Trademark Trial and Appeal Board Electronic Filing System. 3935
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`ESTTA Tracking number: ESTTA29242
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`Filing date3
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`03/28/2005
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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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`91160985
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`Defendant
`Rhoades, Dean L.
`Rhoades, Dean L.
`i 9107 Wilshire Boulevard, Suite 400
`Beverly Hills, CA 90210
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`Wesley T. Miller, Esq.
`DermaNeW, Inc.
`Correspondence 9107 Wilshire BlVd., Suite 400
`Address
`Beverly Hills, CA 90210
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`Submission
`Filer's Name
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`Wes1eytmi11er@coX.net
`Motion to Suspend for Civil Action
`Wesley T. Miller
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`Filer's e-mail
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`Wes1eytmi11er@coX.net
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`Signature
`“nine
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`Attachments
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`/Wesley T. Miller!
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`DERMANEW 3-28-05.pdf( 3 pages )
`§ Complaint for Declaration Relief - DermaNew V Avon Products.pdf (
`8 pages )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91160985
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`Avon Products, Inc.,
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`Plaintiff,
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`V.
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`Rhoades, Dean L.,
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`Defendant
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`\_/\_/\_/\_/\_/\_/\_/\_/\_/
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`DEFENDANT’S MOTION TO SUSPEND PROCEEDING
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`PENDING CIVIL ACTION
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`Pursuant to Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)
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`§ 510.02 and 37 C.F.R. § 2.1 l7(a), Defendant Dean L. Rhoades (“Defendant”) hereby
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`moves to suspend the above—captioned proceeding pending disposition of Civil Action
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`No. 05—02l69R (MANX) filed by Defendant against Plaintiff Avon Products, Inc.
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`(“Plaintiff”) in the United States District Court for the Central District of California.
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`I.
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`MOTION TO SUSPEND
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`A.
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`The TTAB Pr oceedin gs
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`On June 18, 2004, Plaintiff filed in the Trademark Trial and Appeal Board (“the
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`TTAB”) a Notice of Opposition to Defendant’s trademark Application No. 76490033
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`consisting of the mark “IF IT IS NOT DERMANEW, IT IS NOT PERSONAL
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`MICRODERMABRASION” on grounds of prior use and a likelihood of confusion.
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`Defendant has answered and discovery has commenced.
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`

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`B.
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`The Civil Action
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`On March 24, 2005, Defendant filed a civil action (the “Civil Action”) in the
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`United States District Court for the Central District of California seeking a declaratory
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`judgment finding no likelihood of confusion and non—infringement, and thereby establish
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`Defendant’s right maintain trademark application and registration for the mark “IF IT IS
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`NOT DERMANEW, IT IS NOT PERSONAL MICRODERMABRASION” in the United
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`States Patent and Trademark Office.
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`The complaint and related papers filed in the Civil Action are attached hereto.
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`C.
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`The TTAB Proceedings Should Be Suspended Pending The
`Termination Of The Civil Action
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`37 C.F.R. § 2.1 l7(a) provides that:
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`“Whenever it shall come to the attention of the Trademark Trial and
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`Appeal Board that a party or parties to a pending case are engaged in a
`civil action. . .proceedings before the Board may be suspended until
`termination of the civil action.”
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`Suspension of the TTAB proceeding is proper. Disposition of the Civil Action
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`will determine who has superior trademark rights and whether Defendant’s mark creates
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`a likelihood of confusion or infringement of Plaintiff’s mark. The Civil Action therefore
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`involves issues in common with those before the Board.
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`//
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`//
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`//
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`//
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`//
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`//
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`

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`II.
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`CONCLUSION
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`Accordingly, it is respectfully submitted that all further proceedings in Opposition
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`No. 91160985 be suspended pending disposition of Civil Action No. 05—02l69R
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`(MANX).
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`DATED: March 28, 2005
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`By:
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`/Wesley T. Miller/
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`Wesley T. Miller
`Attorney for Defendant Dean L. Rhoades
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`CERTIFICATE OF SERVICE
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`It is hereby certified that a true copy of the within DEFENDANT’S MOTION TO
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`SUSPEND PROCEEDING PENDING CIVIL ACTION was served Via first class mail
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`upon the Plaintiff by depositing a copy thereof in the mail, postage prepaid, directed to
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`MICHELLE GRAHAM, KELLEY DRYE & WARREN, LLP, l0l PARK AVENUE,
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`NEW YORK, NY l0l78, this 28m day of March, 2005.
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`/Wesley T. Miller/
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`Wesley T. Miller
`Attorney for Defendant Dean L. Rhoades
`
`

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`LAW OFFICES OF STEVEN A. FREUND
`STEVEN A. FREUND State Bar # 182645)
`DONALD B. ROSEN (
`tate Bar # 179961)
`315 South Beverl Drive, Suite 307
`Beverly Hills, Ca ifornia 90212
`310% 284-7929
`310 553-4197 fax
`Attorne s for Plaintiffs
`Dean
`oades and Dermanew, Inc.
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`UNITED STATES DISTRICT COURT E
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`CENTRAL DISTRICT OF CALIFORNIA
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`WESTERN DISTRICT
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`Case No.:
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`k 1}
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`K11‘
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`COMPLAINT FOR DECLARATORY
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`RELIEF; DEMAND FOR JURY TRIAL
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`DEAN RHOADES, an individual, and
`DERMANEW, INC., a California
`corporation,
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`Plaintiffs
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`V.
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`AVON PRODUCTS, INC., a New
`York corporation, and DOES 1 through
`10, inclusive,
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`Defendants.
`
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`Plaintiffs Dean Rhoades and Der1naNew, Inc. allege as follows:
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`JURISDICTION
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`1.
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`Jurisdiction in this District Court is based upon Plaintiffs’ claim
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`arising under the Lanham Act, 15 U.S.C. §112l(a). Jurisdiction is conferred upon this
`1
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`COMPLAINT FOR DECLARATORY RELIEF
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`

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`District Court pursuant to 28 U.S.C. §§ 1331 and 1338.
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`.
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`THE PARTIES
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`2.
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`Plaintiff Dean Rhoades, also known as Dean L. Rhoades
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`(“Rhoades”) is an individual residing in Los Angeles, California. Plaintiff DermaNew,
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`Inc. (“DermaNew”) is a California corporation organized and existing under the laws of
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`the State of California, with its principal place of business in Beverly Hills, California. It
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`is authorized to do, and has been doing, business in the State of California, County of Los
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`Angeles. Rhoades and DerrnaNew are collectively referred to hereinafter as “Plaintiffs.”
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`3.
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`Plaintiffs are informed and believe and based thereon allege that
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`defendant Avon Products, Inc. (“Avon” or “Defendant”) is a corporation, organized and
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`existing under the laws of the State of New York, with its principal place of business in
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`New York, New York, and is authorized to do, and has been doing, business in the State
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`of California, County of Los Angeles. Plaintiffs are informed and believe and based
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`thereon allege that Avon is in the business of, among other things, developing, marketing,
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`and selling cosmetics, skin care products, and hair care products.
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`4.
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`DermaNew is informed and believes and, based upon such
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`information and belief, alleges that Does 1-10 are corporations, partnerships, or other
`business entities, which were and are legally responsible and liable for the acts,
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`omissions, and events referred to in this Complaint.
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`FACTS
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`5.
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`DermaNew is a successful cosmetics and skin care company that has
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`been in business for more than five years. DermaNew develops, markets, and distributes
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`skin care products throughout the United States and elsewhere. Specifically, Der1naNew
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`invented, patented, and distributes certain hand-held microdermabrasion devices, and
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`skin care products to be used in conjunction with such devices. DermaNew distributes its
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`various product lines under the highly stylized, distinctive marks DermaNew, KeraNew,
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`2 C
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`OMPLAINT FOR DECLARATORY RELIEF
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`GemaNew, DermaNew Institute, If It Is Not DermaNew, It Is Not Personal
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`I\.)
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`Microdermabrasion, and DermaNew Palm Microdermabrasion System, among
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`others (collectively, the “DermaNew Marks”). The DermaNew Marks are owned by
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`Rhoades.
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`6. '
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`The DermaNew Marks are depicted in stylized letters in a thin,
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`narrow font in the color gray against a white or clear background, depending on the
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`product and product packaging. The terms “Denna” and “New” are displayed on all
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`packaging and in text form with initial capitals, such that consumers perceive the markuas
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`two separate words “Denna” and “New.”
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`7.
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`The DermaNew marks are frequently accompanied on product
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`packaging and advertisements with a square or rectangular design containing blue, green,
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`and/or purple rectangles and an orange half circle (the “Jewel Tone Design”), which is
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`intended to call to mind the crystals that are a component of Plaintiffs’
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`microdermabrasion system. On information and belief, the Jewel Tone Design is unique
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`to Plaintiffs in the skin care field.
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`8.
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`Plaintiffs are informed and believe, and on that basis allege, that
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`Defendant Avon is a multi-billion dollar beauty product company that distributes a skin-
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`care product line under the brand name “Anew.” Defendant’s name is displayed in
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`stylized letters on its product’s packages in all capital letters, i.e. ANEW, and in a font
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`similar to the font in which Defendant’s house mark “Avon” is displayed. The first letter
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`“A” in the ANEW mark is displayed in a slightly larger size than the remaining letters
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`22
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`NEW.
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`9.
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`Plaintiffs are informed and believe and on that basis allege that
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`Defendant’s ANEW mark typically appears in grey, silver, or white lettering against a
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`grey, silver, or grayish-green background on product packaging, catalogs, advertisements,
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`3 C
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`OMPLAINT FOR DECLARATORY RELIEF
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`23
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`24
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`25
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`26
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`2.7
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`28
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`

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`and the like, and that Dcfendant’s ANEW mark is not used together with any design
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`elements.
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`10.
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`Plaintiffs are informed and believe and on that basis allege that the
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`channels of trade for Defendant’s ANEW products are via direct sales, door-to-door retail
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`merchandising, telephone shop-at-home services, mail order catalog sales, and interactive
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`retail sales rendered by means of a global computer network.
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`1 1.
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`Plaintiffs are informed and believe and on that basis allege that
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`Plaintiffs do not sell products via door-to-door retail merchandising or direct mail order
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`catalog sales. Instead, Plaintiffs sell their products principally via beauty supply stores
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`and retail housewares stores, via television infomercials, and via Plaintiffs’ own Internet
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`web site. Thus, there is no significant overlap in the channels of trade for Plaintiffs’ and
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`Defendant’s respective products.
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`12.
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`Plaintiff Rhoades has filed applications for registration of the
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`DerrnaNew Marks with the U.S. Patent and Trademark Office. Defendant has opposed
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`Rhoades’ Application Nos. 75/797,335, 76/290,995, 76/479,057, 76/490,037, 76/490,033
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`3
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`and 76/426,003 for certain of the Dem1aNew Marks and has petitioned to cancel
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`Rhoades’ Registration Nos. 2,861,067 and 2,872,366 for GemaNew. Rhoades has also
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`filed applications for registration of the DermaNew Marks with the trademark offices of
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`countries other than the United States. Defendant has opposed Rhoades’ trademark
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`applications for the mark “DermaNew” in Brazil, Canada, Hong Kong, and Israel, and
`has instituted a cancellation action against Rhoades’ registration for the mark DermaNew
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`in the European Community.
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`13.
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`In short, despite the foregoing differences in Plaintiffs’ and
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`Dcfendant’s marks, and the channels of trade for their respective products, Defendant has
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`advised Plaintiffs that it claims that the DermaNew Marks and the use thereof by
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`Plaintiffs, as described above, infringe Dcfendant’s ANEW mark.
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`4 C
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`OMPLAINT FOR DECLARATORY RELIEF
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`14.
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`Plaintiffs’ use of the DermaNew Marks is not likely to cause
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`confusion with Defendant’s ANEW mark for at least the following reasons, among
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`others: (1) the marks look entirely different in the context of their packaging; (2) the
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`prefix “Derma" is not present in Defendant’s ANEW mark and thus serves to distinguish
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`the marks when they are compared in their entireties; (3) the DermaNew Marks conjure
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`up a specific image in the minds of consumers that is different from the image conveyed
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`by Defendant’s mark ANEW; (4) the De1maNew Marks are displayed with the terms
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`“Derma” and “New” in initial capitals, such that consumers perceive the DermaNew
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`portions of the marks as two separate words “Derma” and “New;” (5) there is no actual
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`confusion, despite the coexistence of the marks in the marketplace for over five years;
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`(6) the respective products are marketed through different channels of trade, and there is
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`no significant overlap in the channels of trade for the respective products; (7) the
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`channels of trade for the respective products are so different that consumers will not
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`encounter the products in the same retail stores; (8) purchasers of skin care products and
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`microdennabrasion products are sophisticated and are not impulse buyers; and (9) the
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`DermaNew products are sold at a relatively high price, which further demonstrates that
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`the purchase of these products is a carefillly considered purchase.
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`FIRST CLAIM FOR RELIEF
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`(For Declaratory Relief)
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`15.
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`Plaintiffs incorporate by reference the allegations contained in
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`Paragraphs 1 through 14 above.
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`16.
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`An actual controversy has arisen between Plaintiffs, on the one hand,
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`and Defendant, on the other hand, concerning Plaintiffs’ rights to sell, distribute, and
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`expand their line of products using the DerrnaNew Marks. Specifically, Plaintiffs
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`contend as follows:
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`5
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`COMPLAINT FOR DECLARATORY RELIEF
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`

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`A.
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`That Rhoades’ De1'maNew Marks and the use thereof by
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`Plaintiffs in connection with hand-held microdennabrasion devices and skin care
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`products to be used in conjunction with such devices are not likely to cause consumer
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`confusion as to the source of such products with Defendant;
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`B.
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`That Defendant’s mark ANEW is not famous under federal or
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`state law;
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`C.
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`That Plaintiffs’ use of the Dem1aNeW marks for hand—held
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`microdennabrasion devices and skin care products to be used in conjunction with such.
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`devices has not and will not result in dilution of Defendant’s alleged ANEW mark or any
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`other mark of Defendant incorporating the four letters ANEW;
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`D.
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`That the use of the DermaNew Marks for hand-held
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`microderrnabrasion devices and skin care products to be used in conjunction with such
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`devices does not violate any rights of Defendant, including any trademark rights of
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`Defendant;
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`E.
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`That Plaintiffs have the right to use the DermaNew Marks in
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`connection with their hand—held microdermabrasion devices and skin care products to be
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`used in conjunction with such devices; and
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`F.
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`That Rhoades has the right to maintain his U.S. trademark
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`applications and registrations for the DermaNew Marks.
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`17.
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`Plaintiffs are informed and believe and thereon allege that Defendant
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`disputes these contentions.
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`18.
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`Plaintiffs require a judicial determination of their rights to use the
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`DermaNew Marks for Plaintiffs’ product lines, i.e., that the DeI1naNew Marks do not
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`infringe Defendant's ANEW marks. Plaintiffs have no speedy or adequate remedy at law
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`for resolution of this dispute and are entitled to a judicial declaration of this Court in
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`accordance with the facts and contentions set forth above. A judicial determination is
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`6
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`COMPLAINT FOR DECLARATORY RELIEF
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`necessary and appropriate at this time in order that Plaintiffs may timely ascertain their
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`rights as described herein.
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`WHEREFORE, Plaintiffs pray for judgment against Defendant as follows:
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`I.
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`For judicial declarations consistent with Plaintiffs’ contentions set forth in
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`paragraphs 14 and 16 herein;
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`2.
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`For costs and reasonable attorneys’ fees incurred in connection with the
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`instant action; and
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`3.
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`For such other relief as the Court may deem just and appropriate.
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`Dated: March 24, 2005
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`7
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`COMPLAINT FOR DECLARATORY RELIEF
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`

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`DEMAND FOR JURY TRIAL
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`Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiffs Dean
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`Rhoades and DermaNew, Inc. hereby demand a jury trial of any issues in this action so
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`triable.
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`LAW OFFICES OF STEVEN A. FREUND
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`
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` ' teven A. Freu 4
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`Attorneys for
`aintiffs
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`Dean Rhoa ' s and Dermanew, Inc.
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`Dated: March 24, 2005
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`,_a
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`SKDOO--JO\L)1-Phi-+31‘-3
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`OMPLAINT FOR DECLARATORY RELIEF