Professional Documents
Culture Documents
PORTLAND DIVISION
Defendant.
Plaintiff Red Shield Insurance Company (“Red Shield Insurance Company” or Plaintiff),
SUMMARY
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
4. Plaintiff has achieved an “A” (Excellent) Rating from A.M. Best for its financial
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
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.”
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
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
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
registered office at 5350 College Blvd., Overland Park, Kansas 66211 and a registered agent at
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
15. Plaintiff’s use of RED SHIELD for its services has caused the trademark RED
16. Plaintiff also owns the following Federal Trademark Registrations for its family
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.
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
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:
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.
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
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
Defendant offers its services. (A true copy a screen capture from the Better
f. Plaintiff has received inquiries about Defendant’s new business name from
i. Plaintiff has received complaints at its office in Oregon about Defendant from
with Rhonda Rankin and Mary Bertram of Red Shield Insurance Company
DEFENDANT’S INFRINGEMENT
20. Defendant, Red Shield Administration, Inc., had been known prior to 2018 as Red
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
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.
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
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
28. In 2018, Defendant began offering protection plan services in Oregon under the
29. Defendant advertises its service through the website corresponding to the domain
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.
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
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
37. One consumer, who identified himself as an attorney, even threatened a lawsuit
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.
administered by Defendant.
42. Plaintiff has received an email inquiry from a confused customer indicating his
44. Plaintiff has received an email inquiry from a confused customer indicating his
46. Plaintiff has received an email inquiry from a confused customer indicating his
48. Plaintiff has also received an email inquiry from Rusnak/Pasadena Porsche on
C000005499DT.
50. Plaintiff wrote to Defendant on April 19, 2018, asking it to stop using RED
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
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.
57. Defendant’s continued use of RED SHIELD despite its awareness of Plaintiff’s
CLAIM ONE
58. Plaintiff repeats and realleges each and every allegation contained in the above
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
60. Defendant uses RED SHIELD in connection with the sale, offering for sale,
62. Defendant’s use of RED SHIELD causes irreparable damage to Plaintiff at least
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
66. Defendant’s use of RED SHIELD infringes Plaintiff’s trademark rights in its
CLAIM TWO
67. Plaintiff repeats and realleges each and every allegation contained in the above
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
69. RED SHIELD is the dominant portion of RED SHIELD PROTECTION PLANS.
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.
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
CLAIM THREE
76. Plaintiff repeats and realleges each and every allegation contained in the above
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
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
78. RED SHIELD is the dominant portion of RED SHIELD PROTECTION PLANS.
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.
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
CLAIM FOUR
84. Plaintiff repeats and realleges each and every allegation contained in the above
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
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
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.
89. Defendant’s continued use of RED SHIELD despite its awareness of Plaintiff’s
CLAIM FIVE
90. Plaintiff repeats and realleges each and every allegation contained in the above
91. RED SHIELD is the dominant portion of RED SHIELD PROTECTION PLANS.
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.
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
common law.
CLAIM SIX
98. Plaintiff repeats and realleges each and every allegation contained in the above
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
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
common law.
104. Pursuant to Fed. R. Civ. P. 38(b), Plaintiff requests a trial by jury on all issues
A. The Court find that Plaintiff owns valid and subsisting rights in each of the
B. Defendant be held liable under each claim set forth in this Complaint;
its agents, servants, employees, attorneys, and all other persons in active
service contracts, and vehicle protection plans and from doing any other
act that would likely cause confusion that Plaintiff is the source or, or
activities;
§ 1116(a) that Defendant file with the Court and serve on Plaintiff within
under oath setting forth in detail the manner and form in which Defendant
its use of the RED SHIELD trademark, pursuant to 15 U.S.C. 1117 and
K. Such other and further relief as may be deemed just and appropriate.
Respectfully submitted,