Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA858648
`11/15/2017
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91230711
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Defendant
`Copasetic Clothing Ltd
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`ANA CLAUDIA C GUEDES
`GUEDES LAW OFFICE
`4730 NOYES ST APT 301
`SAN DIEGO, CA 92109-3695
`UNITED STATES
`Email: ana@guedeslaw.com, anaclaudiaguedes@mac.com
`
`Motion to Suspend for Civil Action
`
`Lisa M. Martens
`
`LMartens@sheppardmullin.com, Smorefield@sheppardmullin.com, dmtmdock-
`eting@sheppardmullin.com, SHotaling@sheppardmullin.com
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`/Lisa Martens/
`
`11/15/2017
`
`Request to Suspend Oppositions Pending Outcome of Civil Action.pdf(1605535
`bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`86/868,480; 86/868,424; 87/170,905; 87/170,703;
`In the Matter of Application Serial Nos..
`87/109,620; 87/109,619; 87/109,591; 85/404,760
`
`
`ROOTS CANADA CORPORATION, a
`Canadian corporation,
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`
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`
`
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`Opposition Nos. 91230711 (parent)
`91230801
`91233739
`91234500
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`
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`Opposer,
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`-v-
`
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`COPASETIC CLOTHING LTD., a Canadian
`corporation,
`
`
`Applicant.
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`REQUEST TO SUSPEND OPPOSITIONS PENDING OUTCOME OF CIVIL ACTION
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`
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`This is in response to the Notice of Oppositions filed by Roots Canada Corporation, which
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`were mailed to Applicant on October 20, 2016, October 26, 2016, March 31, 2017, and May 11,
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`2017.
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`REMARKS
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`
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`Applicant, through its Attorneys, respectfully requests that Opposition Nos. 91230711
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`(parent); 91230801; 91233739; and 91234500 be suspended pending the outcome of Civil Action
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`No. 17CV2300 GPC KSC (against Opposer Roots Canada Corporation) currently being litigated
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`in the United States District Court for the Southern District of California, San Diego division. 37
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`CFR § 2.117(a); TBMP § 510.02(a).
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`
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`Applicant encloses herewith a copy of its Complaint for (1) Declaratory Judgment of Non-
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`Infringement of Trademarks; and (2) Registration of Federal Trademarks.
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`SMRH:484733468.1
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`Date: November 15, 2017
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`Please apply any charges or credits to Deposit No. DA504561.
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`SHEPPARD MULLIN RICHTER & HAMPTON, LLP
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`By: /Lisa M. Martens/_______________________
`Lisa M. Martens
`Lmartens@sheppardmullin.com
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`Telephone: (858) 720-7491
`Facsimile (858) 509-3691
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`Attorneys for Applicant Copasetic Clothing LTD.
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`SMRH:484733468.1
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`-2-
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the foregoing REQUEST TO
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`SUSPEND OPPOSITIONS PENDING OUTCOME OF CIVIL ACTION was served this 15th day
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`of November, 2017 via email to counsel for Opposer, Roots Canada Corporation at the following
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`email addresses: emaluf@seyfarth.com; lgregory@seyfarth.com, and to co-counsel for Applicant,
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`Copasetic Clothing LTD at ana@guedeslaw.com
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`/Lisa Martens/___________________
`Lisa Martens
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`SMRH:484733468.1
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`-3-
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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.1 Page 1 of 23
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`
`
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`LISA MARTENS, Cal. Bar No. 195824
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`858.720.8900
`lmartens@sheppardmullin.com
`
`GUEDES LAW OFFICE
`ANA CLAUDIA GUEDES, Cal Bar: 244386
`737 Pearl Street, Suite 201
`La Jolla, CA 92037
`858-232-3170
`ana@guedeslaw.com
`
`Attorneys for Plaintiffs
`COPASETIC CLOTHING LTD.
`ROOTS OF, INC.
`
`
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`COPASETIC CLOTHING LTD., a
`Canadian corporation; ROOTS OF,
`INC., a California corporation,
`
`
`Plaintiffs,
`
`
`
` -v-
`
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`ROOTS CANADA CORPORATION, a
`Canadian corporation,
`
`
`Defendant.
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` Case No.:
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`'17CV2300
`
`GPC
`
`KSC
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`COMPLAINT FOR
`
`
`(1) DECLARATORY JUDGMENT
`OF NON-INFRINGEMENT OF
`TRADEMARKS;
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`(2) REGISTRATION OF FEDERAL
`TRADEMARKS
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`SMRH:484608626.4
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`Case No.
`COMPLAINT
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`

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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.2 Page 2 of 23
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`Plaintiffs Copasetic Clothing Ltd. and Roots Of, Inc. (collectively,
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`“Copasetic”) hereby state the following allegations for their Complaint against
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`Defendant Roots Canada Corporation (“Roots Canada”).
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`1.
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`Copasetic seeks protection against a threat of trademark litigation by
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`INTRODUCTION
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`Roots Canada over the use of the word ‘roots’ in connection with the sale of
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`clothing and apparel. Copasetic has a reasonable apprehension of imminent
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`litigation against it by Roots Canada.
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`2.
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`Copasetic has openly, continuously, and substantially used the words
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`‘roots of fight’ on its products since at least as early as 2011, with its primary sales
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`market being the United States.
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`3.
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`Copasetic has successfully created a lifestyle clothing brand that honors
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`the legacy of well-known athletes under the brands ROOTS OF FIGHT, ROOTS
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`OF FOOTBALL, ROOTS OF BASKETBALL and ROOTS OF BASEBALL.
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`4.
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`Copasetic intends to feature icons of other sports, under brands that will
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`include ROOTS OF WRESTLING, ROOTS OF SOCCER, ROOTS OF HOCKEY,
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`and others.
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`5.
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`Copasetic owns US trademark registration Nos. 4870913, 4782474, and
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`4902083 (“Copasetic Registrations”) and has applied for an additional fourteen US
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`trademarks (“Copasetic Applications”), all of which are identified below:
`Status & Dates
`Goods/Services
`Trademark
`Reg. No. 4782474
`Filed: 8/19/2011
`Class 25: clothing,
`
`Registered: 7/28/2014
`namely, sweatshirts,
`tee-shirts, shirts, tank
`tops, hooded
`sweatshirts, caps.
`
`First Use: 9/21/2011
`Reg. No. 4870913
`
`
`
`Filed: 8/19/2011
`Registered: 12/15/15
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`Class 25: clothing
`namely, sweatpants,
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`
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`SMRH:484608626.4
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`
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`-1-
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`Case No.
`COMPLAINT
`
`

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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.3 Page 3 of 23
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`
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`First Use:9/21/2015
`Reg. No. 4902083
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`MMA BLOODLINES
`(word mark)
`
`First Use: 9/21/2011
`Serial No. 85404760
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`
`
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`Intent to Use filing basis.
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`
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`Serial No. 86868424
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`
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`First Use: 8/1/2011
`Serial No. 86868480
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`ROOTS OF FIGHT
`(word mark)
`
`First Use: 8/1/2011
`
`jogging suits, shorts,
`pants, jackets, sweaters,
`hats, visors, wind
`resistant jackets.
`
`Class 25: Clothing,
`namely, sweatshirts,
`tee-shirts, shirts, tank
`tops, hooded
`sweatshirts, caps.
`
`Class 18: Carry bags
`namely, athletic bags, duffel
`bags, gym bags, fanny
`packs, school bags,
`backpacks, knapsacks
`Class 25: Clothing, namely,
`warm-up suits, sweatshirts,
`sweatpants, tee-shirts, shirts,
`tank tops, jogging suits,
`shorts, pants, slacks, jackets,
`neckties, bandanas,
`pyjamas, wristbands,
`sweaters, hooded
`sweatshirts, turtlenecks,
`underwear, scarves,
`headbands, hats, caps,
`visors, wind resistant jackets
`Class 25: Caps; Shirts’
`Sweatshirts; Tank-tops;
`Tee shirts; Hooded
`sweatshirts.
`
`Filed: 8/19/2011
`Registered: 2/16/16
`
`Filed: 8/23/2011
`Published: 4/11/17
`Opposed: 5/11/2017
`
`
`Filed: 1/7/2016
`Published: 10/18/16
`Opposed: 10/26/2016
`
`
`Filed: 1/7/2016
`Published: 6/28/2016
`Opposed: 7/27/2016
`
`
`Class 25: Caps; Shirts;
`Sweatshirts; Tank-tops;
`Hooded sweatshirts;
`Sweat shirts; T-shirts.
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`
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`SMRH:484608626.4
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`
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`-2-
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`Case No.
`COMPLAINT
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`

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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.4 Page 4 of 23
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`
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`Serial No. 87109591
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`ROOTS OF BASEBALL
`(word mark)
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`First Use: 1/1/2015
`
`Serial No. 87109619
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`ROOTS OF FOOTBALL
`(word mark)
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`Intent to Use filing basis.
`Serial No. 87109620
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`ROOTS OF WRESTLING
`(word mark)
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`Intent to Use filing basis.
`Serial No. 87170703
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`ROOTS OF BASKETBALL
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`(word mark)
`Intent to Use filing basis.
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`Serial No. 87170820
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`Filed: 9/14/2016
`Published: 9/26/2017
`Opposed: 10/26/2017
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`
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`First Use: 5/1/2016
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`
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`Filed: 12/6/2016
`Published: 12/6/2016
`Opposed: 3/31/2017
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`Class 25: Caps; shirts;
`sweatshirts; tank tops;
`tee-shirts; hooded
`sweatshirts.
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`Filed:7/20/16
`Published: 12/6/2016
`Opposed: 12/27/2016
`
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`Class 25: Caps; Shirts;
`Sweatpants; Tank tops;
`Sweat shirts; Tee shirts.
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`Filed: 7/20/16
`Published: 12/6/2016
`Opposed: 3/31/2017
`
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`Class 25: Caps; Shirts;
`Sweatpants; Tank Tops;
`Sweat shirts; Tee shirts.
`
`Filed: 9/14/2016
`Published: 12/13/2016
`Opposed: 3/31/2017
`
`
`Class 25: Jackets;
`Shirts; Shorts;
`Sweatpants; Athletic
`apparel, namely, shirts,
`pants, jackets, footwear,
`hats and caps, athletic
`uniforms; Graphic T-
`shirts; Hooded sweat
`shirts; Long-sleeved
`shirts; Sweat shirts; Tee
`shirts.
`Class 25: Athletic
`apparel, namely, shirts,
`pants, jackets, footwear,
`hats and caps, athletic
`uniforms; jackets;
`shirts; shorts;
`sweatpants; graphic t-
`shirts; hooded sweat
`shirts; long-sleeved
`shirts; sweat shirts; tee
`shirts.
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`SMRH:484608626.4
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`-3-
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`Case No.
`COMPLAINT
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`

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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.5 Page 5 of 23
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`
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`Serial No. 87170905
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`ROOTS OF SOCCER
`(word mark)
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`First Use: 5/1/2016
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`Filed: 9/14/2016
`Published: 12/13/2016
`Opposed: 3/31/2017
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`Serial No. 87222787
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`
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`First Use: 1/1/2016
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`Serial No. 87222827
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`Filed: 11/1/2016
`Published: 8/22/2017
`Opposed: 9/20/2017
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`
`Filed: 11/1/2016
`Published: 8/22/2017
`Opposed:
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`First Use: 11/1/2016
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`
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`Serial No. 87222889
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`ROOTS OF HOCKEY
`(word mark)
`First Use: 1/1/2016
`
`
`Filed: 11/1/2016
`Published: 8/22/2017
`Opposed: 10/26/2017
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`Class 25: Athletic
`apparel, namely, shirts,
`pants, jackets, footwear,
`hats and caps, athletic
`uniforms; jackets;
`shirts; shorts;
`sweatpants; graphic t-
`shirts; hooded sweat
`shirts; long-sleeved
`shirts; sweat shirts; tee
`shirts.
`Class 25: Hats; Jackets;
`Shirts; Shorts;
`Sweatpants; Graphic T-
`shirts; Sweat shirts; Tee
`shirts; Wearable
`garments and clothing,
`namely, shirts.
`
`Class 25: Hats; Jackets;
`Shirts; Shorts;
`Sweatpants;
`Sweatshirts; Athletic
`shirts; Graphic T-shirts;
`Hooded sweatshirts;
`Hooded sweat shirts;
`Long-sleeved shirts;
`Sports shirts; Sweat
`shirts; T shirts.
`Class 25: Hats; Jackets;
`Shirts; Shorts;
`Sweatpants;
`Sweatshirts; Athletic
`shirts; Graphic T-shirts;
`Hooded sweatshirts;
`Hooded sweat shirts;
`Long-sleeved shirts;
`Sports shirts; Sweat
`shirts; T-shirts; Tee
`shirts.
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`Case No.
`COMPLAINT
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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.6 Page 6 of 23
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`Serial No. 87222922
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`First Use: 1/1/2016
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`Serial No. 87222956
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`First Use: 11/1/2016
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`Filed: 11/1/2016
`Published: 8/22/2017
`Opposed: 9/20/2017
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`Filed: 11/1/2016
`Published: 8/29/2017
`Opposed: 10/26/2017
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`Class 25: Hats; Jackets;
`Shirts; Shorts;
`Sweatpants;
`Sweatshirts; Athletic
`shirts; Hooded
`sweatshirts; Long-
`sleeved shirts; Sport
`shirts; Sports shirts;
`Sweat shirts; T-shirts;
`Tee shirts; Tee-shirts.
`Class 25: Hats; Jackets;
`Shirts; Shorts;
`Sweatpants;
`Sweatshirts; Athletic
`shirts; Graphic T-shirts;
`Hooded sweatshirts;
`Hooded sweat shirts;
`Long-sleeved shirts;
`Shirts and short-sleeved
`shirts; Sports shirts;
`Sweat shirts; T-shirts;
`Tee shirts; Tee-shirts
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`6.
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`Defendant has opposed all of the Copasetic Applications, based on
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`Defendant’s allegation that the Copasetic Applications are likely to confuse and/or
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`mislead consumers.
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`7.
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`Defendant’s several trademark oppositions have been consolidated into
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`one opposition proceeding before the Trademark Trial and Appeal Board (“TTAB”),
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`Opposition proceeding No. 91230711 (“Defendant’s Opposition”).
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`8.
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`Throughout the six-plus years of very public, very successful existence
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`of the ROOTS OF FIGHT brand, the Plaintiffs have never once encountered any
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`instance of actual confusion by a customer or potential customer, or any inquiry as
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`to an affiliation with Roots Canada.
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`9.
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`On information and belief, throughout the six-plus years of very public,
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`very successful existence of the ROOTS OF FIGHT brand, Roots Canada has never
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`SMRH:484608626.4
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`-5-
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`Case No.
`COMPLAINT
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`

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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.7 Page 7 of 23
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`once encountered any instance of actual confusion by a customer or potential
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`customer, or any inquiry as to an affiliation with Plaintiffs.
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`10. Consumers are not likely to believe any of Copasetic’s apparel is
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`manufactured by or otherwise affiliated with Roots Canada, or vice versa.
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`11. Copasetic should be permitted to continue its use, and its trademark
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`applications should register on the Principal Register. This matter is ripe for a
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`declaratory judgment of non-infringement.
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`12. Plaintiff Copasetic Clothing, Ltd., is a Canadian corporation, having its
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`PARTIES
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`principal place of business at 195 West 3rd Avenue, Vancouver, BC V5Y 1E6,
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`Canada.
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`13. Plaintiff Roots Of, Inc., is a California corporation, having its address
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`for service of process at 4730 Noyes Street Suite 301 San Diego, CA 92109.
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`14. On information and belief, Defendant Roots Corporation Canada is a
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`Canadian corporation with its principal place of business at 1400 Castlefield
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`Avenue, Toronto, ON M6B 4C4, Canada.
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`15. On information and belief, Defendant Roots Corporation Canada has a
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`retail store located at 1505 Abbot Kinney Blvd. Venice, CA 90291
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`16. On information and belief, Roots Corporation Canada is the owner of
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`the claimed trademarks that Roots Canada has asserted against Roots Of, as set
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`forth, infra.
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`JURISDICTION AND VENUE
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`17. This Court has subject matter jurisdiction over this action pursuant to
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`15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338, and 2201-02 because an actual case
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`or controversy exists between Copasetic and Roots Canada involving substantial
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`trademark claims arising under the Lanham Act, and because Copasetic is entitled to
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`declaratory judgment regarding those claims.
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`SMRH:484608626.4
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`-6-
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`Case No.
`COMPLAINT
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`

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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.8 Page 8 of 23
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`18. This Court has personal jurisdiction over Roots Canada, because Roots
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`Canada conducts business in the state of California, both through online sales and
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`the presence of a physical retail store.
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`19. Venue is appropriate in this district pursuant to 28 U.S.C. § 1391(b)
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`because a substantial part of the events or omissions giving rise to Copasetic’s
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`claims have occurred in this district.
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`20. Plaintiffs’ goods are manufactured, packaged, advertised, and sold in
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`Southern California, including in this judicial district.
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`21. Defendant’s goods are advertised and sold in Southern California,
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`including in this judicial district.
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`COPASETIC AND ITS MARKS
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`22. Copasetic has successfully created a lifestyle clothing brand that honors
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`the legacy of well-known athletes under the brands ROOTS OF FIGHT, ROOTS
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`OF FOOTBALL, ROOTS OF BASKETBALL and ROOTS OF BASEBALL.
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`Copasetic has closely partnered with such American sports icons as Muhammad Ali,
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`Bruce Lee, Mike Tyson, Babe Ruth, Jackie Robinson, Lou Gehrig, Jim Brown,
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`Barry Sanders, Julius Erving, Shaquille O’Neal, among many notable others, to
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`create a brand that has achieved global notoriety and success.
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`23. Copasetic’s success has been very public for many years. Its celebrity
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`clientele includes Dwayne “The Rock” Johnson; Jay-Z; Beyonce; Mario Lopez; Guy
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`Fieri; Jamie Fox; Ronda Rousey, and many notable others- all of whom have been
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`prominently featured in the media wearing Copasetic’s ROOTS OF FIGHT,
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`ROOTS OF FOOTBALL, ROOTS OF BASEBALL and ROOTS OF FOOTBALL
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`branded apparel.
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`24. Copasetic’s success has been recognized by several prominent
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`American publications, including Forbes Magazine (“The Unconventional Story of
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`How the Roots of Fight Clothing Brand Went Viral,” published January 8, 2016)
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`SMRH:484608626.4
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`Case No.
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`and AdWeek (“How a Marketing Agency Broke All the Rules to Become a
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`Lifestyle Brand Beloved by Stars: Roots of Fight taps into the power of timeless
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`heroes,” published August 30, 2015). Copasetic has also received significant media
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`coverage in Esquire magazine, People magazine, Men’s Fitness magazine, GQ
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`magazine, Sports Illustrated magazine, Maxim magazine, among others.
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`25. Copasetic’s clothing designs have been featured in nationwide
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`television advertisements, including for such famous brands as the Carl’s Junior
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`restaurant chain (worn by Evander Holyfield), and have also been prominently
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`featured as wardrobe staples in movies, television, and live events. Copasetic is
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`regularly sought out by wardrobe stylists for Hollywood productions, as well as
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`Hollywood elite, who have come to love the brand’s original graphic designs,
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`vintage feel, and unique celebration of the legacy of some of sport’s greatest
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`competitors and icons.
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`26. Copasetic’s primary sales channel is its own website, located at
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`www.rootsoffight.com. Copasetic’s primary sales market, accounting for
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`approximately eighty percent of its sales, is the United States. Copasetic’s social
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`media channels include the verified Instagram handle @rootsoffight, which has over
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`a quarter million organic followers, as well as the verified Twitter handle
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`@rootsoffight, which has nearly fifty thousand organic followers. Copasetic is
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`extremely active on social media, which comprises an integral part of its sales and
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`marketing strategy.
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`27. Copasetic’s Icon Roster collectively contains approximately sixty four
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`million Facebook followers, seventeen million Instagram followers, and twenty-six
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`million Twitter followers. These accounts provide authentic brand engagement and
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`drive traffic to Copasetic’s online store.
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`SMRH:484608626.4
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`Case No.
`COMPLAINT
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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.10 Page 10 of 23
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`28. Plaintiffs created their brand name with the intention to evoke and
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`celebrate the history, legacy, background, and roots of sports icons. As described by
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`Forbes Magazine, “Roots of Fight shines a light on athletes who paved the way.”
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`29. The Copasetic Registrations include two registrations in International
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`Class 25 for use on clothing, for the design mark pictured here:
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`30.
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`Plaintiffs quickly came to be referred to and sought out by its customers simply as
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`‘ROOTS OF FIGHT’, leading the Plaintiffs to revise their branding schematic to isolate the phrase
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`‘ROOTS OF FIGHT’ from the remainder of its original (registered) trademark. Pictured here are
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`examples of Plaintiff’s trademarks as they are used in commerce:
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`Website homepage www.rootsoffight.com November 1, 2017
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`SMRH:484608626.4
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`Case No.
`COMPLAINT
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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.11 Page 11 of 23
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`Social Media Account Twitter October 27, 2017
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`SMRH:484608626.4
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`Case No.
`COMPLAINT
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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.12 Page 12 of 23
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`Social Media Account: Instagram October 17, 2017 and Social Media Account
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`Social Media Account: Twitter October 26, 2017
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`SMRH:484608626.4
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`-11-
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`Case No.
`COMPLAINT
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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.13 Page 13 of 23
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`Website purchase page https://www.rootsoffight.com/collections/basketball
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`November 1, 2017
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`31. Based on its substantial and continuous use of the ROOTS OF FIGHT
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`ROOTS OF BASKETBALL, ROOTS OF BASEBALL, and ROOTS OF
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`FOOTBALL marks openly in US commerce with great commercial success,
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`Plaintiff Copasetic Clothing Ltd. applied for several US trademark registrations.
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`32. All of Copasetic’s Applications were reviewed by the US Trademark
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`Office which, finding no likelihood of confusion with any preexisting marks,
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`allowed Copasetic’s applications to proceed to publication.
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`33. Copasetic’s brand recognition is so strong that Copasetic routinely
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`encounters counterfeits of its products in the marketplace. Indeed, an entire blog
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`was recently brought to Plaintiff’s attention in which counterfeit t-shirts are being
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`sold alongside step-by-step instructions for “how to make a vintage style logo
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`design in a similar style to the fighting T-shirts over at Roots of Fight.” Copasetic
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`has been limited in its remedies against such counterfeiters and infringers due to the
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`Oppositions filed by Defendant against Copasetic’s Applications, and the resulting
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`SMRH:484608626.4
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`Case No.
`COMPLAINT
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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.14 Page 14 of 23
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`delay in Copasetic obtaining its trademark registrations to enforce against
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`counterfeiters.
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`34. Throughout the six-plus-year, very public, very successful existence of
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`the ROOTS OF FIGHT brand, the Plaintiffs have never once encountered any
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`instance of actual confusion, nor any inquiry by a customer or potential customer
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`who mistakenly believed there to be an affiliation or association between Copasetic
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`and Roots Canada.
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`35. On information and belief, throughout the six-plus-year, very public,
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`very successful existence of the ROOTS OF FIGHT brand, Roots Canada has never
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`once encountered any instance of actual confusion, nor any inquiry by a customer or
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`potential customer who mistakenly believed there to be an affiliation or association
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`between Copasetic and Roots Canada.
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`36. The significant differences between the Parties’ marks, as well as their
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`respective markets, channels of trade, and customer bases make it extremely
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`unlikely that any customers or potential customers of Plaintiffs would be confused
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`or misled as to any affiliation or association with Defendants.
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`37. Notwithstanding Copasetic’s open, continuous, substantial, and
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`successful use of the ROOTS OF FIGHT, ROOTS OF BASKETBALL, ROOTS OF
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`BASEBALL, and ROOTS OF FOOTBALL marks in US and international
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`commerce for many years, Copasetic has never previously been contacted by Roots
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`Canada regarding any concerns over customer confusion until Roots Canada filed
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`the Oppositions.
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`ROOTS CANADA AND ITS MARKS
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`38. Roots Canada has opposed all of Copasetic’s Applications
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`alleging that there is a likelihood of confusion based on its ownership of the
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`following five US trademarks (“Roots Canada Registrations”):
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`SMRH:484608626.4
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`Case No.
`COMPLAINT
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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.15 Page 15 of 23
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`Trademark
`ROOTS
`(word mark)
`RN: 0995891
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`ROOTS
`(word mark)
`RN: 1815610
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`Status
`Registered:
`October 15,
`1974
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`Registered:
`January 11,
`1994
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`ROOTS KIDS
`(word mark)
`RN: 3742751
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`Registered:
`January 26,
`2010
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`ROOTS
`ATHLETICS
`(word mark)
`RN: 4158273
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`Registered:
`June 12, 2012
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`Goods/Services
`025: Footwear-namely,
`shoes slippers and boots
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`025: Footwear; namely,
`shoes slippers, boots, gloves,
`scarves, belts, t-shirts,
`sweatshirts, clothing of all
`types; namely, clacks, shirts,
`socks, jackets, coats,
`dresses, blouses, skirts and
`jeans
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`042: Retail outlet services
`for selling footwear; namely,
`shoes, slippers, boots; show
`accessories; namely, saddle
`soap; luggage, wallets,
`handbags, and leather key
`fobs, scarves, belts, t-shirts,
`sweatshirts, gloves, clothing
`of all types; namely, slacks,
`socks, shirts, skirts, jackets,
`coats, dresses, blouses, and
`jeans
`025: Children’s garments,
`namely, shirts, dresses,
`pants, pullovers, T-shirts,
`sweaters, jeans, socks, sweat
`shirts, shorts, jackets
`025: Men’s, women’s and
`children’s clothing, namely,
`sweatshirts, pullovers, t-
`shirts, sweatpants, tank tops,
`shorts, polo shirts, golf
`shirts, shirts, vests;
`outerwear, namely, melton
`jackets with leather sleeves;
`headgear, namely, hats and
`caps
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`SMRH:484608626.4
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`-14-
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`Case No.
`COMPLAINT
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`

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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.16 Page 16 of 23
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`ROOTS & Design
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`Registered:
`August 27,
`2013
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`RN: 4391284
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`035: Retail store services in
`the fields of clothing,
`clothing accessories,
`headwear, footwear and
`bags; online retail store
`services in the fields of
`clothing, clothing
`accessories, headwear,
`footwear and bags
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`39. A review of the US Trademark Office’s database of trademark
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`registrations makes clear that Defendant is far from alone in its ownership of
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`trademarks containing the word ‘roots,’ including in Class 025 for use on clothing,
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`which is most relevant to this action.
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`40. Many third-party registered U.S. trademarks exist in International Class
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`25 for use on clothing. These word marks include: ILLROOTS (Reg. No.
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`3649879); JAZZ ROOTS (Reg. No. 4290816); VP ROOTS (Reg. No. 4445848);
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`AMERICAN GROWN SYRIAN ROOTS (Reg. No. 5201725); and ROCK YOUR
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`ROOTS (Reg. No. 5292353), among others. Many third-party design marks also
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`exist in class 025 for use on clothing, prominently featuring the word ‘roots,’
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`including: GREEN ROOTS (Reg. No. 5302550); BETTERROOT (Reg.No.
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`5226288); VIVID ROOTS (Reg. No. 5178881); REBEL ROOTS (Reg. No.
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`3939706); TRADE ROOTS (Reg. No. 4482882); NAPPY ROOTS (Reg. No.
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`86129933); SOLROOTS (Reg. No. 5176037); and several others.
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`41. On information and belief, Roots Canada’s primary sales market is
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`Canada.
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`Case No.
`COMPLAINT
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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.17 Page 17 of 23
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`42. Roots Canada’s official website homepage is pictured below:
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`43. On information and belief, Roots Canada’s verified Twitter handle is
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`@rootscanada, and Roots Canada’s Instagram handle is @rootscanada.
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`44. Each of Roots Canada’s social media homepages specifically identifies
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`the Defendant’s Canadian presence, pictured below:
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`Case No.
`COMPLAINT
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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.18 Page 18 of 23
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`45. On information and belief, Roots Canada’s marketing and branding
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`schematic relies heavily upon its Canadian presence and heritage, including through
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`the use of logos and indicia associated with Canada, such as maple leaves, beavers,
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`and the Canadian flag. Rarely, if ever, does Defendant use the word mark ‘roots’
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`alone, without its logos or other references to Canada. Examples of Roots Canada’s
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`use of its marks in commerce are below:
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`-17-
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`Case No.
`COMPLAINT
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`

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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.19 Page 19 of 23
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`46. On November 1, 2017, Roots Canada offered a selection of 58 men’s
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`Of those 58 graphic t-shirts, every single one contained one of the following
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`Canadian indicia: maple leaf; hockey stick; hockey puck; beaver; the word
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`‘Canada’.
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`SMRH:484608626.4
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`-18-
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`Case No.
`COMPLAINT
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`

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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.20 Page 20 of 23
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`47. All of the shirts offerd bore an inside neck label featuring the design
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`mark shown in Roots Canada Registration 4391284, which is described in its
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`registration as “a silhouette of a beaver on a tree branch with the word "Roots"
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`underneath” and is depicted below:
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`48. On information and belief, Roots Canada’s U.S. commercial presence
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`is extremely limited, and its brand recognition in the U.S. negligible.
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`THIS ACTION
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`49. Copasetic seeks protection against a threat of trademark litigation by
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`Roots Canada over the use of the word ‘roots’ in connection with the ROOTS OF
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`FIGHT, ROOTS OF BASKETBALL, ROOTS OF FOOTBALL, ROOTS OF
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`SOCCER, ROOTS OF HOCKEY and other intended ROOTS OF brands.
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`50. Six-plus-years of successful coexistence between the Parties without
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`any instances of actual consumer confusion is a strong indicator that consumers are
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`not likely to be confused or deceived, or believe that any of Plaintiffs’ goods are
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`manufactured by, or otherwise associated with, Defendant.
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`51. Plaintiffs are not infringing any of Defendant’s trademarks.
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`52. Plaintiffs’ US trademark applications should proceed to registration, as
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`they pose no likelihood of confusion with any of Defendant’s US trademarks.
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`53. Without a judicial finding of non-infringement, Plaintiff will continue
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`to be susceptible to an infringement lawsuit by the Defendant at any time.
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`SMRH:484608626.4
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`-19-
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`Case No.
`COMPLAINT
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`Case 3:17-cv-02300-GPC-KSC Document 1 Filed 11/13/17 PageID.21 Page 21 of 23
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`54. All of the Roots Canada Registrations feature the word ‘roots’ in some
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`manner.
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`55. Many clothing and accessory items featuring the word ‘roots’ are sold
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`by countless third parties.
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`56. Many trademarks featuring the word ‘roots’ are registered to third
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`parties for use on a wide variety of products, including in Class 25 for use on
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`clothing.
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`57. Consumers are not likely to be confused into believing Copasetic’s
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`products are manufactured by, sponsored by, authorized by, or otherwise associated
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`or affiliated with Roots Canada.
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`58. Because Roots Canada has filed Oppositions against all fourteen
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`Copasetic Applications asserting a likelihood of confusion arising out of Copasetic’s
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`use and registration of the words ‘roots of ____,’ an immediate, justiciable case or
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`controversy exists such that Copasetic is entitled to seek a declaratory judgment of
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`non-infringement.
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`FIRST CAUSE OF ACTION
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`(Declaration of Non-Infringement)
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`59.