Free Amended Complaint - District Court of Arizona - Arizona

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Rick N. Bryson (Arizona Bar No. 010568) Brett M. Hager (Arizona Bar No. 018793) SANDERS & PARKS 3030 North Third Street Suite 1300 Phoenix, AZ 85012-3099 Telephone: (602) 532-5600 Facsimile: (602) 230-5014 Michael A. Grow Elizabeth H. Cohen Janine A. Carlan ARENT FOX PLLC 1050 Connecticut Avenue, NW Washington, DC 20036-5339 Telephone: (202) 857-6000 Facsimile: (202) 857-6395 Attorneys for Plaintiff Century 21 Real Estate LLC

UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA _________________________________ Case No. CIV. 03-0053 PHX SMM CENTURY 21 REAL ESTATE LLC, Plaintiff, FIRST AMENDED COMPLAINT FOR SERVICE MARK AND TRADE NAME v. CENTURY SURETY CO. d/b/a CENTURY INSURANCE GROUP, Defendant.
INFRINGEMENT, SERVICE MARK AND TRADE NAME DILUTION, UNFAIR COMPETITION, AND UNFAIR TRADE PRACTICES (Jury Trial Demanded)

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JURISDICTION AND PARTIES 1. This is an action for service mark and trade name infringement, service mark

and trade name dilution, and other acts of unfair competition, and deceptive and unfair trade practices arising under the statutes of the United States (Trademark Act of 1946, 15 U.S.C. § 1051 et seq.), the statutory law of the State of Arizona (A.R.S. §§ 44-1448.01, [44-1451] et seq.), and the common law. 2. This court has subject matter jurisdiction under Section 39 of the Trademark

Act of 1946, 15 U.S.C. § 1121; the Judicial Code, 28 U.S.C. §§ 1331, 1332 and 1338; and the doctrine of supplemental jurisdiction. The matter in controversy exceeds $75,000, exclusive of interest and costs, and is between citizens of different States. Venue is proper in this District under 28 U.S.C. § 1391. 3. Plaintiff Century 21 Real Estate [Corporation] LLC is a corporation organized

under the laws of the state of Delaware with its principal place of business at 6 Sylvan Way, Parsippany, New Jersey 07054. 4. Upon information and belief, Defendant Century [Insurance Group and]

Surety Co. [are] is a corporation[s] organized under the laws of the State of Ohio[, each] having an address of 2400 Corporate Exchange Dr., Suite 290, Columbus, OH 43231. Also upon information and belief, Defendant[s each] maintains a Western Regional Office at 7227 North 16th Street, Suite 207, Phoenix, AZ 85020, which is located within this judicial district. BACKGROUND 5. Plaintiff is the owner of exclusive rights in and to a family of trade names and

marks containing the word "CENTURY" including the famous marks CENTURY 21, [and] CENTURY 21 & Design, 21ST CENTURY, 21ST CENTURY CASUALTY, 21ST CENTURY INSURANCE and NEW CENTURY TITLE COMPANY (hereinafter "the CENTURY 21 Marks") which have been used extensively on a variety of services including real estate brokerage services and insurance services. 6. Long prior to the acts complained of herein, and at least as early as 1971,
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Plaintiff and/or its related companies began using the name and mark CENTURY 21. Since that time, Plaintiff and its related companies and licensees have used this mark and other marks containing the word CENTURY continuously and extensively in interstate commerce in connection with the advertising and sale of real estate and insurance services. 7. Plaintiff's exclusive right to use the CENTURY 21 Marks for a wide variety of

goods and services is evidenced by numerous registrations issued by the Patent and Trademark Office. Among these are Registration No. 1,063,488, CENTURY 21, issued on April 12, 1977 for real estate brokerage services, Registration No. 1,085,040, CENTURY 21 & Design, issued on February 7, 1978 for real estate brokerage services, [and] Registration No. 1,429,531, CENTURY 21, issued on February 17, 1987 for insurance brokerage services, Registration No. 3,055,063, 21ST CENTURY CASUALTY, issued January 31, 2006 and Registration No. 2,983,399, NEW CENTURY TITLE COMPANY issued August 9, 2005 for real estate escrow services; real estate title and escrow insurance services and title searching services. The registrations are in full force and effect, unrevoked, uncancelled, and incontestable. These registrations are conclusive evidence of the validity and subsistence of the marks as well as Plaintiff's exclusive right to use the marks in commerce without restriction or limitation; and the registrations provide constructive notice of Plaintiff's ownership pursuant to Sections 7, 22 and 33 of the Trademark Act of 1946, 15 U.S.C. §§ 1057, 1072 and 1115. Copies of [these] registrations are attached as Exhibit A. [8. Plaintiff also owns exclusive rights in Arizona Trademark Registration No.

17922 for the mark CENTURY 21 REAL ESTATE and Design, renewed on July 5, 1993 for advertising, signs, television, mass mailings.] [9]8. Plaintiff has developed a highly successful system for the promotion and

operation of individual real estate brokerage offices, which provide real estate brokerage services, and related services including insurance services. The CENTURY 21 Marks have been widely used and advertised. At present there are approximately 6,000 franchised offices in the United States, Canada and other countries, each of which is licensed to use the name and mark CENTURY 21.
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[10]9. Plaintiff has developed a well-known business reputation in the State of Arizona and throughout the United States. Since long prior to the acts complained of herein, the CENTURY 21 Marks have been and continue to be widely publicized through substantial advertising in Arizona and throughout the United States. Hundreds of millions of dollars have been spent in connection with such advertising on network and cable television programs, on radio and in newspapers and periodicals. Sales of services under the CENTURY 21 marks have amounted to many billions of dollars. As a result, the general public has come to associate the CENTURY 21 Marks with high quality services. [11]10. As a result of Plaintiff's substantial advertising expenditures and sales, the CENTURY 21 Marks have become well known and famous among members of the purchasing public as a distinctive indicator of Plaintiff's services. Indeed, CENTURY 21 is the most well known name and mark in its field, and one of the most well known marks in the United States. [12]11. Notwithstanding Plaintiff's prior use of and rights in the CENTURY 21 Marks, Defendant[s] [have] has offered insurance services within this judicial district and in interstate commerce under the names and marks CENTURY SURETY GROUP, CENTURY INSURANCE GROUP, CENTURY SURETY, PROCENTURY and CENTURY (hereinafter "the Infringing Marks"). [13]12. Defendant[s] has [have] applied to register for the mark CENTURY SURETY GROUP in the United States Patent and Trademark Office for "underwriting insurance in the fields of surety bonds, environmental bonds, environmental damage, workers' compensation, commercial general liability and commercial property." Defendant[s] has [have] been granted Serial No. 75/357,803. Plaintiff has opposed this mark and the Trademark Trial and Appeal Board has instituted Opposition No. 119,310. Defendant[s] also maintain[s] a website at www.centurysurety.com where it advertises its insurance services. [14]13. Defendant's['] use of names and marks so similar to CENTURY 21 on virtually identical services to those offered under the CENTURY 21 Marks, is likely to cause
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confusion, mistake and deception among prospective purchasers. [15]14. Defendant[s] [have] has continued such infringing use despite having full knowledge of Plaintiff's prior rights in its names and marks. Thus, Defendant[s] [have] has engaged in its unlawful activity with a willful and deliberate intent to cause confusion among the purchasing public and to injure Plaintiff. COUNT I SERVICE MARK INFRINGEMENT UNDER THE STATUTES OF THE UNITED STATES [16]15. As a separate cause of action and ground for relief, Plaintiff alleges that Defendant[s] [have] has and [are] is engaged in acts of service mark infringement within the meaning of Section 32(1) of the Trademark Act of 1946, 15 U.S.C. § 1114(1). Paragraphs 1 through 15 of this complaint are incorporated by reference as a part of this count. [17]16. Defendant[s] [have] has used the Infringing Marks in connection with the advertising and sale of real estate services in commerce in such a manner as to create a likelihood of confusion with Plaintiff's CENTURY 21 Marks among prospective purchasers. Defendant[s]'s use of the Infringing Marks induces purchasers and others to believe, contrary to fact, that the goods or services sold by Defendant[s] are rendered, sponsored, or otherwise approved by, or connected with Plaintiff. Defendant's acts have damaged, impaired and diluted that part of Plaintiff's goodwill symbolized by the well known CENTURY 21 Marks to Plaintiff's immediate and irreparable damage. [18] 17. Defendant's['] use of the Infringing Marks in the manner alleged constitutes service mark infringement within the meaning of 15 U.S.C. § 1114(1). [19]18. Defendant[s] had actual knowledge of Plaintiff's rights in the CENTURY 21 Marks when it began using the names and marks complained of herein. Thus, Defendant[s] [have] has willfully and deliberately infringed Plaintiff's rights in the CENTURY 21 Marks. [20] 19. Defendant's['] acts of infringement have caused Plaintiff irreparable injury and loss of reputation. Unless enjoined by this court, Defendant[s] will continue these acts of infringement to Plaintiff's immediate and irreparable damage.
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COUNT II SERVICE MARK DILUTION UNDER THE STATUTES OF THE UNITED STATES [21]20. As a separate cause of action and ground for relief, Plaintiff alleges that Defendant[s] [have] has and [are] is engaged in acts constituting service mark dilution in violation of Section 43(c) of the Trademark Act of 1946, 15 U.S.C. § 1125(c). Paragraphs 1 through 20 of this complaint are incorporated by reference as a part of this count. [22]21. Defendant[s] [have] has made commercial use of the Infringing Marks in commerce with the willful intent to trade on Plaintiff's reputation or to cause dilution of the famous CENTURY 21 Marks. [23]22. Defendant's['] use of the Infringing Marks began long after the CENTURY 21 Marks became well known and famous. [24]23. Defendant's['] use of the Infringing Marks causes dilution of the distinctive quality of Plaintiff's famous CENTURY 21 Marks. [25]24. Defendant's['] use of the Infringing Marks lessens the capacity of Plaintiff's famous CENTURY 21 Marks to identify and distinguish goods and services. [26]25. Defendant's['] activities complained of herein constitute service mark dilution within the meaning of Section 43(c) of the Trademark Act of 1946, 15 U.S.C. § [§] 1125(c). [27]26. Defendant's['] conduct has caused Plaintiff irreparable injury, loss of reputation and pecuniary damages. Unless enjoined by this court, Defendant[s] will continue to willfully dilute Plaintiff's famous CENTURY 21 Marks to Plaintiff's immediate and irreparable damage. COUNT III UNFAIR COMPETITION UNDER THE STATUTES OF THE UNITED STATES [28]27. As a separate cause of action and ground for relief, Plaintiff alleges that Defendant [have and are] is engaged in acts of unfair competition of the type proscribed by Section 43(a) of the Trademark Act of 1946, 15 U.S.C. § 1125(a). Paragraphs 1 through
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[27]26 of this complaint are incorporated by reference as a part of this count. [29]28. Defendant[s][are] is engaged using the Infringing Marks in connection with the advertising and sale of surety and insurance services in interstate commerce in such a manner as to create a likelihood of confusion among prospective purchasers and to unfairly compete with Plaintiff. Defendant's['] use of the Infringing Marks induces purchasers and others to believe, contrary to fact, that the goods and services sold by Defendant[s] are rendered, sponsored or otherwise approved by, or connected with Plaintiff. Defendant's['] acts have damaged, impaired and diluted that part of Plaintiff's goodwill symbolized by its name and marks to Plaintiff's immediate and irreparable damage. [30]29. Defendant's['] use of names and marks that are confusingly similar to those used by Plaintiff in connection with the advertising and sale of Defendant's['] services, constitutes use of a false designation of origin and a false description within the meaning of Section 43(a) of the Trademark Act of 1946, 15 U.S.C. § 1125(a). [31]30. Defendant's['] use of names and marks confusingly similar to those owned by Plaintiff constitutes unfair competition entitling Plaintiff to remedies pursuant to Section 43(a) of the Trademark Act of 1946, 15 U.S.C. § 1125(a). [32]31. Defendant's['] acts of unfair competition, false designation of origin and false description have caused Plaintiff irreparable injury, loss of reputation and pecuniary damages. Unless enjoined by this court, Defendant[s] will continue the acts of unfair competition complained of herein to Plaintiff's immediate and irreparable damage. COUNT IV SERVICE MARK AND TRADE NAME DILUTION UNDER THE STATUTORY LAWS OF THE STATE OF ARIZONA [33]32. As a separate cause of action and ground for relief, Plaintiff alleges that Defendant[s] [have] has and [are] is engaged in acts of service mark and trade name dilution and injury to business reputation within the meaning of A.R.S. § 44-1448.01. Paragraphs 1 through [32]31 of this complaint are incorporated by reference as a part of this count. [34]33. The CENTURY 21 Marks have become a valuable asset and a well known
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and famous symbol of the goodwill established by Plaintiff through many years of continuous use and substantial advertising expenditures. [35]34. The public has come to associate Plaintiff's mark and name with high quality services. As a result of Plaintiff's business reputation, sales have been substantial. Moreover, the CENTURY 21 Marks are a distinctive indicator of Plaintiff's services. [36]35. Defendant[s] [have] has used and is using the Infringing Marks in connection with the insurance services. Defendant's[']conduct has damaged, impaired and diluted that part of Plaintiff's goodwill symbolized by the distinctive and well known name and mark CENTURY 21 to Plaintiff's immediate and irreparable damage. [37]36. Defendant's['] conduct complained of herein creates [a tarnishment or] injury to Plaintiff's business reputation and a dilution of the distinctive identity and quality of the CENTURY 21 Marks within the meaning of A.R.S. § 44-1448.01. Therefore, Plaintiff is entitled to the remedies provided pursuant to that statute. [38]37. Defendant's[']acts of dilution have caused Plaintiff irreparable injury, loss of reputation and pecuniary damages. Unless enjoined by this court, Defendant[s] will continue these acts of service mark and trade name dilution to the immediate and irreparable damage of Plaintiff. [COUNT V TRADEMARK INFRINGEMENT UNDER THE STATUTORY LAWS OF THE STATE OF ARIZONA 39. As a separate cause of action and ground for relief, Plaintiff alleges that

Defendant has and is engaged in acts of trademark infringement within the meaning of A.R.S. § 44-1451. Paragraphs 1 through 38 of this complaint are incorporated by reference as a part of this count. 40. Defendant has used the Infringing Marks in Arizona in connection with the

advertising and sale of insurance services in commerce in such a manner as to create a likelihood of confusion with Plaintiff's registered mark, CENTURY 21 & Design, among prospective purchasers. Defendant's use of the Infringing Marks induces purchasers and
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others to believe, contrary to fact, that the goods and serves sold by Defendant are rendered, sponsored, or otherwise approved by, or connected with Plaintiff. Defendant's acts have damaged, impaired and diluted that part of Plaintiff's goodwill symbolized by the registered mark, to Plaintiff's immediate and irreparable damage. 41. Defendant's use of the Infringing Marks in the manner alleged constitutes

trademark infringement within the meaning of A.R.S. § 44-1451. 42. Defendant had actual knowledge of Plaintiff's rights in Plaintiff's registered

mark when it began using the names and marks complained of herein. Thus, Defendant has willfully and deliberately infringed Plaintiff's rights in its registered mark. 43. Defendant's acts of infringement have caused Plaintiff irreparable injury and

loss of reputation. Unless enjoined by this Court, Defendant will continue these acts of infringement to Plaintiff's immediate and irreparable damage.] COUNT [VI] V SERVICE MARK INFRINGEMENT UNDER THE COMMON LAW [44]38. As a separate cause of action and ground for relief, Plaintiff alleges that Defendant[s] [have] has and [are] is engaged in acts of service mark infringement in violation of the common law. Paragraphs 1 through [43]37 of this complaint are incorporated by reference as a part of this count. [45]39. Defendant[s] [are] is using the Infringing Marks in connection with the advertising and sale of insurance services in such a manner as to create a likelihood of confusion among prospective purchasers, thereby inducing purchasers and others to believe, contrary to fact, that the goods and services of Defendant[s] are rendered, sponsored, or otherwise approved by, or connected with Plaintiff, which acts have damaged, impaired and diluted that part of the goodwill symbolized by the CENTURY 21 Marks to Plaintiff's immediate and irreparable damage. [46]40. The nature, probable tendency and effect of Defendant's[']use of confusingly similar name and mark in the manner alleged is to enable Defendant[s] to deceive the public by passing off its goods and services as being rendered, sponsored, or otherwise approved by
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or connected with Plaintiff. [47]41. Defendant's[']use of a name and mark confusingly similar to that used by Plaintiff in connection with the advertising and sale of similar services is likely to cause confusion, mistake or deception as to the source or origin of Defendant's[']goods and services and constitutes infringement of Plaintiff's service mark under the common law. [48]42. Defendant's[']acts of infringement have caused Plaintiff irreparable injury, loss of reputation and pecuniary damages. Unless enjoined by this court, Defendant[s] will continue these acts of infringement thereby deceiving the public and causing Plaintiff immediate and irreparable damage. COUNT [VII] VI TRADE NAME INFRINGEMENT UNDER THE COMMON LAW [49]43. As a separate cause of action and ground for relief, Plaintiff alleges that Defendant[s] [have] has and [are] is engaged in acts of trade name infringement under the common law. Paragraphs 1 through [48]42 of this complaint are incorporated by reference as a part of this count. [50]44. Defendant[s] [are] is using the Infringing Marks in connection with the advertising and sale of insurance services in such a manner as to create a likelihood of confusion among prospective purchasers, thereby inducing purchasers and others to believe, contrary to fact, that Defendant's['] goods and services are rendered, sponsored, or otherwise approved by, or connected with Plaintiff, which acts have damaged, impaired and diluted that part of Plaintiff's goodwill symbolized by the trade name CENTURY 21, to Plaintiff's immediate and irreparable damage. [51]45. The nature, probable tendency and effect of Defendant's[']use of a confusingly similar name and mark in the manner alleged is to enable Defendant[s] to deceive the public by passing off its goods and services as being rendered, sponsored, or otherwise approved by or connected with Plaintiff. [52]46. Defendant's[']use of a name and mark similar to the trade name CENTURY 21 is likely to cause confusion, mistake or deception as to the source or origin of
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Defendant's['] goods and services. This conduct constitutes infringement of Plaintiff's trade names under the common law. [53]47. Defendant's[']acts of trade name infringement have caused Plaintiff irreparable injury, loss of reputation and pecuniary damages. Unless enjoined by this court, Defendant[s] will continue these acts of infringement thereby deceiving the public and causing Plaintiff immediate and irreparable damage. COUNT [VIII] VII UNFAIR COMPETITION UNDER THE COMMON LAW [54]48. As a separate cause of action and ground for relief, Plaintiff alleges that Defendant[s] [have] has and [are] is engaged in acts constituting unfair competition under the common law. Paragraphs 1 through [53]47 of this complaint are incorporated by reference as a part of this count. [55]49. Defendant[s] [are] is using the Infringing Marks in connection with the advertising and sale of insurance services in an unlawful, unfair and fraudulent manner so as to create a likelihood of confusion among prospective purchasers as to the source of its goods and services, inducing them into believing, incorrectly, that Defendant's[']goods and services are rendered, sponsored, or otherwise approved by, or connected with Plaintiff. Defendant's['] actions have damaged, impaired and diluted that part of Plaintiff's goodwill symbolized by the CENTURY 21 Marks, to Plaintiff's immediate and irreparable damage. [56]50. The aforesaid acts of Defendant[s] constitute unfair competition under the common law. [57]51. Defendant's[']acts of unfair competition have caused Plaintiff irreparable injury, loss of reputation and pecuniary damages. Unless enjoined by this court, Defendant[s] will continue [their] its actions and will continue to deceive the public and cause Plaintiff immediate and irreparable damage. COUNT [IX] VIII OPPOSITION TO DEFENDANT'S FEDERAL APPLICATION [58]52. As a separate cause of action and ground for relief, Plaintiff alleges that
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Plaintiff would be damaged were Defendant[s] granted a registration for CENTURY SURETY GROUP, and therefore Defendant's[']federal application should be denied. Paragraphs 1 through [57]51 of this complaint are incorporated by reference as a part of this count. [59]53. Defendant[s] [have] has applied to register for the mark CENTURY SURETY GROUP in the United States Patent and Trademark Office for "underwriting insurance in the fields of surety bonds, environmental bonds, environmental damage, workers' compensation, commercial general liability and commercial property." Defendant[s][have] has been granted Serial No. 75/357,803. Plaintiff has opposed this mark and the Trademark Trial and Appeal Board has instituted Opposition No. 119,310. [60]54. Defendant's[']registration for CENTURY SURETY GROUP will create a likelihood of confusion among prospective purchasers as to the source of [their] its goods and services, inducing them into believing, incorrectly, that Defendant's[']goods and services are rendered, sponsored, or otherwise approved by, or connected with Plaintiff. Defendant's[']registration for CENTURY SURETY GROUP will also cause dilution of Plaintiff's famous CENTURY 21 Marks. [61]53. Plaintiff will therefore be damaged by Defendant's[']registration of CENTURY SURETY GROUP, and pursuant to 15 U.S.C. § 1119, registration for Application Serial No. 75/357,803 should be denied. WHEREFORE, Plaintiff prays for judgment against Defendant[s] as follows: (1) Pursuant to 15 U.S.C. § 1116, and the law of the State of Arizona,

Defendant[s] and each of [their] its agents, servants, employees, attorneys, officers, and all others in privity and acting in concert with it be permanently enjoined from: (a) Using or registering the names and marks CENTURY SURETY GROUP, CENTURY SURETY, CENTURY INSURANCE GROUP, PROCENTURY and any other name or mark containing the term CENTURY, and any other trade name, trademark, service mark or domain name confusingly similar to the Plaintiff's Marks, in the advertising or sale of
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any services; (b) Using or registering in any manner any service mark, trademark, trade name, trade dress, words, numbers, abbreviations, designs, colors, arrangements, collocations, or any combinations thereof which would imitate, resemble or suggest Plaintiff's well known service mark and trade name; (c) (d) Otherwise infringing Plaintiff's service mark and trade name; Unfairly competing with Plaintiff, diluting the distinctiveness of its well known service mark and trade name, and otherwise injuring Plaintiff's business reputation in any manner; (e) Publishing any telephone listing, Internet listing, or business directory listing using the names or marks CENTURY SURETY GROUP, CENTURY SURETY, CENTURY INSURANCE GROUP, PROCENTURY or any other name or mark confusingly similar to Plaintiff's name or mark; (f) Registering as a domain name, service mark, trademark or trade name any name or mark containing the term CENTURY, and any other name or mark confusingly similar to Plaintiff's name and mark; (2) Pursuant to 15 U.S.C. § 1119, an Order refusing registration to Application

Serial No. 75/357,803, currently pending in the United States Patent and Trademark Office. (3) Pursuant to 15 U.S.C. § 1118, and the law of the State of Arizona,

Defendant[s] be directed to deliver up for destruction all advertisements, labels, signs, prints, packages, wrappers, receptacles and all other materials in [their] its possession or under [their] its control bearing the names or marks CENTURY SURETY GROUP, CENTURY SURETY, CENTURY INSURANCE GROUP, PROCENTURY and any other name or mark containing the term CENTURY, or any other reproduction, counterfeit, copy or colorable imitation of Plaintiff's service mark and trade name, and all plates, molds, matrices, and other means of making or duplicating the same. (4) Pursuant to 15 U.S.C. § 1117, and the law of the State of Arizona,

Defendant[s] account and pay to Plaintiff damages in an amount sufficient to fairly
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compensate it for the injury it has sustained, plus all the profits which are attributable to Defendant's[']sale of services under the infringing name and mark, and further that the amount of the monetary award granted herein be trebled in view of the willful and deliberate nature of Defendant's[']unlawful conduct. (5) Pursuant to 15 U.S.C. § 1117, the law of the State of Arizona, Defendant[s] be

ordered to pay to Plaintiff the costs of this action and Plaintiff's attorneys' fees. (6) (7) Pursuant to 15 U.S.C. § 1119, that Reg. No. 2,582,518 be cancelled. Plaintiff be granted such other, further, different or additional relief as this

court deems equitable and proper.
(8) Plaintiff be granted trial by jury.

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CENTURY 21 REAL ESTATE LLC By:____/s Rick N. Bryson___________________________ Rick N. Bryson, (Arizona Bar No. 010568) Brett M. Hager (Arizona Bar No. 018793) SANDERS & PARKS 3030 North Third Street, Suite 1300 Phoenix, AZ 85012-3099 Telephone: (602) 532-5600 Facsimile: (602) 230-5014 - and Michael A. Grow Elizabeth H. Cohen Janine A. Carlan ARENT FOX PLLC 1050 Connecticut Avenue, NW Washington, DC 20036-5339 Telephone: (202) 857-6000 Facsimile: (202) 857-6395 Attorneys for Plaintiff Dated: March 15, 2006.

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