Ameritas College sued by insurance corporation for trademark infringement

HUNTINGTON — An insurance corporation with a name similar to the local institute formerly known as Huntington Junior College has filed a complaint in the U.S. District Court for the Southern District of West Virginia.

According to the complaint filed Friday, Ameritas Life Insurance Corp. is arguing Ameritas College Inc., has infringed on the corporation's registered trademark since the college adopted its new name in February of this year.

The corporation argues in the complaint that Bankers Life Insurance Company of Nebraska first used the "made-up" word "Ameritas" in commerce around 1987 and eventually began using it as its name, as its previous moniker was "too limiting."

According to the complaint, the word Ameritas was created from a combination of the words "America" and "Merit," which the corporation is arguing was entirely made-up by it and used exclusively for 37 years.

The corporation filed a series of trademark applications with the U.S. Patent and Trademark Office beginning in 1988, according to the complaint. The corporation states in the complaint there are now 16 registered trademarks containing the name "Ameritas," all of which are held by the corporation and affiliated companies.

According to the complaint, the corporation has approximately 20,000 customers in West Virginia and has even grown through educational partnerships with various institutions. The corporation's business also includes educational, scholarship and training programs, according to the complaint.

For example, the corporation cites in the complaint that a certified course at the University of Nebraska-Lincoln which it sponsors is called "Ameritas Emerging Leaders Academy." The corporation also cites its web-based financial education and leadership training program for its employees and independent agents called "Ameritas EDU."

The corporation goes on in the complaint to point toward a list of examples of its involvement in educational support, university-level spots, student programs and other initiatives bearing its name, including a dental assistance degree program.

"Thus, the introduction of other companies bearing the name 'Ameritas' into the educational services market would not only dilute the value of the unique 'Ameritas' name and brand and infringe Plaintiff's federal and common-law trademark rights, but also put Plaintiff at risk of being incorrectly associated with such companies, and could thus harm Plaintiff's goodwill and reputation," it says in the complaint.

"It is also self-evident that such companies would be misappropriating a unique name that was the result of Plaintiff's federally protected creative conception, and presumably would be benefiting from such misappropriation unjustly."

According to the complaint, when Huntington Junior College's names was changed to "Ameritas College," its URL was also changed to ameritas.edu, which "bears substantial similarity" to the corporation's URL, ameritas.com and its educational program URL, edu.ameritas.com.

The corporation argues in the complaint this has caused its search-engine position on the internet to be "compromised" and is diluting references to the corporation on search engines.

Ameritas College also has a pending trademark application for clothing with the name "Ameritas," while the corporation states it already makes clothing and other merchandise with the Ameritas branding for employees, customers and university students within its programs, according to the complaint.

The corporation argues in the complaint, because an online search of "Ameritas" would have provided results revealing the business, the infringement was intentional and made to grow the college's business "unfairly."

According to the complaint, the corporation has since contacted the college through counsel and demanded a cease and desist from using the "Ameritas" name, although it claims the college has refused.

The corporation accuses the college in the complaint of infringement of a federal mark, common law mark infringement, unfair competition, conversion, slander of title and unjust enrichment.

The corporation asks in the complaint for an award for disgorgement of the college's profits and any other benefits it received through the use of the "Ameritas" name. It also asks for an award for actual damages sustained as a result of the college's "infringement and unfair competitive practices."

The corporation asked in the complaint for an award for punitive damages arising from the college's use of the name and for the corporation's attorney fees and costs.

According to the complaint, the corporation is asking for an order affirming the "Ameritas" name is the rightful intellectual property of the corporation and cannot be used by other entities without express consent and license from the corporation. It also asks in the complaint for an order for the college to cease and desist use of the name, withdraw its pending trademark and transfer its URL to the corporation.

The corporation is demanding a trial by jury.

Huntington Junior College President Fred Fransen told The Herald-Dispatch in February he decided to rename the college, as the word "junior" may have connotations meaning "not quite as good" or "less serious."

He said the word "Ameritas" fits inside a website URL and "We believe deeply in the spirit of America." He said the middle of the name includes the word "merit."

According to a letter sent in March to Ameritas Life Insurance Corp. attorneys via the legal counsel of Ameritas College, Alexis N. Degler of Barnes and Thornburg, that was provided to The Herald-Dispatch on Monday, the college does not believe it has infringed on the rights of the corporation, as "owning a federal trademark registration does not grant a trademark owner the exclusive right to use a mark across all goods and services."

Degler goes on to say in the letter that services provided by the two companies are different, and while the corporation offers services to businesses, the college provides services to individual consumers.

"There is nothing to suggest that the highly sophisticated consumers would be confused by the use of a similar mark in connection with two very different services," Degler said in the letter.

"There is simply no evidence to support an argument that a consumer is likely to be confused in this instance. As such, Ameritas College does not feel compelled to comply with the demands set forth in your letter."

Still, Degler said in the letter it may enter into a "coexistence agreement" that clearly describes each of the parties' specific rights.