Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1055415
`
`Filing date:
`
`05/14/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92073190
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Barbara J. Swaab
`
`ARNOLD S WEINTRAUB
`THE WEINTRAUB GROUP PLC
`24901 NORTHWESTERN HWY, SUITE 311
`SOUTHFIELD, MI 48075
`UNITED STATES
`aweintraub@weintraubgroup.com
`248-809-2005
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Motion to Suspend for Civil Action
`
`Arnold S. Weintraub
`
`ipdocket@weintraubgroup.com
`
`/Arnold S. Weintraub/
`
`05/14/2020
`
`Attachments
`
`20200514 Motion to Suspend for Filing.pdf(3092818 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No.: 92073190
`
`
`
`'-....VVVVVVVVVV
`
`In Re Registration No. 2,553,590
`For the Mark: TAKE A DEEP BREATH
`
`Registered on March 14, 2002
`
`CALM.COM, INC.,
`
`Petitioner,
`
`vs.
`
`BARBARA J. SWAAB,
`
`Respondent.
`
`PERKINS COIE, LLP
`Patchen M. Haggerty
`1201 3rd Avenue, Suite 4900
`Seattle, Washington 98101-3099
`(206) 359-8614
`
`Attorneysfor Petitioner
`
`THE WEINTRAUB GROUP, P.L.C.
`Arnold S. Weintraub
`
`24901 Northwestern Hwy., Suite 201
`Southfield, MI 48075
`(248) 809-2005
`
`Attorneysfor Respondent
`
`RESPONDENT’S MOTION TO SUSPEND CANCELLATION PROCEEDINGS
`PENDING OUTCOME OF CIVIL ACTION
`
`BARBARA J. SWAAB, by and through her Attorneys, ARNOLD S. WEINTRAUB and
`
`THE WEINTRAUB GROUP, P.L.C., brings this Motion to Suspend Cancellation Proceedings
`
`Pending Outcome of Civil Action pursuant to TBMP §510.02(a).
`
`

`

`There is presently pending a Civil Action in the US. District Court, Eastern District
`
`Southern Division between these parties which will bear on the presently pending Cancellation
`
`Proceeding.
`
`The outcome of the Civil Action will be dispositive of the Cancellation Proceeding and
`
`involves other matters outside the TTAB jurisdiction, including broader issues beyond the right
`
`to registration. Judicial economy will be served by suspending this proceeding.
`
`A copy of the Complaint filed in the US. District Court is appended hereto.
`
`Dated: May 14, 2020
`
`Respectfully Submitted:
`
`
`/Arnold S. Weintraub/
`
`Arnold S. Weintraub
`
`THE WEINTRAUB GROUP, P.L.C.
`24901 Northwestern Hwy., Suite 311
`Southfield, MI 48075
`(248) 809-2005
`
`Attorneysfor Respondent
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 14, 2020, I served a true and complete copy of the
`Respondent’s Motion to Suspend Cancellation Proceedings Pending Outcome of Civil Action
`upon Patchen M. Haggerty, Perkins Coie, LLP, 1201 3rd Avenue, Suite 4900, Seattle,
`Washington 98 101-3 099 by email to PHaggeflngerkinscoiecom.
`
`Dated: May 14, 2020
`
`
`[Dede Phillips/
`Dede Phillips
`The Weintraub Group, P.L.C.
`24901 Northwestern Hwy., Suite 311
`Southfield, Michigan 48075
`Tel: 248-809-2005
`
`

`

`Case 2:20—CV—11199-JEL-MJH ECF N0. 1 filed 05/14/20 PagelD.l Page 1 of 13
`County in which action arose: _
`1344 (Rev 02m;
`
`CIVIL COVER SHEET
`
`law, except as
`The 15 44 civil cover sheet and the information condoned herein neither replace nor supfilemcnt the film and service of pleadings or other papers as required by
`nited States in eptember 1974, is required for the use of the Clerk ofCourt for the
`provided by local rules of court. This form, approved by the Judicial Conference of the
`
`pumase of initiating the civil docket sheet. (SEE INSTRUCHONS 0N NEX!‘I'AGE OF THIS FORM)
`DEFENDANTS
`
`CALMCOM. lNC.
`
`I. (a) PLAINTIFFS
`BARBARA J. SWAAB
`
`(1)) County of Residence ofFirst Listed Plaintifl’ Qakland
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`San Francisco
`County ofResidence of First Listed Defendant
`(IN us. PLAINTIFF CASES ONLY}
`NOTE:
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND leotNED.
`
`ArrlSld éf‘WSYrili‘ii'dthfiz‘il’fi‘n" “lii‘éré‘déli’fifi?
`The Weintraub Group. P.L.C.
`
`24901 Northwestern Hwy., Suite 311, Southfield. Mi 48075
`
`Attorneys ((fKnawn)
`
`H. BASIS OF JURISDICTION (Human "X" iriOne [lax Only)
`[31 US. Government
`Plaintiff
`
`I a Federal Question
`(US. Gavemmenl Not a Party)
`
`U2 US. Government
`Defendant
`
`E] 4 Diversity
`(Indicate Cln‘zenrhip ofParrler in Item III)
`
`
`
`
`
`
`
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Hawaii "X"'l'110ne BaxfarPlainifgfi:
`and One Boijr Defendant)
`(For Dim-sly Cam Only)
`PTF DEF
`P1 F
`DEF
`I] l
`E]
`I] 4 D 4
`
`Citizen of This State
`
`l
`
`Incorporated or Principal Place
`of Business in This State
`
`Citizen ofAnuther State
`
`U 2
`
`El 2
`
`Incorporated and Principal Place E S
`ofBuliiness In Another Stall:
`
`[I S
`
`
`
`
`
`Foreign Nation
`
`
`
`
`
`
`PHI H‘t'R 1'} “In!“ ‘.'|'
`
`82"!Ccpyrigl1ls
`530 film:
`
`
`[:I 3.15 Patent - r\hhrevinred
`New Drug Appliculiun
`84L! Tmikrrtull.
`Q {'IAL PRIORITY
`861 HIA 03953)
`862 Black Lung (923)
`863 DIWC/DIWW (405(3))
`864 SSH) Title XVI
`:DSGS RSI (405(g))
`
`1:] 6 D6
`U 3 D 3
`Citizen or Subject ofa
` Foreign Calm: -
`
`
`
`Click here for: ,erurmepifiuittgndelkscfi tiring.
`
`
`" In One Bax Only)
`IV. NATURE OF SUIT-(Place an "
`
`BANKRUPTCY
`FGR'FEITURE’PENA L'f‘Y
`
`mum am U l F15
`
`
`[E] 315 False Claims Act
`D 625 Drug Related Seizure
`U422 Appeal 28 USC 158
`D l 10 insurance
`PERSONAL INJURY
`PERSONAL INJURY
`of Property 21 USC 881
`E] 376 Qui Tam (31 USC
`U423 Withdrawal
`[3120 Marina
`3 lo Airplane
`El 365 Personal injury -
`28 USC 157
`3729(3))
`[3690 Other
`D 130 Miller Act
`315 Airplane Product
`Product Liability
`D 400 State Reapportionment
`[3] :40 Negotiable losimrrrom
`Liability
`[:1 367 Health Carl-f
`D 410 Antitrust
`E] l50 Recovery of Overpayment U 320 Assault. Libel &
`l’luu-rnaeeutical
`430 Banks and Banking
`& Enforcement of Judgment
`Slender
`Personal lnjnlry
`450 Commerce
`51 Medicare Act
`I] 330 Federal Employers'
`Product Liability
`[3 460 Deportation
`152 Recovery of Defaulted
`Liability
`D 368 Asbestos Personal
`[j 470 Racketeer influenced and
`Student Loam
`340 Marine
`injury Product
`Connor Organizations
`(Excludes Veterans)
`345 Marine Product
`Liability
`D 480 Consumer Credit
`D153 Recovery of Overpayment
`Liability
`PERSONAL PROPERTY
`E] 485 Telephone Consumer
`of Veteran's Benefits
`350 Motor Vehicle
`_I 370 Other Fraud
`Protection Act
`E] 160 Stockholders’ Suite
`355 Motor Vehicle
`5 371 Truth in building
`D 490 Cable/Sat TV
`[3 190 Other Contact
`Product Liability
`I 380 Other Personal
`D 850 Secunties/Conunodities/
`D 195 Contract Product Liability
`[3 360 Other Personal
`Property Damage
`Exchange
`D 196 Franchise
`Injury
`CI 385 Property Damage
`[:1 390 outer mummy Actions
`1] 362 Personal Injury -
`Product Liability
`[3 Mi Agricultural Acts
`Medical Malprooriro
`893 Environmental Matters
`895 Freedom of Information
`Act
`I] 896 Arbitration
`U 899 Administrative Procedure
`Actheview or Appeal of
`Agency Decision
`D 950 Constitutionality of
`State Statutes
`
`
`
`Haber“ Corpus:
`' 440 Other Civil Rights
`i 210 Land Condemnation
`
`D 463 Alien Detainee
`44] Voting
`E] 220 Foreclosure
`
`D 510 Motions to Vacate
`442 leoyment
`230 Rent Lease & Ejectmerlt
`
`Sentence
`443 Housing!
`240 Torts to Land
`D 530 General
`Accommodations
`245 Tort Product Liability
`
`D290 All Other Real Property D 445 Amer. w/Disobilities - D 535 Death Penalty
`
`
`Employment
`Other:
`
`'1] 446 Amer. w/Disabilih'es -
`S40 Mandamus & Other
`
`
`I. 448 Education
`555 Prison Condition
`
`I] 560 Civil Detainee -
`Conditions of
`Confinement
`
`I V; HORIGIN (Place an "X“ in One 80: Duty)
`2 Removed from
`.1 Original
`State Court
`Proceeding
`
`
`
`[13
`
`Remanded from
`Appellate Court
`
`El 4 Reinstated or
`Reopened
`
`D 6 Multidistrict
`Litigation ~
`Transfer
`
`U8 Multidistn'ct
`Litigation -
`Direct File
`
`El 5 Transferred from
`Another District
`(web?)
`Cite the US. Civil Statute under Which you are filing (Do not cl‘rejmirdicrianalsramm «films: divem'nr):
`23 USC. 2201; 15 U.S.C. 1114: 15 U.S.C. 1125 (a)
`
`
`VI. CAUSE OF ACTION
`Briefdescription of cause:
`
`Trademark lnfrlngementand Unfair Competition
`
`
`CHECK YES only if demanded in complaint:
`VII. REQUESTED IN
`CHECK IF THIS 15 A CLASS ACTION
`DEMAND S
`
`
`.nmv DEMAND:
`COMPLAINT: p
`.
`UNDER RULE 23, F.R.Cv.P.
`.
`
`VIII. RELATED CASE(S)
`
`IF ANY
`(3” ’"’“’°”°"""
`JUDGE
`DATE
`'
`x " XV mm]; or
`_. ORNEY or RECORD
`__
`Mny16.2019 Wemwmxpfié
`
`’ ron omen use ONLY
`RECEIPT#
`
`AMOUNT
`
`APPLYING lFP
`
`JUDGE
`
`MAG. JUDGE
`
`DOCKET NUMBER
`
`
`
`[:lYes
`
`[Into
`
`_ __
`
`
`
`
`
`
`
`
`
`LABOR
`710 Fair Labor Standards
`Act
`D 720 Labor/Malmgoment
`Relations
`U740 Railway Labor Act
`[3751 anily and Medical
`Leave Act
`D790 Other Labor Litigation
`D791 Employee Retirement
`Income Security Act
`
`
`
`monitor transom:
`870 Taxes (US. Plaintiff
`or Defendant)
`E] 87] ins-Third Pony
`26 USC 7609
`
`
`
`
`
`
` _
`L‘lh’lliimfllfll‘l
`
`
`462 Naturalization Application
`'
`465 Other immigration
`
`Actions
`Other
`@550 Civil Rights
`
`
`
`
`

`

`Case 2:20-CV-11199—JEL-MJH ECF NO. 1 filed 05/14/20
`
`PagelD.2 Page 2 0f 13
`
`PURSUANT TO LOCAL RULE 83.11
`
`1,
`
`Is this a case that has been previously dismissed?
`
`1:] Yes
`
`if yes, give the following information:
`
`Court:
`
`Case No.:‘
`
`Judge:
`
`2.
`
`Other than stated above, are there any pending or previously
`discontinued or dismissed companion cases in this or any other
`court, including state court? (Companion cases are matters in which
`it appears substantially similar evidence will be offered or the same
`or related parties are present and the cases arise out of the same
`transaction or occurrence.)
`
`[:I Yes
`[E No
`
`If yes, give the following information:
`
`Court:
`
`Case No.:
`
`Judge:
`
`Notes ;'
`
`
`

`

`Case 2:20-cv—11199-JEL-MJH ECF No. 1 filed 05/14/20 PagelD.3 Page 3 of 13
`
`IN THE UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`Case No.
`
`_ _ __
`
`_
`
`BARBARA J. SWAAB,
`
`Plaintiff,
`
`-VS-
`
`CALMCOM, INC.,
`a Delaware corporation,
`
`Defendant.
`
`
`ARNOLD S. WEINTRAUB (P22127)
`THE WEIN’I‘RAUB GROUP, P.L.C.
`Attorneys for Plaintiff
`24901 Northwestern Hwy., Suite 311
`Southfield, MI 48075
`(248) 809-2005
`aneiatranh@meintra1;ngonrpm.
`
`.DECLARATORY JUDGMENT ACTION £9.11 NON-ABANDQNMENT,
`TRADEMARK INFRINGEMENT; TORIIOUS INTERFERENCE WITH
`B._USI_NE_S_S AND UNWFAIRTRAD.E_P_RAC'_ILI_C_ES ANFD RELIILFLSTJ‘LQB
`INJUNCTIVE RELIEF
`
`NOW COMES the Plaintiff, BARBARA J. SWAAB, by and through her
`
`Attorneys, THE WEINTRAUB GROUP, P.L.C. and ARNOLD S. WEINTRAUB, and
`
`for her Complaint against Defendant, CALM.COM, INC., states the following:
`
`Page 1 of 11
`
`

`

`Case 2:20-cv-11199-JEL-MJH ECF No. 1 filed 05/14/20
`
`PagelD.4 Page 4 of 13
`
`ELAIURE OF THE ACTION
`
`1.
`
`This action arises under the laws of the United States and, in
`
`particular, 28 U.S.C. §2201, 15 U.S.C. §1114, 15 USC §1117 and 15 U.S.C. §1125(a)
`
`as well as the laws of the State of Michigan.
`
`2.
`
`3.
`
`Jurisdiction is proper in this district pursuant to 28 U.S.C. §1338.
`
`Venue is proper pursuant to 28 U.S.C. §1891 and 28 U.S.C. §1167(a).
`
`BEEP—ARIES.
`
`4.
`
`The Plaintiff, BARBARA J. SWAAB is an Individual residing in the
`
`State of Michigan, County of Oakland, City of Orchard Lake.
`
`5.
`
`Plaintiff is owner of the incontestable U.S. Trademark Registration No.
`
`2,553,590, Registered on March 26, 2002 for the standard character mark “Take a
`
`Deep Breath,” which is valid and subsisting and which mark is currently in use in
`
`commerce (Exhibit A).
`
`6.
`
`The Defendant, CALM.COM, 1110., is a corporation organized and
`
`existing under the laws of the State of Delaware, having a principal place of
`
`business at 140 2nd Street, Floor 3, San Francisco, California 94105.
`
`7.
`
`Defendant is a multi million-dollar on-line enterprise that is in the
`
`business of downloadable mobile applications including relaxation and meditation
`
`apps. (Exhibit B).
`
`8.
`
`Defendant conducts business in this State by offering its downloadable
`
`apps upgrades for a subscription price to upgrade its “free” apps (Exhibit C).
`
`Page 2 of 11
`
`

`

`Case 2:20-cv-11199-JEL-MJH ECF No. 1 filed 05/14/20 PagelD.5 Page 5 of 13
`
`FACTUAL. BACKGROM
`
`9.
`
`Plaintiff hereby realleges Paragraphs 1 through 8 as if set forth in full
`
`herein.
`
`10.
`
`In 2002, Plaintiff, who is a certified yoga instructor, began rendering
`
`relaxation and stress management instruction under the mark “Take a Deep
`
`Breath.”
`
`11.
`
`Since 2002, Plaintiff has continuously used her trademark “Take a
`
`Deep Breath” and has advertised and promoted the services recited in the
`
`Registration through various media, including printed flyers, as well as on her
`
`website, wwngtalseadeeshreathrpga-com- (Exhibit D)-
`
`12.
`
`Plaintiff teaches and has instructed and conducted relaxation and
`
`stress management yoga classes continuously since 2002 under her mark “Take a
`
`Deep Breath.”
`
`13.
`
`Beginning in 2016, Defendant began using the identical mark “Take a
`
`Deep Breath” in connection with advertising, promoting and selling “mobile apps” in
`
`the field of “relaxation.”
`
`14.
`
`On or about February 15, 2018, Defendant, having adopted the
`
`identical mark as Plaintiff, without authorization, more than fourteen (14) years
`
`after Plaintiff began using the mark, filed an “Intent to Use” trademark application.
`
`Defendant’s ITU application seeks registration of the mark “Take a Deep Breath” in
`
`multiple classes which, in essence, encircle all uses of the mark, except for the
`
`Page 3 of 11
`
`

`

`Case 2:20-cv-11199-JEL-MJH ECF NO. 1 filed 05/14/20 PageID.6 Page 6 Of 13
`
`services in 10041 in which the services provided by Plaintiff are classified (Exhibit
`
`E).
`
`15.
`
`Defendant, through its counsel, in late 2019, contacted Plaintiffs
`
`counsel, seeking to acquire the Plaintiffs “Take a Deep Breath” trademark on the
`
`basis of an alleged “abandonment.”
`
`16.
`
`Plaintiff’s counsel advised Defendant’s counsel at that time that the
`
`mark was in use and had not been abandoned.
`
`17. When rebuffed, Defendant instituted a proceeding before the
`
`Trademark Trial and Appeal Board seeking to cancel Plaintiffs trademark
`
`Registration on the basis of abandonment, while knowing full well that the
`
`registered mark was in use and had not been abandoned (Exhibit F).
`
`18.
`
`In its Petition to Cancel, Defendant forthrightly states that it needs
`
`Plaintiffs mark, “Take a Deep Breath” in order to “obtain exclusive control over this
`
`mark and seek registration in IC 041.”
`
`19.
`
`The filing of the Petition to Cancel has created an actual case and
`
`controversy pursuant to the provisions of 28 U.S.C. §2201.
`
`COUNT I
`PLAINTIFF HAS NOT ABANDONEDHER .MARK
`
`20.
`
`Plaintiff hereby realleges Paragraphs 1 through 19 as if fully set forth
`
`herein.
`
`21.
`
`Since at least 2002, Plaintiff, either directly or through her related
`
`company, TADB, Inc., has continuously used the “Take a Deep Breath” mark in
`
`connection with the services identified in the Registration. The mark has been
`
`Page 4 of 11
`
`

`

`Case 2:20-CV-11199—JEL-MJH ECF N0. 1
`
`filed 05/14/20 PagelD.7 Page 7 of 13
`
`advertised and promoted and there has not been any period of non-use or
`
`abandonment for any three consecutive years and Plaintiff has never had any
`
`intent not to resume use.
`
`22.
`
`Plaintiff presently maintains a website under the domain name,
`
`wwwgcflceadeepbreathyggahqm which prominently displays the trademark “Take a
`
`Deep Breath” and which advertises the various types of yoga that she instructs
`
`(See Exhibit D).
`
`23.
`
`Contrary to the Defendant’s assertions in its Petition to Cancel,
`
`Plaintiff has never abandoned the mark, thereby entitling the Plaintiff to a
`
`declaration that her trademark is still in full force and effect and has not been
`
`abandoned.
`
`COU—NTII
`TRADEMARK INFRINGEMENT BY DEFENDANT
`UNDER 15 USC "£1114
`
`24,
`
`Plaintiff hereby realleges Paragraphs 1 through 23 as if fully set forth
`
`herein.
`
`25.
`
`Beginning in 2016, Defendant began advertising and promoting
`
`relaxation mobile applications and has marketed such under the trademark “Take a
`
`Deep Breath” which mark is identical to Plaintiffs mark.
`
`26.
`
`By its own averments before the Trademark Trial and Appeal Board,
`
`Defendant is seeking exclusive control over Plaintiffs mark in order to fully
`
`monopolize the rights in and to this mark in the field of “relaxation” (See Paragraph
`
`Page 5 of 11
`
`

`

`Case 2:20—cv—11199-JEL-MJH ECF No. 1 filed 05/14/20
`
`PagelD.8 Page 8 of 13
`
`6 of Exhibit F/Petition to Cancel), and knowingly and willfully adopted and began
`
`using Plaintiffs mark in its business.
`
`27.
`
`Defendant’s knowingly willful advertising, promotion and selling
`
`“relaxation” mobile apps under a mark identical to Plaintiff’s “Take a Deep Breath”
`
`mark has created a likelihood of confusion in the minds of the purchasing public in
`
`violation of 15 USC §1114.
`
`28.
`
`Plaintiff has been damaged in an amount as yet to be determined.
`
`29.
`
`Plaintiff has no adequate remedy at law and, unless Defendant is
`
`enjoined from continuing its unauthorized usage of Plaintiff's mark, “Take a Deep
`
`Breath” in connection with relaxation products and/or services, it will continue to
`
`cause Plaintiff to suffer substantial irreparable harm.
`
`occur. in
`name cones and»: 13710144;me 15 pscfllgm1i.1)
`
`30.
`
`Plaintiff hereby realleges Paragraphs 1 through 29 as if fully set forth
`
`herein.
`
`31.
`
`At least since 2016, the Defendant has advertised and promoted its
`
`relaxation mobile app under the mark “Take a Deep Breath” and such action
`
`constitutes a false and misleading representation of fact as is likely to cause
`
`confusion in the minds of the purchasing public in violation of 15 USC §1125(a)(1)
`
`by causing the purchasing public to believe that it is the owner of the trademark
`
`“Take a Deep Breath” in connection with its “relaxation” services.
`
`32.
`
`Plaintiff has been damaged in an amount as yet to be determined.
`
`Page 6 of 11
`
`

`

`Case 2:20-cv—11199—JEL-MJH ECF No. 1 filed 05/14/20
`
`PagelD.9 Page 9 of 13
`
`33.
`
`Plaintiff has no adequate remedy at law and, unless Defendant is
`
`enjoined from continuing its unauthorized usage of Plaintiffs mark, “Take a Deep
`
`Breath” in connection with relaxation products and/or services, it will continue to
`
`cause Plaintiff to suffer substantial irreparable harm.
`
`WW
`FALSE DESIGNATION OF ORIGIN -_VIOLATION OF_15 USC §..1125(a)
`
`34. Plaintiff hereby realleges Paragraphs 1 through 33 as if fully set forth
`
`herein.
`
`35.
`
`By advertising and promoting its services and downloadable apps
`
`under the mark “Take a Deep Breath” for promoting its relaxation and stress
`
`management products and services while knowing that Plaintiff owns the Federal
`
`Registration for that mark, Defendant has wrongfully engaged in a false
`
`designation of origin by causing the purchasing public to believe that it is the owner
`
`of said mark and has undertaken this act which is likely to cause confusion in the
`
`minds of the purchasing public.
`
`36.
`
`Defendant’s wrongful acts as set forth herein are in violation of 15
`
`USC §1125(a).
`
`37.
`
`Plaintiff has been damaged in an amount as yet to be determined.
`
`38.
`
`Plaintiff has no adequate remedy at law and, unless Defendant is
`
`enjoined from continuing its unauthorized usage of Plaintiffs mark, “Take a Deep
`
`Breath” in connection with relaxation products and/or services, it will continue to
`
`cause Plaintiff to suffer substantial irreparable harm.
`
`Page 7 of 11
`
`

`

`Case 2:20-CV-11199-JEL-MJH ECF N0. 1 filed 05/14/20
`
`PageID.1O Page 10 0f 13
`
`QQMMON LAW UNIj‘AlR. (AQMPETITION
`
`COUNT V
`
`39.
`
`Plaintiff hereby realleges Paragraphs 1 through 38 as if fully set forth
`
`herein.
`
`40. Using its economic power, Defendant has undertaken willful and
`
`purposeful actions to impose economic hardship on the Plaintiff to subdue her and
`
`force her to submit to Defendant’s desire to acquire her registration and to compel
`
`her to acquiesce to this because of the economic hardship that will be imposed upon
`
`her by seeking to protect her valuable trademark rights.
`
`41.
`
`This overt activity by Defendant is in violation of the Unfair
`
`Competition Laws of the State of Michigan.
`
`42.
`
`Plaintiff has been damaged in an amount as yet to be determined.
`
`43.
`
`Plaintiff has no adequate remedy at law and, unless Defendant is
`
`enjoined from continuing its unauthorized usage of Plaintiffs mark, “Take a Deep
`
`Breath” in connection with relaxation products and/or services, it will continue to
`
`cause Plaintiff to suffer substantial irreparable harm.
`
`QOUNLI‘ YI.
`COMMON LAW - UNFAIR COMPETITION
`TRADEMARK EQLLYIKG...
`
`44.
`
`Plaintiff hereby realleges Paragraphs 1 through 43 as if fully set forth
`
`herein.
`
`Page 8 of 11
`
`

`

`Case 2:20-CV-11199-JEL-MJH ECF N0. 1 filed 05/14/20 PagelD.ll Page 11 of 13
`
`45.
`
`As set forth hereinabove, contrary to the rights of the Plaintiff,
`
`Defendant has wrongfully adopted and used at common law the trademark “Take a
`
`Deep Breath” in connection with its “relaxation” business. Defendant now asserts
`
`and utilizes its economic power and its common law trademark usage in an attempt
`
`to force Plaintiff to turn over her rights in and to her registration and the mark
`
`“Take a Deep Breath” and as set forth in its Petition to Cancel, it needs the
`
`registration to fully monopolize the rights in and to this mark in the field of
`
`“relaxation”
`
`46.
`
`Such action constitutes trademark bullying in violation of the common
`
`law of Michigan.
`
`47.
`
`Plaintiff has been damaged in an amount as yet to be determined.
`
`48.
`
`Plaintiff has no adequate remedy at law and, unless Defendant is
`
`enjoined from continuing its unauthorized usage of Plaintiff’s mark, “Take a Deep
`
`Breath” in connection with relaxation products and/or services, it will continue to
`
`cause Plaintiff to suffer substantial irreparable harm.
`
`49.
`
`Plaintiff has no adequate remedy at law and, unless Defendant is
`
`enjoined from continuing its usage of Plaintiff’s mark, “Take a Deep Breath” in
`
`connection with mobile relaxation applications, it will continue to injure and
`
`damage the reputation of the mark owned by Plaintiff.
`
`QOmVTLVLI.
`TQEHQUS INTERFEREAICEWITH A BUSINESS OPPORTUNITY
`UNQEBMMMsflDB
`
`Page 9 of 11
`
`

`

`Case 2:20-CV-11199-JEL-MJH ECF N0. 1
`
`filed 05/14/20
`
`PagelD..12
`
`Page 12 of 13
`
`50.
`
`Plaintiff hereby realleges Paragraphs 1 through 48 as if fully set forth
`
`herein.
`
`51.
`
`In View of Defendant’s stated attempt to monopolize the mark “Take a
`
`Deep Breath,” if successful, such action precludes Plaintiffs ability to enjoy the
`
`natural expansion of the goods and/or services associated with her mark. Such
`
`action is in direct Violation of the laws of the State of Michigan and, in particular,
`
`MCL §445.903(1)(a) and (c).
`
`52.
`
`Plaintiff has been damaged in an amount as yet to be determined.
`
`53.
`
`Plaintiff has no adequate remedy at law and, unless Defendant is
`
`enjoined from continuing its unauthorized usage of Plaintiff 8 mark, “Take a Deep
`
`Breath” in connection with relaxation products and/or services, it will continue to
`
`cause Plaintiff to suffer substantial irreparable harm.
`
`RE(-1UESTE_D_,RELIEF
`
`WHEREFORE, Plaintiff, BARBARA J. SWAAB, requests that this Honorable
`
`Court find and order the following:
`
`A.
`
`That Plaintiff has never abandoned her trademark registration for
`
`“Take a Deep Breath,” U.S. Trademark Registration No. 2,553,590 which mark is
`
`valid and subsisting.
`
`B.
`
`That Defendant has undertaken a willful and unlawful campaign
`
`seeking to divest Plaintiff of her lawful rights in and to her trademark;
`
`C.
`
`D.
`
`That Defendant has tortiously interfered with Plaintiffs business;
`
`That Plaintiffs mark is valid and subsisting;
`
`Page 10 of 11
`
`

`

`Case 2:20-CV-11199-JEL-MJH ECF N0. 1 filed 05/14/20 PagelD.13 Page 13 of 13
`
`That Defendant has willfully infringed Plaintiffs trademark rights.
`
`That Plaintiff is entitled to an award of damages pursuant to 15 USC
`
`E.
`
`F.
`
`§1117.
`
`G.
`
`That Defendant’s action is willful and that all damages be trebled and
`
`Plaintiff be awarded her attorney fees and costs in accordance with the statute;
`
`H.
`
`That Defendant be ordered to make a full accounting of all revenues
`
`generated since 2016 in connection with the sale of its downloadable relaxation and
`
`stress management apps.
`
`1.
`
`Defendant be preliminarily and permanently enjoined from usingthe
`
`mark “Take a Deep Breath” or any mark confusingly similar thereto for promoting
`
`its relaxation and stress management products and services or any goods related
`
`thereto.
`
`J.
`
`That this Honorable Court award such further remedies and relief it
`
`deems just and proper.
`
`Dated: May 14, 2020
`
`ImsLArnold S. Weintraub
`Arnold S. Weintraub (P22127)
`The Weintraub Group, P.L.C.
`24901 Northwestern Hwy, Ste. 311
`Southfield, MI 48075
`
`Page 11 of 11
`
`

`

`Case 2:20-CV-11199-JEL—MJH ECF No. 1-1 filed 05/14/20 PageID.14 Page 1 of 1
`
`INDEX OF EXHIBITS
`
`W Description
`
`A
`
`B
`
`C
`
`D
`
`E
`
`F
`
`Plaintiff’s Trademark Registration for “Take a Deep Breath”
`
`Wall Street Journal Article
`
`Defendant/Company Profile
`
`Plaintiff 5 Website
`
`Defendant’s Intent to Use Trademark Application
`
`Petition to Cancel filed by Defendant with the Trademark Trial & Appeal Board
`
`

`

`Case 2:20-cv-11199—JEL-MJH ECF No. 1-2 filed 05/14/20
`
`PagelD.15 Page 1 of 2
`
`EXHIBIT A
`
`

`

`Case 2:20-cv-11199-JEL—MJH ECF No. 1-2 filed 05/14/20 PagelD.16
`
`Page 2 of 2
`
`w
`
`'
`
`u
`
`Int. CL: 41
`
`d 107
`ri US. (318.: 100, 101
`’ an
`P or
`
`United States Patentand Trademark Office
`
`Reg. No. 2,553,590
`RegistetedMnr.26,2002
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`TAKE A DEEP BREATH
`
`SWAAB, BARBARA J. (UNITED STATES cm-
`ZEN)
`3850 LAKE VIEW
`ORCHARD LAKE, MI 48324
`
`FOR: EDUCATIONAL SERVICES, NAMELY.
`CONDUCTING CONFERENCES, SEMINARS,
`WORKSHOPS, AND RETREATS IN THE FIELD OF
`STRBSS WAGEMENT, AND CONDUCTING
`
`YOGA INSTRUCTION CLASSES ,
`(U3. C18. 100. 101 AND {07).
`
`IN. CLASS 41
`
`FIRST USE 5414.000; IN COMMERCE 5-31-2000.
`
`SN 75-878,056.FILED 12—23-1999.
`
`BARBARA A. LOUGHRAN, EXAMINTNG ATTOR-
`NBY
`
`

`

`Case 2:20~cv-11199-JEL-MJH ECF No. 1-3 filed 05/14/20 PagelD.17 Page 1 of 9
`
`EXHIBIT B
`
`

`

`Case 2:20-CV~11199-JEL-MJH ECF No. 1-3 filed 05/14/20
`
`PagelD.18 Page 2 of 9
`
`Fieadspaco vs. Calm: The Moditmion Battle’l‘hat’s Anything but Ze;..
`
`htl1>s://mvw.wsj.com/arliclw/headspaco-vs-oalm-themedilotion-bu” .
`
`YOU HAVE BEEN
`SELECTED
`
`WSJ wants to hear from you. Take part in this short survey to help shape The
`Journal. Jakeéugyey
`
`(3}
`
`This copy Is for your personal. non-commercial use only. To order prosenlntlon-resay copies for distribution to your colleagues. clients or customers visit
`hltpsd/wwwdjrepnhlsoom.
`
`htlps:(l‘mvwmslcomlariloleoineadspecovs-oalmvmo—meditallon-baiile-ihals-anymlng-bui-zen-‘l1544889606
`
`
`
`LIFE &STYLE
`
`Headspace vs. Calm: The Meditation Battle
`That’s Anything but Zen
`A pair of apps preach relaxation to millions ofcustomers~but still badly want to beat each other
`
`By Hilary Potkewitz
`
`Dec. 15, 2018 11:00 am ET
`
`The two smartphone apps taking meditation mainstream exude a Zen vibe and trumpet
`nearly identicalmissions tojncrease health and happiness around the world.
`
`Butbehind the-blissful marketing mantras, Headspace and Calm are locked in a head
`to~head fight to dominate the booming $1.2 billion meditation market.
`
`“I would say we’re in mindful competition with eachother,” says Michael Acton Smith,
`co-CEO and co~founder of Calm, based in San Francisco. “And they have six times as
`many employees as we do.” Calm has a staffof about 40, while Headspace employs 230.
`
`"The irony is not lost on me,” says Rich Pierson, CEO and co~founder of Headspace, of
`the riValry with Calm. But he’d rather focus on his Santa Monica, Calif.~based
`company’s authenticity, he says, which is drawn from co-founcler Andy Puddicombe’s
`10 years of studying meditation at Buddhist monasteries.
`
`"Ifyou were going to see a psychologist, you’d probably want to know Where they
`trained and qualified. It’s the same with meditation,” Mr. Pierson says. Calm’s founders
`previously-worked in ohl-ine gaming and advertising.
`
`Both startups are venturerbacked, founded by charismatic British guys who moved to
`
`
`offi
`
`1/19/2020. 5:47 PM
`u—wW...” .—._ -..._-... _ WWW «amW .pwmmhw-mu mum“. mini ... “munch...“-
`
`

`

`Case 2:20-CV-11199-JEL-MJH ECF No. 1-3 filed 05/14/20 PagelD.19 Page 3 0f 9
`
`HeadSpuce vs. Calm: The Meditation Battle That's Anything but Zo...
`
`hups:l/www.wsj.com/miolcs/hendspace-vs-oalm-the-mcdElation-be...
`
`
`
`Andy Puddlcomba co-foundet of meditation andmlndfuiness appHeadspace. spenta decade studying meditation
`at BuddhistmOnaster-ies. PHOTO: PATRlCK T. FALLON/BLOOMBERG NEWS
`
`California. Both practice what the}r preach, offering oflic'e‘wide daily meditation
`sessions. And both apps have been downloaded more than 38 million times, with each
`hitting 1 million paid subscribers in June, the companies say.
`
`“Headspace launched two years before us, and now we’re neck and neck,” says Dun
`Wang, Calm’s chief product and growth officer.
`
`Founded in 2010, Headspace had dominated the meditation category until this year,
`when Calm caught up.
`
`Calm got a boost from winning the 2017 iPhone App of the Year award from Apple’s App
`Store last December.
`
`"Since winning App atthe Year, we seem to have a much higher growth rate than they
`do, and we’ll surpass themf‘rom now-on,” Calm’s Ms. Wang says.
`
`Calm has topped the category'in both downloads and mobile revenue since last
`December, with revenue through October at $50.7 million, according to estimates from
`mobile-data firm Sensor Tower. HeadSpace, now in second place, saw revenue of $34.3
`million, according to Sensor Tower; Both offer standard subscription rates of $13 a
`month, Annual subscriptions cost $96 a'year at Headspaee and $70 a year at Calm.
`
`A Headspace spokeswoman says Sensor Tower’s data didn’t account for subscriptions
`that come through its website and corporate partnerships, which would push its 12-
`month revenues "north of$100 million." The company declined to provide year-over-
`year comparisons. Calm didn’t dispute Sensor Tower’s data.
`
`1/19/2020, 5:47 PM
`Qi’é
`-'———“‘"‘-——-————.—...__W~—~w 4...... Wm .. W. WWWmWM-—uwm ..... “W.-- ..........................
`
`

`

`Case 2:20-CV-11199-JEL-MJH ECF No. 1—3
`
`filed 05/14/20 PagelD.20 Page 4 of 9
`
`Headspnce vs..Calm: The'Me'ditation Bottle That‘s Anything but Ze...
`
`httpS‘J/WWWMsi;coWntiioics/ltoadspacc-vs-calm-lhe-mc:litation-ha,..
`
`
`
`a:
`
`. 1..“
`
`Mitfiael Acton'Smlth, co-CEO and cmfounder- of meditation and mindfulness app Cairn. at his company's San
`Francisco headquarters. PHOTO: CALM
`
`The. award is atouch‘y subject at Headspace. Apple does not reveal its selection
`methods or criteria.
`
`"I think people are blowing App-of-the-Year way out of proportion,” says Ben Spero, a
`managing director at Spectrum Equity,- a He adspace investor. “It’s good RR, but it’s
`not determinative It’s not-that Apple was saying that Calm is a better app «they're big
`fans of Headspace, too,” he says, pointing out that the App Store often features
`Headspa'ce on its landing page. Apple declined to comment on the 2017 award.
`
`The meditation industry—including studio classes, workshops, books, online courses
`and apps—is worth about $1.2 billion and growing, according to a 2017 estimate by
`Marketdata Enterprises. Studies show meditation can reduce stress and improve sleep.
`
`Head space vs. Calm
`How the two ponular medltatlon a‘poslcompare;
`
`HEADSPACE
`
`2010
`
`4! Founded in
`
`CALM
`
`2012
`
`--.5¥S'rnilli_on
`
`«e VCfundsralsed e-
`
`SZB-mlllion
`
`,
`
`230
`
`4; #Employees- hr
`
`40
`
`38+ million
`
`*3 Downloads P
`
`38+ million
`
`nil 2018 apprewemnea b
`$343mlillon
`Holt: ‘Jon-‘Ott: Seune:$onsur1’:mer
`
`SSOJmlIlion
`
`The national meditation
`
`rate has tripled over the
`
`past five years. The
`number of us. adults
`
`meditating is on track to
`
`surpass the number of
`
`those practicing yoga in
`
`the next two years,
`
`according to an October
`
`report from the Centers
`for Disease Control and
`
`ioFG
`
`”19/2020. 5:47 PM
`m- "my .WWWmWW‘ ._........_... ________________ .
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`
`

`

`Case 2:20-CV-11199-JEL-MJH ECF NO. 1-3 filed 05/14/20 PagelD.21 Page 5 Of 9
`
`Headspace vs. Calm: The Meditation Battle That’s Anything but Ze...
`
`httpssllwwwmsj.com/miales/headspaoe‘vs-cnlm-rhc-mcditatiomba...
`
`Prevention.
`
`3
`
`Businesses are eager tohelp employees tap into their higher consciousness in the
`hopes that it will improve productivity and reduce stress-related he alth-care costs.
`
`' '
`
`fi—M
`
`it 22% of companies started offering mindfulness meditation training in 2016, and
`net 21% planned to add it in 2017, according to a. survey by The National Business
`
`Group on Health and Fidelity Investments
`
`All the attention has fueled a digital bonanza, with more than.2,000 new meditation
`apps launched over the'past three years. Headspace and Calm account for about 85% of
`
`the revenue generated by the top 10 apps in the category, according to Sensor Tower
`data.
`
`Headspace uses quirky cartoons to walk the user through meditation sessions, all
`guided by Mr, Puddicombe. In addition to programs for stress and anxiety, it offers
`sessions for sleep, work/productivity and fitness.
`
`Calm lets listeners choose from several different meditation teachers and peaceful
`naturescenes. About half of‘Calm’s users use it primarily as a sleep app rather than a
`meditation app, the company says. They tune in to Calm Sleep Stories, which are
`bedtime