ESTTA Tracking number:
`
`Filing date:
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`ESTTA1318073
`10/25/2023
`
`Proceeding No.
`
`Filing Party
`
`Other Party
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`Pending Motion
`
`Attachments
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92083428
`
`Defendant
`Routine Care, Inc.
`
`Plaintiff
`Chronos Investment & Consulting
`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
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`Routine Care-Motion to Suspend.pdf(153937 bytes )
`Routine Care-Motion to Suspend Exhibit A.pdf(159006 bytes )
`Routine Care-Motion to Suspend Exhibit C.pdf(64969 bytes )
`Routine Care-Motion to Suspend Exhibit B-1.pdf(4374484 bytes )
`Routine Care-Motion to Suspend Exhibit B-2.pdf(2066865 bytes )
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`Consent Motion for Suspension in View of Civil Proceeding
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`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Routine
`Care, Inc. hereby requests suspension of this proceeding pending a final determination of the civil action.
`Trademark Rule 2.117.
`Routine Care, Inc. has secured the express consent of all other parties to this proceeding for the suspension
`requested herein.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this submission has been served upon all parties, at their ad-
`dress of record by Email on this date.
`Respectfully submitted,
`/Elliott Williams/
`Elliott Williams
`elliott.williams@stoel.com, josh.gigger@stoel.com, elena.miller@stoel.com, tm-slc@stoel.com, dock-
`etclerk@stoel.com
`10/25/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`Chronos Investment & Consulting Corp. )
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`)
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`)
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`Petitioner,
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`)
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`v.
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`)
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`)
`Routine Care, Inc.
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`)
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`)
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`Registrant.
`)
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`REGISTRANT’S MOTION TO SUSPEND PENDING OUTCOME OF CIVIL ACTION
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`
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`Registrant Routine Care, Inc. (“Registrant” or “Routine Care”) moves to suspend this
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`proceeding in light of a pending civil action in federal district court involving Chronos
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`Investment & Consulting Corp. (“Petitioner” or “Chronos” as a defendant) and Routine Care (as
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`a plaintiff) that may affect the proceedings before the Trademark Trial and Appeal Board (the
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`“Board”).
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`
`
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`1. On August 24, 2023, Routine Care filed a Complaint in the United States District Court
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`for the Eastern District of Texas Sherman Division seeking relief for trademark
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`infringement and unfair competition. Case No. 4:23-CV-767-ALM as shown in the
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`Complaint is attached as Exhibit A. On September 19, 2023, Chronos filed an Answer to
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`Complaint and Counterclaims, attached as Exhibit B. On October 10, 2023, Routine Care
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`filed an Answer and Affirmative Defenses to Counterclaims, attached as Exhibit C.
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`2. On October 16, 2023, Chronos petitioned the Board to cancel Routine Care’s U.S.
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`Trademark Registration No. 6950528, claiming that it is merely descriptive.
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`121231248.1 0072663-00002
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`1
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`

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`3. Whenever it “come[s] to the attention of the Trademark Trial and Appeal Board that a
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`party or parties to a pending case are engaged in a civil action . . . which may have a
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`bearing on the case, proceedings before the Board may be suspended until termination of
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`the civil action . . . .” 37 C.F.R. § 2.117(a); see also TBMP § 510.02(a). Indeed, “[i]t is
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`the policy of the Board to suspend proceedings when the parties are involved in a civil
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`action which may be dispositive of or have a bearing on the Board case.” Arcadia Grp.
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`Brands Ltd. v. Studio Moderna SA, 99 U.S.P.Q.2d 1134 (TTAB 2011); see Dallas C.
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`Brown Jr. v. Courtney L. Bishop, Can. No. 92050965, 2010 WL 2946844, at *3 (TTAB
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`2010). “A proceeding is considered to have been finally determined when an order or
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`ruling that ends litigation has been rendered, and no appeal has been filed, or all appeals
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`filed have been decided and the time for any further review has expired.” Monster Energy
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`Company v. William J. Martin, 125 USPQ2d 1774, 1782 fn.13 (TTAB 2018) (quoting
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`TBMP § 510.02(b)).
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`4. Both Chronos and Routine Care are parties to federal district court case and this
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`proceeding, with the dispute regarding the same marks. Because the district court action
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`concerns the marks and registrations at issue in this proceeding and will address the same
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`or similar issues as those raised in this proceeding, judicial economy would be served by
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`suspending this proceeding. See TBMP § 510.02(a).
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`5. Based on the foregoing, Routine Care respectfully requests that this proceeding be
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`suspended pending disposition of Routine Care, Inc. v. Chronos Investment and
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`Consulting Corp., Case No. 4:23-CV-767-ALM in the United States District Court for
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`the Eastern District of Texas Sherman Division.
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`
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`121231248.1 0072663-00002
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`2
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`Dated: October __, 2023.
`25
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`Respectfully submitted,
`
`_______________________________
`Joshua Gigger
`Elliott J. Williams
`STOEL RIVES LLP
`201 S Main Street, Suite 1200,
`Salt Lake City Utah 84111
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`Attorneys for Registrant
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`121231248.1 0072663-00002
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`3
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`CERTIFICATE OF SERVICE
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`I hereby certify that I served the foregoing MOTION TO SUSPEND PENDING
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`OUTCOME OF CIVIL ACTION on the following named persons on the date indicated
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`below by:
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`- mailing with postage prepaid
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`-
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`-
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`-
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`-
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`hand delivery
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`facsimile transmission
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`overnight delivery
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`e-mail attachment in PDF format
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`to said persons a true copy thereof, contained in a sealed envelope, addressed to said persons
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`at their last-known address indicated below.
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`CHRISTIAN SANCHELIMA, ESQ.
`SANCHELIMA & ASSOCIATES, P.A.
`235 S.W. Le Jeune Road
`Miami, FL 33134
`
`LIANY ESTEVEZ, ESQ.
`SANCHELIMA & ASSOCIATES, P.A.
`235 S.W. Le Jeune Road
`Miami, FL 33134
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`DATED: October __, 2023.
`25
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`
`
`/Elliott J. Williams/
`Elliott J. Williams
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`121231248.1 0072663-00002
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`4
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`Exhibit A
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`Plaintiff’s Complaint for Routine Care, Inc. v. Chronos Investment and Consulting Corp., Case
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`No. 4:23-CV-767-ALM in the United States District Court for the Eastern District of Texas
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`
`
`
`
`Sherman Division.
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`121231248.1 0072663-00002
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`5
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`

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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 1 of 16 PageID #: 1
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`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
`
`
`
`COMPLAINT FOR TRADEMARK
`INFRINGEMENT AND UNFAIR
`COMPETITION
`
`DEMAND FOR JURY TRIAL
`
`Case No.
`
`
`
`
`ROUTINE CARE, INC.,
`a Texas corporation,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`CHRONOS INVESTMENT AND
`CONSULTING CORP.,
`a Florida corporation,
`
`
`
`
`
`
`Defendant.
`
`
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`120461462.1 0072663-00001
`
`1
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`

`

`
`
`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 2 of 16 PageID #: 2
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`Plaintiff Routine Care, Inc. (“Plaintiff” or “Routine”) files this complaint for trademark
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`infringement against Defendant Chronos Investment and Consulting Corp. (“Defendant”) and
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`alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`In this action, Routine seeks injunctive and monetary relief for acts of trademark
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`infringement, trademark dilution, and unfair competition arising out of the Trademark Act of
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`1946, 15 U.S.C. § 1051, et seq. (the “Lanham Act”), and the common law.
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`2.
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`Routine is a Texas corporation with a principal place of business at 4128 Saguaro
`
`THE PARTIES
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`Lane, Irving, Texas.
`
`3.
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`Defendant is a Florida corporation with a registered place of business at 446 NW
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`35th Avenue, Miami, Florida.
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`JURISDICTION AND VENUE
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`4.
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`This action arises under the Lanham Act, 15 U.S.C. §§ 1114 and 1125. This
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`Court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and
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`1338. This Court has supplemental jurisdiction over state and common law claims pursuant to
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`28 U.S.C. § 1367(a).
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`5.
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`The Court has personal jurisdiction over the parties, and venue in this judicial
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`district is proper under 28 U.S.C. § 1391.
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`6.
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`This Court has specific personal jurisdiction over Defendant because, on
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`information and belief, Defendant has engaged in commercial business in and into Texas.
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`Defendant offers and sells Defendant’s infringing “Routine” branded shampoo and hair products
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`in large quantities online, including on Amazon.com. As of the time of preparing this complaint,
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`Defendant’s Accused Products (defined below) were ranked #1 of new releases in the shampoo
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`and conditioner sets category on Amazon.com. As of the time of preparing this complaint,
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`120461462.1 0072663-00001
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`2
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`

`

`
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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 3 of 16 PageID #: 3
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`Defendant’s listing on Amazon was estimated by one Amazon sales estimator to have sold over
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`3,000 of the Accused Products (defined below) in the month of July 2023. On information and
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`belief, many of the Accused Products were sold in Texas.
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`7.
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`Additionally, Defendant has targeted Texas by creating and promoting its
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`Amazon product listing page for its “Supreme Routine” branded Accused Products, and selling
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`thousands of Accused Products, after Routine sent Defendant a warning letter on June 13, 2023,
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`regarding Routine’s trademark rights in the mark ROUTINE for shampoo, and after Defendant
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`responded to Routine on July 13, 2023. On or about July 18, 2023, Defendant sent an
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`unprompted email to Routine in Texas proposing that Routine enter into a business relationship
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`with Defendant.
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`8.
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`Defendant’s wrongful conduct is causing actual harm that Defendant knows is
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`likely to be suffered in Texas. Routine has suffered actual harm from Defendant’s actions on
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`multiple occasions. On or about June 11, 2023, a customer contacted Routine in Texas with a
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`complaint about a product the customer had purchased from Defendant. The customer sent a
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`receipt from Defendant’s store as proof of purchase and contacted Plaintiff to inquire about
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`delivery of the Accused Product purchased from Defendant. The customer did not understand
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`that the customer had purchased the product from Defendant, not Routine, and concluded that
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`Routine’s customer service had performed poorly. On or about July 12, 2023, two customers
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`posted on Routine’s social media, which is managed by Routine employees in Texas, regarding
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`the customers’ purchase of Routine’s shampoo on Amazon.com. Routine’s products are not
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`available on Amazon, however. The products were Defendant’s.
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`9.
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`Even with notice of its infringement and the resulting actual confusion of
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`affiliation injuring Routine in Texas, Defendant has refused to cease use of Routine’s Mark.
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`120461462.1 0072663-00001
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`3
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`
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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 4 of 16 PageID #: 4
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`10.
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`Venue is proper in this district under at least 28 U.S.C. § 1391(b)(1) and (c)
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`because Defendant is an entity that can sue and be sued in its own name and is subject to
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`personal jurisdiction in this district as alleged above.
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`ROUTINE AND ITS RIGHTS
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`Routine owns common law and federally registered trademark rights in the mark
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`11.
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`ROUTINE (the “Mark”) for shampoo and conditioner hair care products, serums, and
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`supplements, including U.S. Reg. No. 6,950,528 for ROUTINE WELLNESS® (the
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`“Registration”).
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`12.
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`13.
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`14.
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`A true and correct copy of Routine’s Registration is attached hereto as Exhibit 1.
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`Routine’s Registration is valid and subsisting, and has not been canceled.
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`Routine’s Registration constitutes prima facie evidence of the validity of the
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`registered Mark, and of Routine’s ownership of the Registration and Mark.
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`15.
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`16.
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`Routine’s Registration has priority to July 21, 2020, its filing date.
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`Routine uses its Mark extensively in connection with its hair care products,
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`namely shampoo and conditioner, including as shown below.
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`The consuming public is familiar with Routine’s Mark through the popularity of Routine’s
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`products; through consumer awareness of Routine’s products as well-researched, plant-based
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`
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`120461462.1 0072663-00001
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`4
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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 5 of 16 PageID #: 5
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`products; and through Routine’s advertising and promoting of its genuine ROUTINE-branded
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`products including through ads, social media, unsolicited media coverage, and information.
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`17.
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`As a result of Routine’s extensive use of its Mark for more than two years, its
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`considerable sales, and its investment in consumer education and marketing, the public has come
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`to associate the ROUTINE Mark with both Routine itself and with high-quality and unique hair
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`care products and other plant-derived, research-based personal care products.
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`18.
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`The quality associated with the ROUTINE Mark has translated into substantial
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`and valuable goodwill. Routine has a dedicated following, as evidenced by its active following
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`on social media and strong continued growth even during the COVID-19 pandemic. The
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`substantial and valuable goodwill associated with the ROUTINE Mark is a valuable asset for
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`Routine’s reputation and continued growth.
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`DEFENDANT’S UNLAWFUL ACTIVITIES
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`19.
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`Upon information and belief, Defendant is doing business as “Roottina” and owns
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`and operates the website https://roottina.com as well as a Roottina storefront with related listings
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`on Amazon.com.
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`20.
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`Defendant has sold and continues to sell shampoo and conditioner products (the
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`“Accused Products”) branded with the word “Routine” or with confusingly similar variants of
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`Plaintiff’s ROUTINE Mark (the “Accused Mark”).
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`21.
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`Defendant has offered and sold a “Routine” branded shampoo and hair products
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`online, including on Amazon.com.
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`22.
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`On or about June 11, 2023, a customer contacted Routine with a complaint about
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`an Accused Product the customer had purchased from Defendant. The communication included
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`120461462.1 0072663-00001
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`5
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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 6 of 16 PageID #: 6
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`a receipt for goods purchased from Defendant. The customer did not understand that the product
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`was sold by Defendant and concluded that Routine’s customer service had performed poorly.
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`23.
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`Routine took steps to remove the Accused Products from Amazon.com, and on or
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`about June 13, 2023, Routine sent a letter to Defendant, advising Defendant of Routine’s Mark
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`and requesting Defendant to cease and desist from using Routine’s Mark or any confusingly
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`similar variant thereof.
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`24.
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`In or around July 12, 2023, Defendant re-listed its Accused Products on
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`Amazon.com with a “Supreme Routine” branding that features the word “Routine,” as below.
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`
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`25.
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`On or about that same day, July 12, 2023, customers of Routine posted on
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`Routine’s social media page that they had located Routine’s product on Amazon.com, when in
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`reality that had located Defendant’s product.
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`26.
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`On or about April 5, 2023, Defendant filed an application with the U.S. Patent and
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`Trademark Office to register the mark SUPREME ROUTINE in connection with “hair care
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`preparations.” Defendant’s application is U.S. Serial No. 97873717 (“Defendant’s
`
`Application”).
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`120461462.1 0072663-00001
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`6
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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 7 of 16 PageID #: 7
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`27.
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`In the 19 days (less than three weeks) between Defendant’s re-listing of its
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`Accused Products on Amazon.com and the end of July, 2023, Defendant sold an estimated 3,125
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`of the Accused Products (shampoo and conditioner set), on information and belief, for roughly
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`$30 per set.
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`28.
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`On information and belief, Defendant’s successful sales of the Accused Products
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`were driven and continue to be driven by consumer recognition of Routine’s Mark on the
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`Accused Products, and by consumer association of the Accused Products with Routine and
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`Routine’s Mark.
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`29.
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`On or about August 1, 2023, a customer posted the following question to
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`Defendant’s Amazon product listing for the Accused Products: “Is this the same as Routine
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`Wellness online?”
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`30.
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`Defendant responded “Certainly! We are Roottina, a USA-based brand that takes
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`pride in manufacturing high-quality products. Our commitment to excellence and customer
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`satisfaction sets us apart from other brands in the market.”
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`31.
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`32.
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`Defendant is not in any way affiliated with Plaintiff.
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`Since at least July 21, 2020, Defendant has had constructive notice of Routine’s
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`ROUTINE Mark through Routine’s use of the mark on its ROUTINE-branded products and
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`through Routine’s federal trademark application to register the ROUTINE WELLNESS® Mark,
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`which was approved as U.S. Reg. No. 6,950,528 (Exhibit 1).
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`33.
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`Since at least June 13, 2023, Defendant has been aware of Routine’s ROUTINE
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`Mark and Registration, and of Routine’s exclusive rights to use and authorize its ROUTINE
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`Mark. Defendant’s subsequent and continued use of the Accused Mark has been deliberate,
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`willful, malicious, and in reckless disregard of Routine’s rights. Defendant uses the Accused
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`120461462.1 0072663-00001
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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 8 of 16 PageID #: 8
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`Mark in bad faith with the intent to profit from Routine’s goodwill in the ROUTINE Mark and to
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`cause confusion, mistake, and deception.
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`34.
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`As a result of Defendant’s wrongful acts, Routine has suffered, and will continue
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`to suffer, irreparable injury in the form of lost goodwill, lost revenue, and injury to its reputation.
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`No monetary remedy alone can adequately compensate Routine for the harm Defendant’s
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`wrongful acts have caused Routine’s Mark, reputation, and goodwill, and for the harm that
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`Routine will suffer if Defendant is not enjoined from its wrongful acts.
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`35.
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`Defendant’s course of conduct is not warranted under law, has anticompetitive
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`effects on the market, and restrains Plaintiff’s ability to compete fairly.
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`COUNT I
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`Federal Trademark Infringement, 15 U.S.C. § 1114
`
`36.
`
`37.
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`Routine repeats and realleges each allegation above as if fully set forth herein.
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`Routine owns a valid and enforceable registration for the ROUTINE
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`WELLNESS® Mark. See Exhibit 1.
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`38.
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`Routine has continually offered and sold shampoo and conditioner and other
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`personal care products using the ROUTINE WELLNESS® Mark since at least as early as July
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`2021.
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`39.
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`Defendant has infringed and continues to infringe the ROUTINE WELLNESS®
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`Mark by, inter alia, featuring the word “Routine” prominently, in the location and nature of a
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`product brand, on Defendant’s shampoo and conditioner products, which are identical goods to
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`Routine’s products sold in connection with Routine’s Mark. Such usage by Defendant is likely
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`to cause confusion, mistake, or deception as to a connection between Routine and Defendant.
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`120461462.1 0072663-00001
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`8
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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 9 of 16 PageID #: 9
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`40.
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`Defendant’s use of the “Routine” brand commenced after Routine filed an
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`application to register and began using the ROUTINE WELLNESS® Mark. Defendant’s revised
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`use of “Routine” brand commenced after the Registration issued.
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`41.
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`Defendant has actively fomented confusion between Defendant’s Accused
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`Products and Routine’s Mark. For example, when a customer asked if Defendant’s Accused
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`Products were “the same as Routine Wellness online?,” Defendant’s response began “Certainly!”
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`42.
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`Defendant’s use of the “Routine” brand has already caused confusion or mistake
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`in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114. It is likely that if not
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`stopped, such confusion, mistake, and deception will continue.
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`43.
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`Defendant’s use of the “Routine” brand has also caused and is likely to cause
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`initial interest confusion and actual confusion among customers and potential consumers of
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`Routine’s products.
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`44.
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`Defendant will continue, unless enjoined, to cause irreparable harm to, and injury
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`to the goodwill and reputation of, Routine.
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`45.
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`As a direct and proximate result of Defendant’s infringement, Routine has also
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`suffered monetary loss in an amount to be determined at trial, including without limitation lost
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`sales of Routine’s shampoo and conditioner products.
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`46.
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`In addition to the damages sustained, Routine is also entitled to recover
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`Defendant’s profits as provided under Section 35 of the Lanham Act, 15 U.S.C. § 1117(a).
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`47.
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`Routine is also entitled to recover its costs and reasonable attorneys’ fees
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`associated with this action pursuant to 15 U.S.C. § 1117(a).
`
`48.
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`On information and belief, Defendant’s activities were taken with knowledge of
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`Routine’s statutory rights, and thus constitute deliberate, willful, and/or intentional infringement.
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`120461462.1 0072663-00001
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`9
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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 10 of 16 PageID #: 10
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`As a result, Routine is entitled, pursuant to 15 U.S.C. § 1117, to treble damages, together with
`
`interest thereon, in an amount to be determined at trial.
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`49.
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`Routine is also entitled to an order pursuant to 15 U.S.C. § 1119 directing the U.S.
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`Patent and Trademark Office to refuse and/or cancel any registration result from Defendant’s
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`Application based on likelihood of confusion with Routine’s Registration.
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`SECOND CLAIM FOR RELIEF
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`Federal Unfair Competition and False Advertising, 15 U.S.C. § 1125(a)
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`50.
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`Routine repeats and incorporates by reference the allegations set forth above as
`
`though fully set forth herein.
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`51.
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`Routine is the owner of the ROUTINE Mark, through substantial and continuous
`
`use since at least July 2020, and the consuming public recognizes the ROUTINE Mark as being
`
`distinctive and identifying the unique, high-quality goods and services associated with Routine.
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`52.
`
`Notwithstanding Routine’s well-known prior rights in the ROUTINE Mark,
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`Defendant has used and continues to feature “Routine” in its product labels for the Accused
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`Products in commerce by, among other things, displaying the Accused Mark without consent and
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`using the phrase “Routine” in commerce in connection with the sale, distribution, and advertising
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`of Defendant’s shampoo and conditioner products such that the usage is likely to cause
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`confusion, mistake, or deception as to a connection between Routine and Defendant.
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`53.
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`Defendant’s use of the Accused Mark in connection with its products has already
`
`caused, and is likely to continue to cause, confusion, mistake, or deception as to the affiliation,
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`sponsorship, or approval of such services.
`
`54.
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`Defendant’s use of the Accused Mark is also likely to cause at least initial interest
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`and other confusion among consumers and potential consumers of Routine’s products.
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`120461462.1 0072663-00001
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`10
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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 11 of 16 PageID #: 11
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`55.
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`Defendant’s actions constitute unfair competition and trademark/service mark
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`infringement in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
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`56.
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`Defendant will continue, unless enjoined, to cause irreparable harm to, and injury
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`to the goodwill and reputation of, Routine.
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`57.
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`As a direct and proximate result of Defendant’s wrongful acts, Routine has
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`suffered pecuniary damages from Defendant’s actions in an amount to be determined at trial.
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`58.
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`In addition to the damages sustained, Routine is entitled to recover Defendant’s
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`profits as provided under Section 35 of the Lanham Act, 15 U.S.C. § 1117(a).
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`59.
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`Routine is entitled to recover its costs and reasonable attorneys’ fees associated
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`with this action pursuant to 15 U.S.C. § 1117(a).
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`60.
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`On information and belief, Defendant’s activities were taken with knowledge of
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`Routine’s Mark and rights therein, and thus constitute deliberate, willful, and/or intentional
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`infringement. Routine is further entitled to exemplary and/or punitive damages, together with
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`interest thereon, in an amount to be determined at trial.
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`61.
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`Routine is also entitled to an order pursuant to 15 U.S.C. § 1119 directing the U.S.
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`Patent and Trademark Office to refuse and/or cancel any registration result from Defendant’s
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`Application based on likelihood of confusion with Routine’s Registration.
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`THIRD CLAIM FOR RELIEF
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`Common Law Trademark Infringement and Unfair Competition
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`62.
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`Routine repeats and incorporates by reference the allegations set forth above as
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`though fully set forth herein.
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`120461462.1 0072663-00001
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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 12 of 16 PageID #: 12
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`63.
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`Routine is the owner of the ROUTINE Mark, including the Registration, and the
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`consuming public recognizes the ROUTINE Mark as distinctive, and as an identifier of the
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`unique and high-quality goods and services associated with Routine.
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`64.
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`65.
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`66.
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`Routine’s ROUTINE Mark is inherently distinctive.
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`Routine’s ROUTINE Mark has secondary meaning.
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`Notwithstanding Routine’s well-known prior rights in the ROUTINE Mark,
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`Defendant has used and continues to use the “Routine” Brand in commerce by, among other
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`things, displaying the Accused Mark without consent and using the Accused Mark in commerce
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`in connection with the sale, distribution, and advertising of Defendant’s Accused Products in a
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`manner that is likely to cause confusion, mistake, or deception as to a connection between
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`Routine and Defendant.
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`67.
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`Defendant’s use of the Accused Mark in connection with shampoo and
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`conditioner hair products is likely to cause confusion, mistake, or deception as to the origin,
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`sponsorship, or approval of such goods.
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`68.
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`Defendant’s use of the Accused Mark is also likely to cause initial interest and
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`other confusion among consumers and potential consumers of Routine’s goods and services.
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`69.
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`Defendant’s actions constitute common law trademark infringement and unfair
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`competition.
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`70.
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`On information and belief, Defendant acted with full knowledge of Routine’s
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`common law rights to the ROUTINE Mark, thus demonstrating an intentional and/or willful
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`intent to profit on the goodwill of the ROUTINE Mark.
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`71.
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`Defendant will continue, unless enjoined, to cause irreparable harm to, and injury
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`to the goodwill and reputation of, Routine.
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`120461462.1 0072663-00001
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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 13 of 16 PageID #: 13
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`72.
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`As a direct and proximate result of Defendant’s wrongful acts, Routine has
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`suffered pecuniary damages from Defendant’s actions in an amount to be determined at trial.
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`73.
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` On information and belief, Defendant’s activities were taken with knowledge of
`
`Routine’s Mark and rights therein, and thus constitute deliberate, willful, and/or intentional
`
`infringement. Routine is further entitled to exemplary and/or punitive damages, together with
`
`interest thereon, in an amount to be determined at trial.
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`
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`WHEREFORE, Plaintiff prays for relief as follows:
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`PRAYER FOR RELIEF
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`1. For a declaration that Defendant’s use of the ROUTINE Mark: (1) violates Section 32(1) of
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`the Lanham Act, 15 U.S.C. § 1114; (2) violates Section 43(a) of the Lanham Act, 15 U.S.C.
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`§ 1125(a); (3) infringes Routine’s rights under the common law; and (4) constitutes unfair
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`competition under the common law;
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`2. For an order preliminarily and permanently enjoining and restraining Defendant and its
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`officers, agents, representatives, employees, attorneys, successors, assigns, and affiliates, and
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`any persons in active concert or participation with any of them, from (1) infringing the
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`ROUTINE Mark; (2) using any colorable imitation or confusingly similar variation of the
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`ROUTINE Mark; or (3) otherwise engaging in unfair competition;
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`3. For an order that Defendant file with the Court and serve on Routine within 30 days after
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`issuance of an injunction a report in writing and under oath setting forth in detail the manner
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`and form in which Defendant has complied with the injunction, pursuant to 15 U.S.C.
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`§ 1116;
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`4. For an award of Routine’s actual and statutory damages incurred as a result of Defendant’s
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`120461462.1 0072663-00001
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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 14 of 16 PageID #: 14
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`wrongful conduct, and disgorgement of Defendant’s profits derived therefrom, in an amount
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`to be determined at trial;
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`5. For punitive damages, including an amount equal to three times the greater of Defendant’s
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`profits or Routine’s damages resulting from Defendant’s intentionally wrongful acts;
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`6. For Routine’ costs and reasonable attorneys’ fees incurred in this action;
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`7. For pre- and post-judgment interest; and
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`8. For such other and further relief as the Court may deem just and proper.
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`DEMAND FOR JURY TRIAL
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`Plaintiff demands a trial by jury as to all issues so triable.
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`DATED this 24th day of August 2023.
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`Respectfully submitted,
`
`STOEL RIVES LLP
`
`
`
` /s/Elliott J. Williams
`Elliott J. Williams, Oregon Bar No. 144835
`elliott.williams@stoel.com
`760 SW Ninth Ave., Suite 3000
`Portland, OR 97205
`Telephone: (503) 294-9571
`
`Joshua G. Gigger, Utah Bar No. 234508
`josh.gigger@stoel.com
`201 S Main Street, Suite 110
`Salt Lake City, UT 84111
`Telephone: (801) 428-6311
`
`Attorneys for Plaintiff Routine Care, Inc.
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`120461462.1 0072663-00001
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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 15 of 16 PageID #: 15
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`Reg. No. 6,950,528
`
`Registered Jan. 10, 2023
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`Routine Care, Inc.  (TEXAS CORPORATION)
`4340 Arroyo Drive
`Irving, TEXAS 75063
`
`Int. Cl.: 3
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`Trademark
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`Principal Register
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`CLASS 3: Hair shampoo
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`FIRST USE 7-31-2021; IN COMMERCE 7-31-2021
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`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO
`ANY PARTICULAR FONT STYLE, SIZE OR COLOR
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`No claim is made to the exclusive right to use the following apart from the mark as
`shown: "WELLNESS"
`
`SER. NO. 90-064,246, FILED 07-21-2020
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`

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`Case 4:23-cv-00767 Document 1 Filed 08/24/23 Page 16 of 16 PageID #: 16
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`REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`Requirements in the First Ten  Years*
`What and When to File:
`
`•
`
`First Filing Deadline:  You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
`
`years after the registration date.  See 15 U.S.C. §§1058, 1141k.  If the declaration is accepted, the
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`registration will continue in force for the remainder of the ten-year period, calculated from the registration
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`date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
`
`•
`
`Second Filing Deadline:  You must file a Declaration of Use (or Excusable Nonuse) and an Application
`
`for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
`•
`
`You must file a Declaration of Use (or Excusable Nonuse)  and  an  Application for Renewal
`between every 9th and 10th-year period, calculated from the registration date.*
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above with the
`payment of an additional fee.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS:  The holder of an international registration with an
`extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use (or
`Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO). The
`time periods for filing are based on the U.S. registration date (not the international registration date).  The
`deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for nationally
`issued registrations.  See 15 U.S.C. §§1058, 1141k.  However, owners of international registrations do not file
`renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying international
`registration at the International Bureau of the  World Intellectual Property Organization, under Article 7 of the
`Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the date of the
`international registration.  See 15 U.S.C. §1141j.  For more information and renewal forms for the international
`registration, see http://www.wipo.int/madrid/en/.
`
`NOTE:  Fees and requirements for maintaining registrations are subject to change.  Please check the
`USPTO website for further information.  With the exception of renewal applications for registered
`extensions of protection, you can file the registration maintenance docu