IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NOTICE OF OPPOSITION
`
`In the Matter of Application
`Serial No. 76/490,033 Published
`in the Official Gazette of
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`December 23, 2003
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`-------_--------_---_---_--------.----.-....-_-----....--.....--...----.._- x
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`AVON PRODUCTS, INC.,
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`Opposer,
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`v.
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`RHOADES, DEAN L.
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`:
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`Opposition No.
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`Applicant.
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`___-_--------__---_-_---_-__-------__--.___-__-__-__.___.._-_-- x
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`TO THE COMMISSIONER OF PATENTS AND TRADEMARKS:
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`AVON PRODUCTS, INC., a New York corporation with a place of business at
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`1251 Avenue of the Americas, New York, New York 10020-1104 (hereinafter “Opposer”)
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`believes that it will be damaged by registration of the designation IF IT IS NOT DERMANEW,
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`IT IS NOT PERSONAL MICRODERMABRASION for “Skin care systems comprised of a
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`handheld electric or battery operated massage and toning apparatus as well as skin stimulator
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`attachments, foam applicator attachments, skin toner, skin creme, skin moisturizer and skin
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`cleanser sold as a unit” in International Class 10 shown in application Serial No. 76/490,033
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`filed by Dean L. Rhoades (hereinafter “Applicant”) and hereby opposes the same.
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`As grounds therefor, it is alleged that:
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`1.
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`Opposer is now and for many years past has, among other things, been
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`engaged in distributorship and direct sales services, door-to-door retail merchandising, telephone
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`NYOI/GRAHM./933023.]
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`shop at home services, mail order catalog sales, and interactive retail sales rendered by means of
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`a global computer information network, all in the fields of beauty care, salon and spa services,
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`housewares, clothing, toiletries, cosmetics, jewelry, gift items, collectibles, toys, personal care
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`products, pre-recorded videos, audio tapes and compact discs throughout the United States and
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`the world.
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`2.
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`Since long prior to February 20, 2003, the filing date of the application
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`herein opposed, Opposer adopted, has used and is using the trademark ANEW for skin care
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`preparations, cosmetics and related goods. Opposer has prior use in interstate commerce of the
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`ANEW trademark for skin care preparations, cosmetics and related goods and since the adoption
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`and first use of the ANEW trademark as aforesaid, Opposer has continuously used the ANEW
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`trademark on and in connection with the production, advertising, promotion, distribution and sale
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`of skin care preparations, cosmetics and related goods in interstate commerce in the United
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`States.
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`3.
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`The ANEW trademark is now and ever since its first use as aforesaid has
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`been applied to products, package materials, advertisements and product literature for the
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`aforesaid skin care preparations, cosmetics and related goods. Products and materials so marked
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`are now and for many years have been advertised and promoted, and widely shipped, distributed
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`and sold in interstate commerce in the United States. The ANEW trademark has come to be and
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`is famous and favorably known, and of great value to Opposer, and in the mind of the trade and
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`public, identifies Opposer’s goods and distinguishes them from the goods and services of others.
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`4.
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`Opposer is the owner, in the United States Patent and Trademark Office,
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`of Registration No. 1,982,608 for ANEW for “Skin care preparations, namely facial moisturizer,
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`facial exfoliant, facial cleanser, chest and neck exfoliant, hand and body exfoliant, eye cream,
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`and cosmetics, namely facial foundation” issued June 25, 1996; and Registration No. 2,718,121
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`NYOIIGRAHM/933023.l
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`2
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`for ANEW ULTIMATE for “Non-medicated skin care preparations” issued May 20, 2003. Said
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`registrations are valid and subsisting, unrevoked and uncancelled, and in full force and effect.
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`Opposer owns said registrations and the trademarks shown thereby and all the business and
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`goodwill symbolized thereby and associated therewith in the United States.
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`5.
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`By the application herein opposed, Applicant seeks to register the
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`designation IF IT IS NOT DERMANEW, IT IS NOT PERSONAL MICRODERMABRASION
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`for “Skin care systems comprised of a handheld electric or battery operated massage and toning
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`apparatus as well as skin stimulator attachments, foam applicator attachments, skin toner, skin
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`creme, skin moisturizer and skin cleanser sold as a unit” in International Class 10.
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`6.
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`Applicant’s designation IF IT IS NOT DERMANEW, IT IS NOT
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`PERSONAL MICRODERMABRASION in application Serial No. 76/490,033 so resembles
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`Opposer’s previously used and registered ANEW trademark as to be likely, when used in
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`connection with Applicant’s goods, to cause confusion, to cause mistake and to deceive with
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`consequent injury to Opposer and the public.
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`7.
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`Additionally, App1icant’s designation IF IT IS NOT DERMANEW, IT IS
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`NOT PERSONAL MICRODERMABRASION in application Serial No. 76/490,033 so
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`resembles Opposer’s famous ANEW trademark as to be likely, when used on and in connection
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`with Applicant’s goods, to cause or result in dilution of Opposer’s trademark.
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`8.
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`Opposer will be damaged by the registration sought by Applicant because
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`such registration would support and assist Applicant in the confusing and misleading use of
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`Applicant’s trademark and would give to Applicant color of exclusive statutory rights to such
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`designation in violation and derogation of the prior and superior rights of Opposer.
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`NY01fGRAHMf933D23.1
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`9.
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`Registration of application Serial No. 76/490,033 should also be refused
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`on the grounds that Opposer will be damaged by the registration sought by Applicant because
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`such registration will dilute the distinctive and famous quality of Opposer’s ANEW trademark.
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`WHEREFORE, Opposer believes that it would be damaged by registration of
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`Applicant’s mark and prays that it be denied.
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`Please recognize as attorneys for Opposer William R. Golden, Jr. and Michelle M.
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`Graham (members of the Bar of the State of New York) and the firm of Kelley Drye & Warren
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`LLP, 101 Park Avenue, New York, New York 10178. Please address all communications to
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`Michelle M. Graham, Esq. of said firm and address.
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`Dated:
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`New York, New York
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`June 17, 2004
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`KELLEY DRYE & WARREN LLP
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`Attorneys for Opposer
`AVON PRODUCTS, INC.
`
`By: Z/wéfi
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`William R. Golden, Jr.
`Michelle M. Graham
`
`101 Park Avenue
`
`New York, New York 10178
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`(212) 808-7800
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`NYOI/GRA}«lMf933023.l
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`4
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`CERTIFICATE OF MAILING
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`EXPRESS MAIL LABEL NO.: EU 947743120 US
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`DATE OF DEPOSIT:
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`June 17, 2004
`
`The undersigned hereby certifies the foregoing NOTICE OF OPPOSITION and
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`fee are being deposited with the United States Postal Service as “Express Mail Post Office to
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`Addressee” service under 37 CFR 1.10, on the date indicated above, in an envelope addressed to
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`the Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3514.
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`MaryR0 Amistad /
`7/fl%£ /42¢
`"
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`NYOI/GRAHM/933023.]
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`5
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`2
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`KELLEY DRYE 5 WARREN LLP
`A LIMITED LIABILITY PAHYNERSHIP
`
`WASHINGTON. DC
`
`TYSONS CORNER. VA
`
`IL
`CHICAGO.
`STAMFORD . CT
`FARSIFPANY. NJ
`
`BFlUs$ELS BELGIUM
`HONG KONG
`
`AFFILIAYE OFFICES
`
`JAKARTA. INDONESIA
`BANGKOK. THAILAND
`MUMBAI, INDIA
`TOKYO. JAPAN
`
`IOI PARK AVENUE
`
`NEW YORK, NEW YORK |Ol7B
`
`(ma) 8084300
`
`17,
`
`,.-Ac5.M.._E
`
`‘W3’ 3°3'7397
`
`www.ke||eydr_ye.cor'n
`
`DIRECT LINE (212) 808-5127
`
`E-MAIL:mgraham@ka|1eydrye.com
`
`VIA EXPRESS MAIL
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3514
`
`Re:
`
`In re Application of Dean L. Rhoades
`Trademark:
`IF IT IS NOT DERMANEW, IT IS
`NOT PERSONAL MICRODERMABRASION
`Serial No.: 76/490 033
`
`Dear Sir or Madam:
`
`On behalf of Avon Products, Inc., we enclose an original and one copy of a
`Notice of Opposition to registration of the above-referenced trademark. Please charge our
`Deposit Account No. 502968 to cover the filing fee in connection therewith.
`
`Please acknowledge receipt of same by stamping and returning the enclosed self-
`addressed postcard.
`
`Very truly yours,
`
`. DM~%,m,\
`
`Michelle M. Graham
`
`llllllllllll|l|||lllllllillllllllllllIllllllllllli
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`06-18-2004
`u.s. Patent 5 'rMotc.'TM Mail Hem Dt. #77
`
`Enclosures
`
`NYOI/GRAHM/9303202