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Case 1:11-cv-12013 Document 1

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS Sun Life Assurance Company of Canada Plaintiff, v. Sun Bancorp, Inc. and Sun Financial Services, LLC Defendants. COMPLAINT AND DEMAND FOR A JURY TRIAL Sun Life Assurance Company of Canada (“Plaintiff”) brings this civil action against Sun Bancorp, Inc. and Sun Financial Services, LLC (collectively, “Defendant”) and alleges as follows: THE PARTIES 1. Plaintiff is a Canadian corporation duly organized and existing under the laws of

Canada, having its principal place of business at 150 King Street West, Suite 1400, Toronto, Ontario, M5H 1J9, Canada. 2. Plaintiff, through its subsidiaries and/or affiliated companies, conducts business in

and has customers in Massachusetts and in this District. 3. Upon information and belief, Defendant is a New Jersey corporation organized

under the laws of New Jersey with its principal place of business at 226 Landis Avenue, Vineland, New Jersey, 08360. Upon information and belief, Defendant conducts business in and has customers in Massachusetts and in this District.

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NATURE OF ACTION 4. In this action, Plaintiff’s primary claims against Defendant are for trademark

infringement in violation of 15 U.S.C. § 1114 et seq., false designation of origin and unfair competition arising under the Lanham Act, 15 U.S.C. § 1125(a), federal dilution arising under 15 U.S.C. § 1125(c), and rights under the common law. 5. This action arises out of Defendant’s insurance and financial services business

offered under SUN FINANCIAL SERVICES for services identical to or related to those offered by Plaintiff under Plaintiff’s SUN Marks as defined herein, Defendant’s use of Sun Financial Services, LLC as a trade name, and Defendant’s U.S. Trademark Application for the mark SUN WEALTH MANAGEMENT. Defendant’s activities compete unfairly and are likely to cause confusion, if they have not already, with Plaintiff and its previously acquired and current marks. JURISDICTION AND VENUE 6. This Court has jurisdiction pursuant to 15 U.S.C. §§ 1119, 1121, 1125 and 28

U.S.C. §§ 1331, 1338. 7. 8. Venue is proper in this district pursuant to 28 U.S.C. § 1391. This Court has subject matter jurisdiction over Defendant. PLAINTIFF AND ITS TRADEMARKS 9. 10. Plaintiff is a wholly-owned subsidiary of Sun Life Financial Inc. Plaintiff, its affiliates, and its joint ventures (“Sun Life Financial Group”)

comprise a leading international financial services organization providing a diverse range of protection and wealth accumulation products and services to individuals and corporate customers in the United States and in key markets worldwide, including the United Kingdom, Hong Kong, the Philippines, Indonesia, India, China, and Bermuda. Sun Life Financial Group has operations

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in markets worldwide, including Canada and the United States. Sun Life Financial Group’s use of trademarks containing the term SUN in connection with financial and insurance services has been continuous for over one hundred (100) years. As of June 30, 2011, the Sun Life Financial Group had total assets under management of $474 billion. 11. Plaintiff and/or its affiliates have used the name and mark SUN LIFE

continuously in the United States since at least 1895 in connection with insurance and financial services and related products and services. 12. Plaintiff and/or its affiliates commonly use SUN LIFE and/or SUN LIFE

FINANCIAL to advertise their services in the United States. 13. As a result of its extensive and continuous use and promotion of SUN in

connection with financial services, Plaintiff has acquired valuable common law rights to a family of marks containing the term SUN for financial services. 14. Plaintiff also owns a number of United States trademark registrations for SUN-

containing marks, most of which have become incontestable under the provisions of 15 U.S.C. § 1065. Plaintiff’s SUN-containing marks, along with associated goodwill, include at least the following (“Plaintiff’s SUN Marks”):
REG. NO.
2760810

MARK
SUN LIFE

REG. DATE
September 9, 2003

SERVICES
036- insurance and financial services, namely, financial investment in the field of securities; financial management services; underwriting, issuing, and administration of annuities and life, health, and disability insurance; mutual fund investment services; underwriting and administration of 401 (k) and pension plans; investment consulting services

EXHIBIT
Exhibit A

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2667674

December 31, 2002

2520934

SUN LIFE FINANCIAL

December 18, 2001

036 - financial investment and management services; underwriting, issuing, and administration of annuities and life, health, and disability insurance; mutual fund investment services; underwriting and administration of 401(K) and pension plans; investment consulting and advisory services 036 – insurance and financial services, namely, financial investment in the field of securities and real estate; financial management services; underwriting, issuing, and administration of annuities and life, health, and disability insurance; mutual fund investment services; underwriting and administration of 401(k) and pension plans; investment consulting services

Exhibit B

Exhibit C

15.

In addition to these registrations, Plaintiff also owns registrations and rights at

common law for at least the following marks used in connection with financial services, each containing the term SUN:
REG. NO.
3146216

MARK
SUN LIFE FINANCIAL MASTERS SUN CAPITAL

REG. DATE
September 9, 2006 December 3, 2002

SERVICES
036 - underwriting and issuing annuities, and investment consulting services 042- investment management advisory services; mutual fund investment services; underwriting, issuing, and administration of life insurance and annuities; and administration of 401(k) plans. 036- financial services, namely, underwriting, issuing and administration of life insurance. 036- Underwriting, issuing and administration of annuities.

EXHIBIT
Exhibit D

2656217

Exhibit E

4007010

SUN ACCUMULATOR SUN INCOME RISER

August 2, 2011

Exhibit F

3854703

September 28, 2010

Exhibit G

16.

In view of Plaintiff’s and/or its affiliates’ long-standing use, substantial sales, and

wide-spread marketing and promotional efforts of SUN LIFE alone or as part of a formative,

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Plaintiff’s SUN Marks have become famous and distinctive, being associated exclusively with services provided by or authorized by Plaintiff. 17. Since Plaintiff’s adoption of SUN in the United States in 1895, sales of services in

connection with Plaintiff’s SUN Marks has been extensive and continuous and has amounted to billions of dollars in the United States. 18. Plaintiff’s SUN Marks are widely recognized by the general consuming public in

the United States as a designation of the source of Plaintiff’s services. 19. Upon information and belief, each of Plaintiff’s SUN Marks was adopted, used

and established as a trademark by Plaintiff and/or its affiliates prior to any use of SUN FINANCIAL SERVICES by Defendant. THE DEFENDANT 20. Upon information and belief, Defendant is a New Jersey corporation organized

under the laws of New Jersey with its principal place of business at 226 Landis Avenue, Vineland, New Jersey, 08360. 21. Upon information and belief, Defendant advertises and sells investment and

insurance products and services under the trademark and trade name SUN FINANCIAL SERVICES. 22. Upon information and belief, Defendant also advertises and sells financial

products and services under the trademark and trade name SUN NATIONAL BANK and uses the trade name SUN BANCORP. 23. Upon information and belief, Defendant also uses the internet to promote sales of

its services under SUN NATIONAL BANK, SUN FINANCIAL SERVICES and SUN HOME LOANS, including through its website.

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24.

Upon information and belief, Defendant filed with the United States Patent and

Trademark Office a trademark application to register the mark SUN WEALTH MANAGEMENT on February 5, 2009, which was assigned Serial No. 77/664229. The application is pending for the following services: “promotion of financial and insurance services of others in areas of life, health, disability, long-term care, property and casualty and business and income protection insurance; business management and planning services; business services, namely, identification of lending sources and business succession planning services; tax planning services” and for “financial services, namely, estate planning services, financial planning services, retirement planning, investment consultation and investment of funds for others; administration of employee benefit plans concerning insurance and finance; valuation of businesses and real estate.” Plaintiff opposed Serial No. 77/664229 at the Trademark Trial and Appeal Board, which was assigned Opposition No. 91193599. 25. Defendant’s conduct affects intrastate and interstate commerce. COUNT I FEDERAL TRADEMARK INFRINGEMENT (15 U.S.C. § 1114) 26. The allegations of Paragraphs 1 through 25 above are restated and realleged by

reference as though set forth in full herein. 27. Marks. 28. Without authorization from Plaintiff, upon information and belief, Defendant has Plaintiff is the rightful owner of each of the marks comprising Plaintiff’s SUN

used and continues to use SUN FINANCIAL SERVICES, which are substantially similar to Plaintiff’s SUN Marks, in connection with financial and insurance services as a trade name and as a trademark. The services offered by Defendant in connection with SUN FINANCIAL

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SERVICES are substantially similar or related to those services offered and sold by Plaintiff and/or its affiliates under Plaintiff’s SUN Marks. 29. Defendant’s use of the mark SUN FINANCIAL SERVICES as a trademark

and/or as a trade name may lead consumers in relevant markets to believe that Defendant’s business is related to or associated with Plaintiff or a member of the Sun Life Financial Group. 30. Defendant’s use of a mark which is confusingly similar to any one of the marks

comprising Plaintiff’s SUN Marks constitutes a reproduction, copying, counterfeiting, and colorable imitation of Plaintiff’s SUN Marks in a manner that is likely to cause confusion, mistake, or is likely to deceive consumers. 31. By using a mark that is likely to cause confusion, mistake and/or deception as to

source, sponsorship or affiliation, Defendant’s past, present and ongoing actions constitute trademark infringement of Plaintiff’s rights, subjecting Defendant to liability under 15 U.S.C. § 1114. 32. Upon information and belief, such use by Defendant is willful and with the intent

to trade off the goodwill established by Plaintiff in Plaintiff’s SUN Marks. 33. Unless stopped by an injunction, Defendant’s behavior will continue and will

cause Plaintiff to suffer irreparable harm for which there is no adequate remedy at law. Therefore, Plaintiff is entitled to injunctive relief. 34. Defendant’s infringing actions have damaged Plaintiff. Therefore, Plaintiff is

entitled to damages for the infringement in an amount to be determined at trial.

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COUNT II UNFAIR COMPETITION LANHAM ACT, 15 U.S.C. § 1125(a)

35.

The allegations of Paragraphs 1 through 34 above are restated and realleged by

reference as though set forth in full herein. 36. Plaintiff’s SUN Marks, as used in connection with financial and insurance

services, are distinctive, known for their quality, and have become associated with Plaintiff through the continuous, extensive and widespread use of these marks by Plaintiff and/or its affiliates. As a result, Plaintiff’s SUN Marks identify Plaintiff and its services and associated products. 37. Plaintiff’s SUN Marks are recognized for their quality services and related

products as identified in its registrations and under common law, including but not limited to, financial and insurance services. 38. Upon information and belief, Defendant provides its services to a similar class of

consumers as Plaintiff and/or its affiliates. 39. Defendant’s use of a trademark or trade name that is confusingly similar to any

one of Plaintiff’s SUN Marks has the effect of associating Defendant with Plaintiff in the minds of the purchasing public and of trading off of the goodwill acquired by Plaintiff in Plaintiff’s SUN Marks. 40. Defendant’s actions are likely to cause confusion, mistake, or to deceive

consumers as to the affiliation, connection, or association of Defendant with Plaintiff, or to cause confusion, mistake, or to deceive consumers as to the origin, sponsorship or approval of Defendant’s services by Plaintiff, entitling Plaintiff to relief under 15 U.S.C.§ 1125(a).

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41.

Upon information and belief, Defendant’s actions have been knowing, deliberate,

willful, and intended to cause mistake or deceive, and in disregard of Plaintiff’s rights. 42. Defendant’s use of SUN FINANCIAL SERVICES as a trademark and a trade

name constitutes unfair competition in violation of the Lanham Act, 15 U.S.C.§ 1125(a). 43. Unless stopped by an injunction, Defendant’s behavior will continue and will

cause Plaintiff to suffer irreparable harm for which there is no adequate remedy at law. Therefore, Plaintiff is entitled to injunctive relief. 44. Plaintiff is also entitled to damages for such conduct in an amount to be

determined at trial. COUNT III FALSE DESIGNATION OF ORIGIN LANHAM ACT, 15 U.S.C. § 1125(a) 45. The allegations of Paragraphs 1 through 44 above are restated and realleged by

reference as though set forth in full herein. 46. Defendant’s use in commerce of SUN FINANCIAL SERVICES, a mark that is

confusingly similar to any one of Plaintiff’s SUN Marks, as a trade name or a trademark for financial and insurance services constitutes a false designation of origin by creating the appearance that Defendant’s services are those of Plaintiff’s when in fact, they are not. 47. By its above-described conduct, Defendant has engaged in false designation of

origin and false designation of sponsorship, each in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). 48. Upon information and belief, Defendant’s actions have been knowing, deliberate,

willful, and intended to cause mistake or deceive, and in disregard of Plaintiff’s rights.

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49.

Unless stopped by an injunction, Defendant’s behavior will continue and will

cause Plaintiff to suffer irreparable harm for which there is no adequate remedy at law. Therefore, Plaintiff is entitled to injunctive relief. 50. Plaintiff is also entitled to damages for such false designation of origin by

Defendant in an amount to be determined at trial. COUNT IV COMMON LAW UNFAIR COMPETITION 51. The allegations of Paragraphs 1 through 50 above are restated and realleged by

reference as though set forth in full herein. 52. Plaintiff has established valuable goodwill in each of the marks comprising

Plaintiff’s SUN Marks. 53. In addition to its rights under the Lanham Act, Plaintiff has valid common law

rights in Plaintiff’s SUN Marks in connection with financial and insurance services and any related products. 54. Defendant’s use in commerce of SUN FINANCIAL SERVICES as a trademark

and trade name is in violation and derogation of Plaintiff’s common law rights in Plaintiff’s SUN Marks and is likely to cause confusion, mistake, or to deceive the consuming public as to the affiliation, connection or association of Defendant with Plaintiff, or as to the origin, sponsorship, or approval by Plaintiff of Defendant’s services. 55. Upon information and belief, Defendant knew, or in the exercise of reasonable

care, should have known that its conduct was likely to mislead the public. 56. Upon information and belief, Defendant’s actions have been knowing, deliberate,

willful, and intended to cause mistake or deceive, and in disregard of Plaintiff’s rights.

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57.

Unless stopped by an injunction, Defendant’s behavior will continue and will

cause Plaintiff to suffer irreparable harm for which there is no adequate remedy at law. Therefore, Plaintiff is entitled to injunctive relief. 58. Plaintiff has been or will be damaged by such conduct in an amount to be

determined at trial. COUNT V FEDERAL DILUTION, 15 U.S.C. § 1125(c) 59. The allegations of Paragraphs 1 through 58 above are restated and realleged by

this reference as though set forth in full herein. 60. 61. Plaintiff has established valuable goodwill in Plaintiff’s SUN Marks. Each of Plaintiff’s SUN Marks is distinctive and became famous long prior to

Defendant’s use of SUN FINANCIAL SERVICES for financial and insurance services, which are substantially similar or related to the services offered by Plaintiff and/or its affiliates under each of Plaintiff’s SUN Marks. 62. Defendant’s use of SUN FINANCIAL SERVICES is likely to cause dilution by

blurring and dilution by tarnishment of each of Plaintiff’s SUN Marks. 63. Upon information and belief, Defendant’s actions have been knowing, deliberate,

willful, and intended to cause mistake or deceive, and in disregard of Plaintiff’s rights. 64. Unless stopped by an injunction, Defendant’s behavior will continue and will

cause Plaintiff to suffer irreparable harm for which there is no adequate remedy at law. Therefore, Plaintiff is entitled to injunctive relief. 65. Plaintiff has been or will be damaged by Defendant’s dilution in an amount to be

determined at trial.

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COUNT VI OPPOSITION TO FEDERAL REGISTRATION, 15 U.S.C. § 1063

66.

The allegations of Paragraphs 1 through 65 above are restated and realleged by

reference as though set forth in full herein. 67. Marks. 68. Plaintiff and/or its affiliates have been using the term SUN in connection with its Plaintiff is the rightful owner of each of the marks comprising Plaintiff’s SUN

financial and insurance services in the United States since at least as early as 1895. In addition to Plaintiff’s SUN Marks, Plaintiff has a number of other registrations for marks containing the term SUN as referenced in Paragraph 15 herein. As a result of Plaintiff’s and/or its affiliates’ extensive and continuous use of the term SUN for financial and insurance services, Plaintiff’s SUN Marks and the marks referenced in Paragraph 15 herein have become recognized source identifiers of Plaintiff and its services. 69. Without authorization from Plaintiff, Defendant filed an application to register the

mark SUN WEALTH MANAGEMENT on February 5, 2009, which was assigned U.S. Serial No. 77/664229 (“Defendant’s SUN WEALTH MANAGEMENT Application”). 70. Defendant’s SUN WEALTH MANAGEMENT Application recites the following services: “promotion of financial and insurance services of others in areas of life, health, disability, long-term care, property and casualty and business and income protection insurance; business management and planning services; business services, namely, identification of lending sources and business succession planning services; tax planning services” and for “financial services, namely, estate planning services, financial planning services, retirement planning, investment consultation and investment of funds for others; administration of employee benefit

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plans concerning insurance and finance; valuation of businesses and real estate.” These services are identical to or related to those services offered and sold by Plaintiff and/or its affiliates under Plaintiff’s SUN Marks. 71. Defendant’s SUN WEALTH MANAGEMENT mark is similar in appearance,

sound, and commercial impression to each of Plaintiff’s SUN Marks. 72. Defendant’s SUN WEALTH MANAGEMENT mark may lead consumers in

relevant markets to believe that Defendant’s services are related to or associated with Plaintiff or a member of the Sun Life Financial Group. 73. Defendant’s mark SUN WEALTH MANAGEMENT, a mark which is

confusingly similar to any one of the marks comprising Plaintiff’s SUN Marks, constitutes a reproduction, copying, counterfeiting, and colorable imitation of Plaintiff’s SUN Marks in a manner that is likely to cause confusion, mistake, or is likely to deceive consumers. 74. By applying for a mark that is likely to cause confusion, mistake and/or deception

as to source, sponsorship or affiliation, Defendant’s past, present and ongoing actions constitute trademark infringement of Plaintiff’s rights, subjecting Defendant to an opposition to registration under 15 U.S.C. § 1063. Therefore, Plaintiff’s Opposition No. 91193599 should be sustained in favor of the Plaintiff and Defendant’s SUN WEALTH MANAGEMENT Application should not be allowed to register.

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RELIEF REQUESTED WHEREFORE, Plaintiff prays for the following relief: A. B. The Court has jurisdiction over the parties and subject matter of this action; Each of Plaintiff’s SUN Marks asserted herein are valid and subsisting and are

being infringed by Defendant; C. Defendant, as well as all its agents, representatives, employees, assigns and all

persons acting in concert or privity with them, is permanently enjoined from maintaining, using, disseminating, reproducing, promoting, distributing or otherwise using the mark SUN FINANCIAL SERVICES, or any mark confusingly similar thereto, as all or part of any mark , design, or trade name; D. Defendant, as well as all its agents, representatives, employees, assigns and all

persons acting in concert or privity with them, is permanently enjoined from filing a state or federal trademark application for SUN FINANCIAL SERVICES; E. Defendant, as well as all its agents, representatives, employees, assigns and all

persons acting in concert or privity with them, is permanently enjoined from using SUN FINANCIAL SERVICES in association with financial and insurance services; F. An award of damages, including interest, sustained by Plaintiff as a result of the

wrongful acts of Defendant; Defendant’s actions have been knowing, deliberate, willful, and intended to cause mistake or deceive, and in disregard of Plaintiff’s rights; G. Defendant shall pay to Plaintiff any damages attributable to its infringement of

Plaintiff’s SUN Marks and Defendant shall account for all gains, profits, and advantages derived through said infringement, and such damages authorized by law, including 15 U.S.C. § 1117, including an accounting for any period not directly covered by a verdict in Plaintiff’s favor;

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H.

An increase and/or trebling of damages pursuant to 15 U.S.C. § 1117(a), or any

other applicable or statutory or common law basis; I. An award of reasonable costs and attorneys’ fees pursuant to 15 U.S.C. § 1117, or

any other applicable or statutory or common law basis; J. Defendant shall deliver to Plaintiff or to the Court for destruction all materials

bearing SUN FINANCIAL SERVICES; K. L. Defendant shall cease all use of SUN FINANCIAL SERVICES on its website; Defendant shall cease all use of SUN FINANCIAL SERVICES as a trade name

and/or corporate name; M. Defendant shall file and serve a report in writing, and under oath, setting forth the

manner and form in which it has complied with the Court’s order and injunction; N. Defendant’s U.S. Trademark Application No. 77/664229, filed on February 5,

2009 for the mark SUN WEALTH MANAGEMENT, shall not be allowed to register. O. Such other and further relief as the Court may deem proper and just.

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JURY DEMAND Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff demands a trial by jury of all issues so triable. Sun Life Assurance Company of Canada By its attorneys,

_/s/ Michael A. Albert____________ Michael A. Albert (MA BBO #558566) michael.albert@wolfgreenfield.com Christina M. Licursi (MA BBO #671737) christina.licursi@wolfgreenfield.com WOLF, GREENFIELD & SACKS, P.C. 600 Atlantic Avenue Boston, Massachusetts 02210 Phone: 617.646.8000 Fax: 617.646.8646

Dated: November 14, 2011

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