3 hereto are true copies of the

Certificates of Registration for Plaintiff’s family of RED SHIELD trademarks.

6. Defendant had been known as Red Auto Administration Inc. prior to this year.

7. However, Defendant changed its name in 2018 to Red Shield Administration, and

began using the trademark RED SHIELD to offer service contracts/vehicle “protection plans.”

8. Defendant’s use of RED SHIELD for service contracts/protection plans is causing

confusion in the marketplace with Plaintiff’s prior and federally registered trademark RED

SHIELD® for property and casualty insurance underwriting. For example, an apparent

consumer of Defendant’s protection plan, who identified himself to Plaintiff as an attorney and

was confused by the identical RED SHIELD marks, contacted Plaintiff and threatened to sue

Plaintiff over Defendant’s plan. A true copy of that communication is attached hereto as Exhibit

8. Defendant’s use of RED SHIELD for protection plans is also causing confusion with state

regulators. For example, the State of California Department of Insurance, obviously confused by

the identical RED SHIELD marks, sent a complaint to Plaintiff in Oregon regarding Defendant

and its services. A true copy of that communication is attached hereto as Exhibit 7. In addition,

the State of Oregon Division of Financial Regulation called Plaintiff and notified it that

Defendant was attempting to register a new name in Oregon, Red Shield Administration, which

included the words in Plaintiff’s RED SHIELD trademark.

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 2
Case 3:18-cv-01159-AC Document 1 Filed 06/29/18 Page 3 of 17

9. Plaintiff has twice requested Defendant to stop using the RED SHIELD

trademark, and has sent Defendant the exemplary evidence of actual confusion attached to this

Complaint as Exhibits 7 and 8. But, Defendant has not agreed to stop.

10. Thus, Plaintiff brings this action for trademark infringement and unfair

competition. By this action, Plaintiff seeks to prevent Defendant from using RED SHIELD in its

business name and in connection with service contracts/vehicle protection plans and seeks: (a)

damages arising from Defendant’s past and present infringement of Plaintiff’s trademark rights;

(b) damages arising from Defendant’s use and registration of the domain name

redshieldprotection.com and a transfer of the domain name to Plaintiff; (c) injunctive relief

against Defendant’s continued infringement; (d) enhanced damages; and (e) reimbursement of

Plaintiff’s attorney fees and costs incurred in connection with its efforts to protect its intellectual

property rights.

THE PARTIES

11. Plaintiff, Red Shield Insurance Company, is a Washington Corporation with a

principal place of business in Portland, Oregon.

12. Defendant, Red Shield Administration, Inc., is a Kansas Corporation with a

registered office at 5350 College Blvd., Overland Park, Kansas 66211 and a registered agent at

5305 North River Road Ste. B1, Keizer, Oregon 97303.

13. On information and belief, affiliates of Defendant acting in concert with it to

infringe Plaintiff’s trademarks include Red Auto Companies and Red Shield Dealer Services.

PLAINTIFF’S TRADEMARKS

14. Plaintiff has been using the trademark RED SHIELD for insurance underwriting

services in commerce since 1979.

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 3
Case 3:18-cv-01159-AC Document 1 Filed 06/29/18 Page 4 of 17

15. Plaintiff’s use of RED SHIELD for its services has caused the trademark RED

SHIELD to become Plaintiff’s trademark wherever it has used its trademark.

16. Plaintiff also owns the following Federal Trademark Registrations for its family

of RED SHIELD trademarks.

Exhibit Trademark Registration Registration Goods/Services Incontestable
No. Date/ under 15 U.S.C.
Filing Date § 1065
1 RED SHIELD 3,554,088 12/30/2008 property and Yes
6/11/2008 casualty insurance
underwriting
2 RED SHIELD 2,303,230 12/28/1999 property and Yes
INSURANCE 6/17/1997 casualty insurance
COMPANY underwriting
3 RED SHIELD 4,963,775 5/24/2016 insurance No
INSURANCE 9/14/2015 underwriting
COMPANY services for all
YACHT types of insurance
SHIELD

17. Plaintiff’s Federal Registrations for its RED SHIELD trademarks provide

nationwide rights in those trademarks as of the filing dates for the respective trademarks.

JURISDICTION AND VENUE

18. This Court has jurisdiction over the subject matter of this action because this action

arises under the Federal Trademark Act, 15 U.S.C. §§ 1051-1127, jurisdiction being conferred in

accordance with 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338. Supplemental jurisdiction

over the causes of action under Oregon state law is proper as those causes of action are

substantially related to the causes of action over which the Court has original jurisdiction, pursuant

to 28 U.S.C. §§ 1338(b) and 1367.

19. Venue is proper under 28 U.S.C. §§ 1391(b). Defendant is transacting business

within this judicial district and has committed acts complained of herein in this judicial district (or

those acts have been aimed at and felt within this judicial district). In this regard:

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 4
Case 3:18-cv-01159-AC Document 1 Filed 06/29/18 Page 5 of 17

a. Plaintiff has received at least one telephone call from a consumer in Oregon

who called Plaintiff about a plan the consumer has with Defendant.

b. Defendant registered to do business under its prior name in the State of

Oregon on February 2, 2015. (A true copy of the “Application for Authority

to Transact Business” filed by Defendant with the State of Oregon is attached

as Exhibit 4).

c. Defendant amended its name to Red Shield Auto Administration Inc. in the

State of Oregon on January 30, 2018. (A true copy of a print-out from the

Oregon Secretary of State’s Business Registry Database is attached as Exhibit

5).

d. On information and belief Defendant also applied to amend its name to Red

Shield Auto Administration Inc. in the State of Oregon with the Oregon

Department of Financial Regulation.

e. Defendant’s Better Business Bureau listing identifies Oregon as a state in which

Defendant offers its services. (A true copy a screen capture from the Better

Business Bureau’s Accredited Business Profile is attached as Exhibit 6).

f. Plaintiff has received inquiries about Defendant’s new business name from

financial regulators in Oregon.

g. On information and belief, Defendant controls the website at

www.redshieldprotection.com through which it advertises its RED SHIELD

branded protection plans to consumers in Oregon.

h. Plaintiff has received complaints at its office in Oregon from financial

regulators in California about Defendant. (A true copy letter sent to Red

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 5
Case 3:18-cv-01159-AC Document 1 Filed 06/29/18 Page 6 of 17

Shield Insurance Company from the State of California Department of

Insurance is attached as Exhibit 7).

i. Plaintiff has received complaints at its office in Oregon about Defendant from

consumers. (As an example, a true copy of a thread of email correspondence

with Rhonda Rankin and Mary Bertram of Red Shield Insurance Company

and Bianca Machado and Carlos Diaz is attached as Exhibit 8).

DEFENDANT’S INFRINGEMENT

20. Defendant, Red Shield Administration, Inc., had been known prior to 2018 as Red

Auto Administration, Inc.

21. Defendant applied to do business in Oregon as Red Auto Administration, Inc., on

February 5, 2015. (Exhibit 4).

22. Defendant also registered on April 3, 2015, with the Oregon Division of Financial

Regulation to conduct business in Oregon as an Obligor under the name Red Auto

Administration, Inc. Exhibit 9 hereto is a true copy of the Registered Entity Listing from the

Oregon Department of Consumer & Business Services database showing that registration.

23. But, Defendant changed its name this year to Red Shield Administration, Inc.

24. Defendant changed its name and began doing business in 2018 in Oregon as Red

Shield Administration. Exhibit 10 hereto is a true copy of an “Application for

Amendment/Withdrawal” filed by Defendant to change its name to Red Shield Administration,

Inc. with the Oregon Secretary of State.

25. On information and belief, Defendant also applied to change its name to Red

Shield Administration, Inc. in 2018 with the Oregon Division of Financial Regulation.

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 6
Case 3:18-cv-01159-AC Document 1 Filed 06/29/18 Page 7 of 17

26. On information and belief, Defendant’s application to change its name to Red

Shield Administration, Inc. with the Oregon Division of Financial Regulation has been referred

by the Oregon Division of Financial Regulation to the Oregon Department of Justice.

27. On information and belief, Defendant’s application to change its name to Red

Shield Administration, Inc. with the Oregon Division of Financial Regulation was referred by the

Oregon Division of Financial Regulation to the Oregon Department of Justice because the

Oregon Division of Financial Regulation believed that the proposed name change could “cause

an issue with consumers.”

28. In 2018, Defendant began offering protection plan services in Oregon under the

trademarks RED SHIELD PROTECTION PLANS and RED SHIELD.

29. Defendant advertises its service through the website corresponding to the domain

name redshieldprotection.com. That website is available to consumers in Oregon.

30. Defendant offers to consumers of its products branded with RED SHIELD the

promise to compensate them in the event of a covered loss in exchange for the customer’s

payment to Defendant.

31. Defendant offers to consumers insurance under the trademark RED SHIELD.

32. Defendant compares its RED SHIELD branded service contracts to insurance.

33. Defendant states at http://redshieldprotection.com/why-red-shield/how-to-file-a-

claim/ that: “Just like with health insurance or other types of insurance, [claims] cannot be filed

by you directly.”

34. As part of its RED SHIELD branded service contract, Defendant provides to

consumers emergency roadside assistance, towing, and rental car reimbursement.

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 7
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35. Plaintiff and Defendant offer to consumers highly related services under the same

trademark.

36. Consumers of Defendant’s RED SHIELD branded services have been actually

confused between Plaintiff and Defendant.

37. One consumer, who identified himself as an attorney, even threatened a lawsuit

and threatened to report Plaintiff to the Massachusetts’s Attorney General. Exhibit 8.

38. The State of California Department of Insurance sent Plaintiff a complaint about

Defendant because it was confused by the two groups’ use of RED SHIELD. Exhibit 7.

39. Plaintiff has received telephone calls from consumers believed to be consumers of

Defendant attempting to file their claims or check on their claims with Defendant.

40. Plaintiff has received a telephone call from a consumer in Independence, Oregon,

referencing contract number RAD300019020 who was upset because Defendant denied his

claim.

41. On information and belief contract number RAD300019020 is a contract

administered by Defendant.

42. Plaintiff has received an email inquiry from a confused customer indicating his

contract number is RAD300019418.

43. On information and belief contract number RAD300019418 is a contract

administered by Defendant for its customer Mr. Huereca.

44. Plaintiff has received an email inquiry from a confused customer indicating his

contract number is 9167009355.

45. On information and belief contract number 9167009355 is a contract administered

by Defendant for its customer Mr. Vishwakarma.

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 8
Case 3:18-cv-01159-AC Document 1 Filed 06/29/18 Page 9 of 17

46. Plaintiff has received an email inquiry from a confused customer indicating his

contract number is 9953195222.

47. On information and belief contract number is 9953195222 is a contract

administered by Defendant for its customer Mr. Garg.

48. Plaintiff has also received an email inquiry from Rusnak/Pasadena Porsche on

behalf of an apparent customer of Defendant indicating the customer’s authorization number is

C000005499DT.

49. On information and belief authorization number C000005499DT is an

authorization issued by Defendant to a Ms. Cristi.

50. Plaintiff wrote to Defendant on April 19, 2018, asking it to stop using RED

SHIELD and explaining that consumers were being confused.

51. Defendant responded on May 2, 2018, refusing to stop using RED SHIELD.

52. Plaintiff wrote again on June 8, 2018, demanding that Defendant stop using RED

SHIELD and providing copies to Defendant of evidence of actual confusion.

53. Defendant has not responded to Plaintiff’s request of June 8, 2018.

54. Defendant’s use of RED SHIELD causes irreparable damage to Plaintiff at least

in that the goodwill in Plaintiff’s family of RED SHIELD trademarks is being diminished.

55. Despite being aware of RED SHIELD’s federally registered RED SHIELD

trademarks and being provided with evidence of confusion, Defendant has continued to use RED

SHIELD.

56. Defendant’s continued use of RED SHIELD is likely to cause further damage to

Plaintiff’s goodwill in its trademark and lost sales due to confused consumers.

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 9
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57. Defendant’s continued use of RED SHIELD despite its awareness of Plaintiff’s

Federal Registrations and that it is causing confusion is extraordinary.

CLAIM ONE

FEDERAL TRADEMARK INFRINGEMENT THROUGH USE OF RED SHIELD

58. Plaintiff repeats and realleges each and every allegation contained in the above

paragraphs of this Complaint as though fully set forth herein.

59. Federal Law prohibits the “use in commerce [of] any reproduction, counterfeit,

copy, or colorable imitation of a registered mark in connection with the sale, offering for sale,

distribution, or advertising of any goods or services on or in connection with which such use is

likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1)(a).

60. Defendant uses RED SHIELD in connection with the sale, offering for sale,

distribution, or advertising of vehicle protection plans, effectively insurance, in commerce.

61. RED SHIELD is identical to Plaintiff’s registered trademark RED SHIELD.

62. Defendant’s use of RED SHIELD causes irreparable damage to Plaintiff at least

in that the goodwill in Plaintiff’s family of RED SHIELD marks is diminished.

63. Despite being aware of RED SHIELD’s federally registered RED SHIELD

trademarks and being provided with evidence of confusion, Defendant has continued to use RED

SHIELD.

64. Defendant’s continued use of RED SHIELD is likely to cause further damage to

Plaintiff’s goodwill in its trademarks and lost sales due to confused consumers.

65. Defendant’s continued use of RED SHIELD despite its awareness of Plaintiff’s

Federal Registrations and that it is causing confusion is extraordinary.

66. Defendant’s use of RED SHIELD infringes Plaintiff’s trademark rights in its

registered RED SHIELD trademarks and violates 15 U.S.C. § 1114(1)(a).
COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 10
Case 3:18-cv-01159-AC Document 1 Filed 06/29/18 Page 11 of 17

CLAIM TWO

FEDERAL TRADEMARK INFRINGEMENT
THROUGH USE OF RED SHIELD PROTECTION PLANS

67. Plaintiff repeats and realleges each and every allegation contained in the above

paragraphs of this Complaint as though fully set forth herein.

68. Federal Law prohibits the “use in commerce [of] any reproduction, counterfeit,

copy, or colorable imitation of a registered mark in connection with the sale, offering for sale,

distribution, or advertising of any goods or services on or in connection with which such use is

likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1)(a).

69. RED SHIELD is the dominant portion of RED SHIELD PROTECTION PLANS.

70. RED SHIELD PROTECTION PLANS is a colorable imitation of RED SHIELD.

71. Defendant’s use of RED SHIELD PROTECTION PLANS causes irreparable

damage to Plaintiff at least in that the goodwill in Plaintiff’s family of RED SHIELD trademarks

is diminished.

72. Despite being aware of Plaintiff’s federally registered RED SHIELD trademarks

and being provided with evidence of confusion, Defendant has continued to use RED SHIELD

PROTECTION PLANS.

73. Defendant’s continued use of RED SHIELD PROTECTION PLANS is likely to

cause further damage to Plaintiff’s goodwill in its trademarks and lost sales due to confused

consumers.

74. Defendant’s continued to use of RED SHIELD PROTECTION PLANS despite its

awareness of Plaintiff’s Federal Registrations and that it is causing confusion is extraordinary.

75. Defendant’s use of RED SHIELD PROTECTION PLANS violates Plaintiff’s

rights in its registered RED SHIELD trademarks and 15 U.S.C. § 1114(1)(a).

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 11
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CLAIM THREE

FEDERAL UNFAIR COMPETITION
THROUGH USE OF RED SHIELD PROTECTION PLANS

76. Plaintiff repeats and realleges each and every allegation contained in the above

paragraphs of this Complaint as though fully set forth herein

77. Federal Law prohibits the use in commerce in connection with any goods or

services “any word, term, name, symbol, or device, or any combination thereof, or any false

designation of origin, false or misleading description of fact, or false or misleading

representation of fact, which— (A) is likely to cause confusion, or to cause mistake, or to

deceive as to the affiliation, connection, or association of such person with another person, or as

to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by

another person ….” 15 U.S.C. § 1125(a).

78. RED SHIELD is the dominant portion of RED SHIELD PROTECTION PLANS.

79. Defendant’s use of RED SHIELD PROTECTION PLANS is likely to cause

confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of

Defendant with Plaintiff.

80. Defendant’s use of RED SHIELD PROTECTION PLANS causes irreparable

damage to Plaintiff at least in that the goodwill in Plaintiff’s family of RED SHIELD trademarks

is being diminished.

81. Despite being aware of Plaintiff’s federally registered RED SHIELD trademarks

and being provided with evidence of confusion, Defendant has continued to use RED SHIELD

PROTECTION PLANS.

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 12
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82. Defendant’s continued use of RED SHIELD PROTECTION PLANS is likely to

cause further damage to Plaintiff’s goodwill in its trademarks and lost sales due to confused

consumers.

83. Defendant’s continued to use of RED SHIELD PROTECTION PLANS despite its

awareness of Plaintiff’s Federal Registrations and that it is causing confusion is extraordinary.

CLAIM FOUR

FEDERAL UNFAIR COMPETITION THROUGH USE OF RED SHIELD

84. Plaintiff repeats and realleges each and every allegation contained in the above

paragraphs of this Complaint as though fully set forth herein

85. Federal Law prohibits the use in commerce in connection with any goods or

services “any word, term, name, symbol, or device, or any combination thereof, or any false

designation of origin, false or misleading description of fact, or false or misleading

representation of fact, which— (A) is likely to cause confusion, or to cause mistake, or to

deceive as to the affiliation, connection, or association of such person with another person, or as

to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by

another person ….” 15 U.S.C. § 1125(a).

86. Defendant’s use of RED SHIELD causes irreparable damage to Plaintiff at least

in that the goodwill in Plaintiff’s family of RED SHIELD trademarks is being diminished.

87. Despite being aware of Plaintiff’s federally registered RED SHIELD trademarks

and being provided with evidence of confusion, Defendant has continued to use RED SHIELD.

88. Defendant’s continued use of RED SHIELD is likely to cause further damage to

Plaintiff’s goodwill in its trademarks and lost sales due to confused consumers.

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 13
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89. Defendant’s continued use of RED SHIELD despite its awareness of Plaintiff’s

Federal Registrations and that it is causing confusion is extraordinary.

CLAIM FIVE

OREGON STATE TRADEMARK INFRINGEMENT
THROUGH USE OF RED SHIELD PROTECTION PLANS

90. Plaintiff repeats and realleges each and every allegation contained in the above

paragraphs of this Complaint as though fully set forth herein.

91. RED SHIELD is the dominant portion of RED SHIELD PROTECTION PLANS.

92. Defendant’s use of RED SHIELD PROTECTION PLANS is likely to cause

confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of

Defendant with Plaintiff.

93. Defendant’s use of RED SHIELD PROTECTION PLANS causes irreparable

damage to Plaintiff at least in that the goodwill in Plaintiff’s family of RED SHIELD marks is

diminished.

94. Despite being aware of Plaintiff’s federally registered RED SHIELD trademarks

and being provided with evidence of confusion, Defendant has continued to use RED SHIELD

PROTECTION PLANS.

95. Defendant’s continued use of RED SHIELD PROTECTION PLANS is likely to

cause further damage to Plaintiff’s goodwill in its trademark and lost sales due to confused

consumers.

96. Defendant’s continued use of RED SHIELD PROTECTION PLANS despite its

awareness of Plaintiff’s trademarks and that it is causing confusion is extraordinary.

97. The acts of Defendant constitute trademark infringement in violation Oregon

common law.

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 14
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CLAIM SIX

OREGON STATE TRADEMARK INFRINGEMENT THROUGH USE OF RED SHIELD

98. Plaintiff repeats and realleges each and every allegation contained in the above

paragraphs of this Complaint as though fully set forth herein.

99. Defendant’s use of RED SHIELD causes irreparable damage to Plaintiff at least

in that the goodwill in Plaintiff’s family of RED SHIELD trademarks is being diminished.

100. Despite being aware of Plaintiff’s RED SHIELD trademarks and being provided

with evidence of confusion, Defendant has continued to use RED SHIELD.

101. Defendant’s continued use of RED SHIELD is likely to cause further damage to

Plaintiff’s goodwill in its trademark and lost sales due to confused consumers.

102. Defendant’s continued use of RED SHIELD despite its awareness of Plaintiff’s

trademarks and that it is causing confusion is extraordinary.

103. The acts of Defendant constitute trademark infringement in violation Oregon

common law.

DEMAND FOR JURY TRIAL

104. Pursuant to Fed. R. Civ. P. 38(b), Plaintiff requests a trial by jury on all issues

properly triable by a jury.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff prays for the following relief:

A. The Court find that Plaintiff owns valid and subsisting rights in each of the

RED SHIELD family of trademarks.

B. Defendant be held liable under each claim set forth in this Complaint;

C. Defendant’s trademark infringement be found exceptional;

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 15
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D. The Court grant a permanent injunction against Defendant enjoining it and

its agents, servants, employees, attorneys, and all other persons in active

concert or participation with it (including subsidiaries and affiliates) from

using RED SHIELD (however spelled or punctuated, whether capitalized,

abbreviated, singular or plural, printed of stylized, whether alone or with

any other word(s), punctuation or symbol(s), and whether used in caption,

text, orally, or otherwise), or any other reproduction, counterfeit, copy,

colorable imitation, or confusingly similar variation of the RED SHIELD

trademark as a trademark or service trademark, trade name, business

name, domain name, or in advertising, distribution, sale, or offering for

sale of any financial product or service including insurance, warranties,

service contracts, and vehicle protection plans and from doing any other

act that would likely cause confusion that Plaintiff is the source or, or

sponsor of, Defendant’s goods, services, business, or commercial

activities;

E. The Court Order as part of the injunction and pursuant to 15 U.S.C.

§ 1116(a) that Defendant file with the Court and serve on Plaintiff within

30 days after service on the Defendant of the injunction, a report in writing

under oath setting forth in detail the manner and form in which Defendant

has complied with the injunction;

F. Defendant be required to pay to Plaintiff compensatory damages as a

result of Defendant’s actions, together with interest and costs, including

enhanced damages, pursuant to at least 15 U.S.C. § 1117(a)-(d);

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 16
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G. Defendant be required to pay to Plaintiff profits made in connection with

its use of the RED SHIELD trademark, pursuant to 15 U.S.C. 1117 and

the equity powers of this Court.

H. Defendant be required to pay Plaintiff damages in an amount to be

determined at trial to allow Plaintiff to make corrective advertising;

I. Defendant be required to transfer the domain name

www.redshieldprotection.com to Plaintiff along with any other domain

name that includes the words “red” and “shield”;

J. Defendant be required to pay Plaintiff its costs, disbursements, and

reasonable attorneys’ fees incurred in this action, together with interest,

including prejudgment interest, pursuant at least to 15 U.S.C. § 1117(a),

and the equity powers of this Court; and

K. Such other and further relief as may be deemed just and appropriate.

Respectfully submitted,

Dated: June 29, 2018 By: s/Kevin M. Hayes
Kevin M. Hayes, OSB #012801
Email: kevin.hayes@klarquist.com
Jeffrey S. Love, OSB #873987
Email: jeffrey.love@klarquist.com

KLARQUIST SPARKMAN, LLP

Attorneys for Plaintiff
RED SHIELD INSURANCE COMPANY

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND UNFAIR COMPETITION 17