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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, Plaintiffs 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 Defendants insurance and financial services business
offered under SUN FINANCIAL SERVICES for services identical to or related to those offered by Plaintiff under Plaintiffs SUN Marks as defined herein, Defendants use of Sun Financial Services, LLC as a trade name, and Defendants U.S. Trademark Application for the mark SUN WEALTH MANAGEMENT. Defendants 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 Groups 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. Plaintiffs SUN-containing marks, along with associated goodwill, include at least the following (Plaintiffs 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
2520934
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.
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
August 2, 2011
Exhibit F
3854703
Exhibit G
16.
In view of Plaintiffs 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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Plaintiffs SUN Marks have become famous and distinctive, being associated exclusively with services provided by or authorized by Plaintiff. 17. Since Plaintiffs adoption of SUN in the United States in 1895, sales of services in
connection with Plaintiffs SUN Marks has been extensive and continuous and has amounted to billions of dollars in the United States. 18. Plaintiffs SUN Marks are widely recognized by the general consuming public in
the United States as a designation of the source of Plaintiffs services. 19. Upon information and belief, each of Plaintiffs 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. Defendants 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 Plaintiffs SUN
used and continues to use SUN FINANCIAL SERVICES, which are substantially similar to Plaintiffs 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 Plaintiffs SUN Marks. 29. Defendants 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 Defendants business is related to or associated with Plaintiff or a member of the Sun Life Financial Group. 30. Defendants use of a mark which is confusingly similar to any one of the marks
comprising Plaintiffs SUN Marks constitutes a reproduction, copying, counterfeiting, and colorable imitation of Plaintiffs 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, Defendants past, present and ongoing actions constitute trademark infringement of Plaintiffs 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 Plaintiffs SUN Marks. 33. Unless stopped by an injunction, Defendants 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. Defendants infringing actions have damaged Plaintiff. Therefore, Plaintiff is
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35.
reference as though set forth in full herein. 36. Plaintiffs 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, Plaintiffs SUN Marks identify Plaintiff and its services and associated products. 37. Plaintiffs 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. Defendants use of a trademark or trade name that is confusingly similar to any
one of Plaintiffs 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 Plaintiffs SUN Marks. 40. Defendants 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 Defendants services by Plaintiff, entitling Plaintiff to relief under 15 U.S.C. 1125(a).
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41.
Upon information and belief, Defendants actions have been knowing, deliberate,
willful, and intended to cause mistake or deceive, and in disregard of Plaintiffs rights. 42. Defendants 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, Defendants 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. Defendants use in commerce of SUN FINANCIAL SERVICES, a mark that is
confusingly similar to any one of Plaintiffs 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 Defendants services are those of Plaintiffs 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, Defendants actions have been knowing, deliberate,
willful, and intended to cause mistake or deceive, and in disregard of Plaintiffs rights.
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49.
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
Plaintiffs SUN Marks. 53. In addition to its rights under the Lanham Act, Plaintiff has valid common law
rights in Plaintiffs SUN Marks in connection with financial and insurance services and any related products. 54. Defendants use in commerce of SUN FINANCIAL SERVICES as a trademark
and trade name is in violation and derogation of Plaintiffs common law rights in Plaintiffs 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 Defendants 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, Defendants actions have been knowing, deliberate,
willful, and intended to cause mistake or deceive, and in disregard of Plaintiffs rights.
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57.
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 Plaintiffs SUN Marks. Each of Plaintiffs SUN Marks is distinctive and became famous long prior to
Defendants 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 Plaintiffs SUN Marks. 62. Defendants use of SUN FINANCIAL SERVICES is likely to cause dilution by
blurring and dilution by tarnishment of each of Plaintiffs SUN Marks. 63. Upon information and belief, Defendants actions have been knowing, deliberate,
willful, and intended to cause mistake or deceive, and in disregard of Plaintiffs rights. 64. Unless stopped by an injunction, Defendants 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 Defendants dilution in an amount to be
determined at trial.
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66.
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 Plaintiffs SUN
financial and insurance services in the United States since at least as early as 1895. In addition to Plaintiffs 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 Plaintiffs and/or its affiliates extensive and continuous use of the term SUN for financial and insurance services, Plaintiffs 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 (Defendants SUN WEALTH MANAGEMENT Application). 70. Defendants 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 Plaintiffs SUN Marks. 71. Defendants SUN WEALTH MANAGEMENT mark is similar in appearance,
sound, and commercial impression to each of Plaintiffs SUN Marks. 72. Defendants SUN WEALTH MANAGEMENT mark may lead consumers in
relevant markets to believe that Defendants services are related to or associated with Plaintiff or a member of the Sun Life Financial Group. 73. Defendants mark SUN WEALTH MANAGEMENT, a mark which is
confusingly similar to any one of the marks comprising Plaintiffs SUN Marks, constitutes a reproduction, copying, counterfeiting, and colorable imitation of Plaintiffs 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, Defendants past, present and ongoing actions constitute trademark infringement of Plaintiffs rights, subjecting Defendant to an opposition to registration under 15 U.S.C. 1063. Therefore, Plaintiffs Opposition No. 91193599 should be sustained in favor of the Plaintiff and Defendants 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 Plaintiffs 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; Defendants actions have been knowing, deliberate, willful, and intended to cause mistake or deceive, and in disregard of Plaintiffs rights; G. Defendant shall pay to Plaintiff any damages attributable to its infringement of
Plaintiffs 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 Plaintiffs favor;
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H.
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 Courts order and injunction; N. Defendants 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
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