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Case 1:11-cv-00775-UNA Document 1

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE REGISTERED AGENTS, LTD., Plaintiff, v. REGISTERED AGENT, INC. Defendant. ) ) ) ) ) ) ) ) ) ) ) )

C.A. No.__________________

JURY TRIAL DEMANDED

COMPLAINT Plaintiff Registered Agents, Ltd., through their attorneys at Connolly Bove Lodge & Hutz LLP, for their complaint against defendant Registered Agent, Inc. allege as follows: NATURE OF THE ACTION 1. This is a civil action for: (i) trademark infringement arising under Section 32(1)

of the Lanham Act of 1946, as amended, 15 U.S.C. 1051 et seq.; (ii) use of false designations of origin in commerce and false advertisement, arising under Section 43(a) of the Lanham Act of 1946, as amended, 15 U.S.C. 1125(a); (iii) unfair competition under Section 43(a) of the Lanham Act, as amended, 15 U.S.C. 1125(a); (iv) statutory unfair competition under the Delaware Uniform Deceptive Trade Practices Act, 6 Del. C. 2531 et seq.; (v) common law unfair competition under the common law of the State of Delaware; and (vi) unjust enrichment under the common law of the State of Delaware.

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JURISDICTION AND VENUE 2. This Court has original jurisdiction over the claims arising under the Lanham Act

pursuant to 15 U.S.C. 1121 and 28 U.S.C. 1331 and 1338. This Court has supplemental jurisdiction over the claims arising under state statutory and common law pursuant to 28 U.S.C. 1367. 3. This Court has personal jurisdiction over Defendant because, on information and

belief, Defendant transacts business in Delaware, directs advertising into Delaware, enters into contracts to supply services and/or products in Delaware, with Delaware entities and citizens, and has purposefully availed itself of the privilege of conducting activities in Delaware. 4. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(b) and (c). PARTIES 5. Registered Agents, Ltd. (RAL) is a small business incorporation solution expert

offering corporate services, including, but not limited to, corporate headquarters services and other new entity services, and business services such as filing and retrieval of incorporation and corporate documents with government agencies that has been operating since 1979 and is headquartered at 1220 North Market Street, Suite 804, Wilmington, Delaware 19801. 6. Upon information and belief, Registered Agent, Inc. (RAI) is a corporation of

Nevada headquartered at 769 Basque Way, Suite 300, Carson City, Nevada 89706. Upon information and belief, RAI provides corporate services, including, but not limited to, corporate headquarters services and other new entity services. 7. Upon information and belief, RAI is the owner of and is responsible for the

website at www.registeredagentinc.com. Through this website, at least, RAI offers services directly to consumers in all 50 states, including Delaware. In connection with its business, upon

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information and belief, RAI transacts business, and enters into contracts to supply services and/or products in Delaware, with Delaware companies and citizens, and advertises its services and solicits business in all 50 states, including Delaware. 8. Upon information and belief, RAI has purposefully availed itself of the privilege

of conducting activities within Delaware. RAI has, on at least two occasions, sent letters soliciting business from at least one Delaware Corporation at a Delaware address, attached at Exhibit A. Additionally, at least one former RAL client has registered with RAI, upon

information and belief, in response to a RAI solicitation. FACTS RAL and its Long History of Service In Connection With the REGISTERED AGENTS, LTD. Mark 9. RAL was founded in 1979 and for at least the past 32 years has continuously used

the REGISTERED AGENTS, LTD. name and trademark in connection with its business services (the REGISTERED AGENTS, LTD. Mark). 10. RAL has devoted significant advertising resources and creative energies towards

the REGISTERED AGENTS, LTD. Mark. The REGISTERED AGENTS, LTD. Mark is well known and is widely recognized by the consuming public as a designation of source, and specifically as a designation of source of RALs business services. 11. RAL offers corporate filing services including, but not limited to, new entity RAL offers

formations, foreign qualifications, amendments, mergers, and dissolutions.

additional services including, but not limited to, document retrieval services, international authentications, Uniform Commercial Code (UCC) searches and filings, and registered agent service in all 50 States plus the District of Columbia. RAL assists its clients in obtaining corporate kits, forms, disks, Employer Identification Numbers (EIN) and business licenses. RAL

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also provides virtual office services including mail forwarding, phone answering, and fax forwarding. 12. RAL began use in the United States of the REGISTERED AGENTS, LTD. Mark

in or about 1979. RAL has devoted significant marketing, advertising, and financial resources to developing and establishing in the minds of consumers that the REGISTERED AGENTS, LTD. Mark signifies RAL and its services. As a result of these efforts (detailed in part below), the REGISTERED AGENTS, LTD. Mark is widely recognized by the consuming public as a designation of source for RAL and its business services. 13. RAL prides itself on its high-quality services that it provides to consumers, and

through this philosophy and its promotion of its services, RAL has developed customer loyalty and a strong brand identity. 14. RAL expends significant revenue and resources in advertising and promoting its

services using the REGISTERED AGENTS, LTD. Mark through various media, including trade shows, offline advertising, and Internet. As a part of this extensive advertising, RAL promotes its services prominently using the REGISTERED AGENTS, LTD. Mark in its advertising campaigns, marketing materials, and on its website www.registeredagentsltd.com. 15. The extensive advertising and promotion of the REGISTERED AGENTS, LTD.

Mark, combined with the high quality services offered by RAL and the companys long use in commerce of the REGISTERED AGENTS, LTD. Mark, have resulted in the REGISTERED AGENTS, LTD. Mark acquiring tremendous goodwill and secondary meaning among the consuming public. The REGISTERED AGENTS, LTD. Mark is well known to the general consuming public and thus is distinctive.

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16.

In addition to common law rights in the REGISTERED AGENTS, LTD. Mark,

RAL is the owner of the following United States federal trademark registration: U.S. Registration No. 3,000,553 for the trademark REGISTERED AGENTS, LTD. (Mark) for: business services for others, namely filing and retrieval of incorporation and corporate documents with government agencies. A copy of the registration is attached at Exhibit B. The application that matured into U.S. Registration No. 3,000,553 (the 553 Registration) was filed June 13, 2001, claims use of the REGISTERED AGENTS, LTD. Mark since at least as early as August 18, 1979, was published for opposition in the Official Gazette July 5, 2005, and the registration issued on September 27, 2005. The 553 Registration is in full force and effect, and is incontestable, as evidenced by the attached printout from the United States Patent and Trademark Office (the PTO) electronic database records at Exhibit B. RAIs Activities Resulting In, Inter Alia, Trademark Infringement and Unfair Competition 17. RAI provides business services, including, but not limited to, corporate filing and

retrieval services, corporate headquarters services and other new entity services (Infringing Services). 18. Upon information and belief, RAI has offered its business services to RAL

customers. RAI competes directly with RAL. 19. In order to compete with RAL, RAI began using the name REGISTERED

AGENT, INC., which is confusingly similar to the REGISTERED AGENTS, LTD. Mark, in approximately 2008. RAI is thereby improperly using and trading, and intending to use and trade, upon the REGISTERED AGENTS, LTD. Mark utilized by RAL. 20. On the website www.registeredagentinc.com, which, upon information and belief,

is available worldwide through the Internet, RAI uses the REGISTERED AGENTS, LTD. Mark, or confusingly similar variations thereof, in connection with its overlapping corporate services without authorization from RAL or any other authorized entity. Printouts of pages from the

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website are attached hereto as Exhibit C.

RAIs use of a confusingly similar mark,

REGISTERED AGENT, INC., on the website pages suggests an association with RAL. 21. The REGISTERED AGENTS, LTD. Mark is federally registered and

incontestable, and use of a confusingly similar mark, REGISTERED AGENT, INC. mark, was begun with, at a minimum, constructive knowledge of RALs rights in the REGISTERED AGENTS, LTD. Mark. 22. Upon information and belief, RAI did not begin use of the REGISTERED

AGENT, INC. mark until 2008, long after the RAL application for the REGISTERED AGENTS, LTD. Mark had been published for opposition and matured to registration. RAI was on notice of RALs rights in the REGISTERED AGENTS, LTD. Mark at the time RAI began use of the REGISTERED AGENT, INC. mark. 23. Upon information and belief, the RAI website www.registeredagentinc.com was

created on or about April 3, 2008, long after the RAL application for the REGISTERED AGENTS, LTD. Mark had been published for opposition and matured to registration. RAI uses the confusingly similar REGISTERED AGENT, INC. mark on its website and on its marketing materials. RALs use and registration of the REGISTERED AGENTS, LTD. Mark precedes RAIs use of the REGISTERED AGENT, INC. mark. RAI was on notice of RALs rights in the REGISTERED AGENTS, LTD. Mark at the time RAI began use of the REGISTERED AGENT, INC. mark, as shown by the WHOIS record attached at Exhibit D. 24. RAL contacted RAI and informed RAI of RALs rights in the REGISTERED

AGENTS, LTD. Mark on December 28, 2010. RAI was also on notice of RALs rights in the REGISTERED AGENTS, LTD. Mark at least as early as December 28, 2010.

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25.

RAIs use of the REGISTERED AGENT, INC. mark is confusingly similar to the

RAL REGISTERED AGENTS, LTD. Mark. RAIs use of the REGISTERED AGENT, INC. mark is nearly identical to and conveys the same commercial impression as that of the RAL REGISTERED AGENTS, LTD. Mark, especially because the REGISTERED AGENT, INC. mark is used by RAI in advertising and promotional materials in the corporate services industry, the same industry in which RAL operates. 26. RAIs confusingly similar and deceptive use of the REGISTERED AGENT, INC.

mark enables RAI to compete directly and unfairly with the services offered by RAL under the REGISTERED AGENTS, LTD. Mark. RAI is using and, upon information and belief, intends to use the REGISTERED AGENT, INC. mark, and variations thereof, for the same type of corporate services offered to the same classes of consumers and target customers as RALs services. 27. RAIs use of the REGISTERED AGENT, INC. mark in connection with

corporate services is likely to cause confusion as to the source and origin of RAIs services and is likely to cause confusion, or to cause mistake, or to deceive the public and the trade as to the source or sponsorship of RAIs services and to falsely suggest a connection with RAL, and mislead the public into believing that RAIs services emanate from, are approved or sponsored by, or are in some way associated or connected with RAL. 28. RAIs use of the REGISTERED AGENT, INC. mark in connection with

overlapping corporate services on its website advertising falsely conveys that RAL is affiliated with RAI or otherwise misrepresents the nature, characteristics, and qualities of RAIs services and commercial activities. The use on the website, and other uses by RAI of the REGISTERED

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AGENT, INC. mark, upon information and belief, actually and materially deceived or has the capacity to materially deceive a substantial segment of the audience. 29. Current and prospective customers looking for RAL and encountering the

REGISTERED AGENT, INC. mark, are likely to be confused or deceived as to the source of the services and sales could thus be diverted to RAI. 30. Upon information and belief, RAIs adoption and use of the infringing

REGISTERED AGENT, INC. mark represents a deliberate attempt to trade unlawfully upon the goodwill associated with the REGISTERED AGENTS, LTD. Mark. 31. RAIs activities as described herein have and will cause RAL irreparable harm

and significant injury. COUNT I -- INFRINGEMENT OF REGISTERED TRADEMARK 32. RAL repeats and realleges each and every allegation set forth in paragraphs 1

through 32 above as if fully set forth herein. 33. RAI, without authorization from RAL, has used and is continuing to use spurious

designations that are identical to, or confusingly similar to, the RAL REGISTERED AGENTS, LTD. Mark. 34. The foregoing acts of RAI are intended to cause, have caused, and are likely to

continue to cause confusion, mistake, and deception among consumers, the public, and the trade as to whether RAIs services originate from, or are affiliated with, sponsored by, or endorsed by RAL. 35. Upon information and belief, RAI has acted with knowledge of RALs ownership

of the REGISTERED AGENTS, LTD. Mark and to unfairly benefit from the goodwill symbolized thereby.

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36.

RAIs activities as described above constitute infringement of the RAL

REGISTERED AGENTS, LTD. Mark in violation of Section 32(1) of the Lanham Act of 1946, as amended (15 U.S.C. 1114(1)). 37. Upon information and belief, RAI has made and will continue to make substantial

profits and gains to which it is not in law or equity entitled. 38. Upon information and belief, RAI intends to continue its infringing acts, unless

restrained by this Court. 39. RAIs acts have damaged and will continue to damage RAL, and RAL has no

adequate remedy at law. COUNT II -- FALSE DESIGNATION OF ORIGIN AND FALSE ADVERTISING 40. RAL repeats and realleges each of the allegations set forth in paragraphs 1

through 40 above as if fully set forth herein. 41. RAIs promotion, advertising, distribution, sale, and/or offering for sale of the

Infringing Services is likely to confuse, mislead, or deceive consumers, the public, and the trade as to the origin, source, sponsorship, or affiliation of the Infringing Services, and is intended, and is likely to cause such parties to believe in error that the Infringing Services have been authorized, sponsored, approved, endorsed or licensed by RAL or that RAI is in some way affiliated with RAL. 42. RAIs activities as described above constitute the use of false designations of

origin in commerce, and false and misleading descriptions and representations of fact, all in violation of Section 43(a) of the Lanham Act of 1946, as amended (15 U.S.C. 1125(a)). 43. Upon information and belief, RAI has made and will continue to make substantial

profits and gains to which it is not in law or equity entitled.

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44.

Upon information and belief, RAI intends to continue its infringing acts, unless

restrained by this Court. 45. RAIs acts have damaged and will continue to damage RAL, and RAL has no

adequate remedy at law. COUNT III -- UNFAIR COMPETITION 46. RAL repeats and realleges each of the allegations set forth in paragraphs 1

through 46 above as if fully set forth herein. 47. RAIs activities as described above constitute unfair competition in violation of

Section 43(a) of the Lanham Act of 1946, as amended (15 U.S.C. 1125(a)). 48. Upon information and belief, RAI has made and will continue to make substantial

profits and gains to which it is not in law or equity entitled. 49. Upon information and belief, RAI intends to continue its infringing acts, unless

restrained by this Court. 50. RAIs acts have damaged and will continue to damage RAL, and RAL has no

adequate remedy at law. COUNT IV -- UNFAIR COMPETITION UNDER THE DELAWARE UNIFORM DECEPTIVE TRADE PRACTICES ACT, 6 DEL. C. 2531 ET SEQ. 51. RAL repeats and realleges each of the allegations set forth in paragraphs 1

through 51 above as if fully set forth herein. 52. RAIs activities as described above constitute unfair competition and deceptive

trade practices under the Delaware Uniform Deceptive Trade Practices Act, 6 Del. C. 2531 et seq. 53. Upon information and belief, RAI has made and will continue to make substantial

profits and gains to which it is not in law or equity entitled.

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54.

Upon information and belief, RAI intends to continue its infringing acts, unless

restrained by this Court. 55. RAIs acts have damaged and will continue to damage RAL, and RAL has no

adequate remedy at law. COUNT V -- COMMON LAW UNFAIR COMPETITION 56. RAL repeats and realleges each of the allegations set forth in paragraphs 1

through 56 above as if fully set forth herein. 57. RAIs activities as described above constitute unfair competition under the

common law of the State of Delaware. 58. Upon information and belief, RAI has made and will continue to make substantial

profits and gains to which it is not in law or equity entitled. 59. Upon information and belief, RAI intends to continue its infringing acts, unless

restrained by this Court. 60. RAIs acts have damaged and will continue to damage RAL, and RAL has no

adequate remedy at law. COUNT VI -- COMMON LAW UNJUST ENRICHMENT 61. RAL repeats and realleges each of the allegations set forth in paragraphs 1

through 61 above as if fully set forth herein. 62. Benefits have been conferred upon RAI by RAIs unauthorized use of RALs

REGISTERED AGENTS, LTD. Mark. 63. 64. RAL. RAI has appreciated, accepted, and retained these benefits. It is inequitable for RAI to retain these benefits without the payment of value to

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65. 66.

RAI has been unjustly enriched at the expense of RAL. RAIs activities as described above constitute unjust enrichment under the

common law of the State of Delaware. WHEREFORE, RAL demands judgment against RAI as follows: 1. That RAI, its agents, servants, representatives, successors and assigns, and all

those persons or entities in active concert or participation with any of them who receive actual notice of the injunctive order, be enjoined, preliminarily and permanently from: (a) Using RALs REGISTERED AGENTS, LTD. Mark or any other mark,

symbol or device that is confusingly similar to RALs REGISTERED AGENTS, LTD. Mark in connection with marketing, sale, offering for sale, advertisement, or promotion of corporate products or services; and (b) Committing any other act calculated or likely to cause the public to

believe that RAI is in any manner connected, affiliated or associated with RAL or from otherwise competing unfairly with RAL. 2. Pursuant to 15 U.S.C. 1118, that RAI delivers to RAL for destruction all

material (including, without limitation, all advertisements, promotional materials, and brochures), within its possession, custody or control, either directly or indirectly, that bears RALs REGISTERED AGENTS, LTD. Mark or any other designation, symbol or device that is confusingly similar to RALs REGISTERED AGENTS, LTD. Mark. 3. Pursuant to 15 U.S.C. 1116(a), that RAI be directed to file with the Court and

serve upon RAL, within thirty (30) days after entry of the injunctive order, a report in writing and under oath setting forth in detail the manner and form by which it has complied with the provisions set forth in paragraphs 1, and 2 above.

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4.

Pursuant to 15 U.S.C. 1117(a) and the common law, that RAI be directed to

account to RAL for all gains, profits, and advantages derived from RAIs wrongful acts. 5. Pursuant to 15 U.S.C. 1117(a) and 6 Del. C. 2533(c), that RAL recovers from

RAI the greater of three times the amount of RAIs profits or any damages sustained by RAL, together with interest on such amount and the costs of this action. 6. Pursuant to 15 U.S.C. 1117(a) and 6 Del. C. 2533(b), that the Court determine

that the case is exceptional and that RAL recovers from RAI their attorneys fees and the costs of this civil action. 7. That RAL be awarded such other and further relief as the Court deems equitable,

just, and proper. DEMAND FOR JURY RAL requests that all issues triable by a jury be so tried in this case. /s/ Chad S.C. Stover Chad S.C. Stover (#4919) Christina M. Hillson (#5187) CONNOLLY BOVE LODGE & HUTZ LLP 1007 North Orange Street P.O. Box 2207 Wilmington, Delaware 19899-2207 (302) 658-9141 cstover@cblh.com chillson@cblh.com Of Counsel: Jennifer Fraser CONNOLLY BOVE LODGE & HUTZ LLP 1875 Eye Street, NW, Ste. 1100 Washington, DC 20006 (202) 331-7111 jfraser@cblh.com Attorneys for Plaintiff Dated: September 2, 2011

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