IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
` AVON PRODUCTS, INC.,
`
`Opposition No. 91160985
`
`
`
`Opposer,
`
`V.
`
`DEAN L. RHOADES,
`
`
`Applicant.
`
`OPPOSER’S OPPOSITION TO MOTION
`
`TO SUSPEND PROCEEDING PENDING CIVIL ACTION
`
`1. PRELIMINARY STATEMENT
`
`Opposer Avon Products, Inc. (“Avon”) submits this opposition to Applicant Dean L.
`
`Rhoades’ (“Rhoades”) Motion to Suspend Proceeding Pending Civil Action (“Applicant’s
`
`Motion”). The Board should deny Applicant’s Motion outright because Rhoades filed a Complaint
`
`for a declaratory judgment of non-infringement in bad faith in order to avoid responding to
`
`discovery and being deposed in a number of opposition and cancellation proceedings presently
`
`before the Board.
`
`11. ARGUMENT
`
`Avon has brought several opposition and cancellation proceedings (the “TTAB
`
`Proceedings”), dating back to 2001, to prevent Rhoades’ attempt to register a series of
`
`trademarks in the PTO that are confusingly similar to Avon’s famous name and mark ANEW,
`
`long used for one of Avon’s top brands. (See Declaration of Michelle M. Graham dated April
`
`NYOI/GRAHM/1007645.]
`
`

`
`
`
`12, 2005 at M 4-10, 13-19, a copy of which is annexed hereto as Exhibit A). Rhoades,
`
`series of dilatory tactics, including the instant motion, has stalled action in the TTAB
`
`Proceedings for over four years.
`
`(Id. at 1[1] 20-24, 29). Finally, in the midst of disingenuous
`
`settlement negotiations with counsel to Avon, and on the eve of the due dates for discovery
`
`responses and depositions in the TTAB Proceedings, Rhoades cobbled together a Complaint
`
`seeking a declaratory judgment of non—infringement of Avon’s ANEW mark which was filed on
`
`March 24, 2005 in the United States District Court for the Central District of California in a still
`
`further effort to derail the TTAB Proceedings relating to his trademark applications. (Id. at 111]
`
`25~30). Accordingly, on April 14, 2005, Avon filed a motion to dismiss Rhoades’ Complaint.
`
`(See Defendant Avon Products, Inc.’s Notice of Motion and Motion to Dismiss Under Fed. R.
`
`Civ. P. l2(B)(l) dated April 14, 2005, a copy of which is annexed hereto as Exhibit B).
`
`For the reasons set forth in Avon’s motion to dismiss, the Board should not reward
`
`Rhoades’ gamesmanship by suspending the TTAB Proceedings thereby relieving Rhoades of his
`
`discovery obligations. Rhoades had no basis in law to file a Complaint in the California district
`
`court in what amounts to a last ditch effort to thwart TTAB discovery and gain an advantage in
`
`settlement.
`
`NY01/GRAHM/l00764S.1
`
`2
`
`

`
`III. CONCLUSION
`
`Based on the foregoing, Avon respectfully requests that the Board deny Applicant’s
`
`Motion in its entirety, resume the instant proceeding and require Rhoades to respond to Avon’s
`
`discovery and sit for his deposition.
`
`Respectfully submitted,
`
`KELLEY DRYE & WARREN LLP
`
`Attorneys for Opposer
`AVON PRODUCTS, INC.
`
`Dated: April 18, 2005
`
`101 Park Avenue
`
`New York, New York 10178
`Telephone: (212) 808-7800
`Facsimile: (212) 808-7897
`
`NY01/GRAHM/1007645.1
`
`3
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing OPPOSER’S
`
`OPPOSITION TO MOTION TO SUSPEND PROCEEDING PENDING CIVIL ACTION has
`
`been served upon Applicant’s attorney, Wesley T. Miller, Counsel, DermaNew, Inc., 9107
`
`Wilshire Blvd., Suite 400, Beverly Hills, CA 90210, the address designated by said attorney for
`
`that purpose, by depositing a true copy thereof with the United States Postal Service, postal
`
`prepaid, first-class mail, returnreceipt requested onApril 18, 2005.
`
`/1
`
`Matthew D. Marcotte
`
`CERTIFICATE OF MAILING
`
`DATE OF DEPOSIT: April 18, 2005
`
`The undersigned hereby certifies that the foregoing OPPOSER’S OPPOSITION
`
`TO MOTION TO SUSPEND PROCEEDING PENDING CIVIL ACTION is being deposited with
`
`the United States Postal Service as first class mail on the date indicated above in an envelope
`
`addressed to Box TTAB No Fee, Commissioner for Trademar
`:
`
`,
`
`, P.O.
`
`451, Alexandria,
`W
`
`Virginia 22313-1451.
`
`A
`
`L
`
`/ 1/
`/
`
`Matthew D. Marcotte
`
`NY01/GRAHM/1007645.]
`
`4
`
`

`
`Exhibit A
`
`

`
`
`\DO0\]O\U!-l>U3I\>
`
`1
`
`William R. Golden, _Jr., Esq.
`(Pro Hac Vice pendin
`sq.
`; Michelle M. Graham,
`PrLII§:£*.zY I/)iReYlI’_?I<19(L1i{’l\$1)XRREN LLP
`5 101 Park Avenue
`1 New York, New York 10178
`Tel. (212) 808-7800; Fax (212) 808-7897
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`E
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`.‘{{1/}I1Ziegler,Es .(SBN: 54877)
`I liarn M. Mi er, Es . (SBN: 216289
`BUCHALTER, NEM , FIELDS & OUNGER
`7 601 South Figueroa Street, Suite 2400
`Los An eles, CA 90017-5704
`« Tel. (21 ) 891-0700; Fax (213) 630-5702
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`‘ Attorneys for Defendant
`2 Avon Products, Inc.
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`1 DEAN RHOADES, an individual,
`' and DERMANEW, INC., a
`‘ California corporation,
`_
`.
`Plaintiffs,
`
`v.
`
`f AVON PRODUCTS, INC., a New
`_
`1 York co
`oration, and DOES 1
`1
`through 0, inclusive,
`
`Defendanm
`
`
`
`ASSIGNED FOR ALL PURPOSES TO
`THE HONORABLE MANUEL L. REAL
`
`CASE NO. 05-02169 R (MANX)
`
`DECLARATION OF MICHELLE M,
`GRAHAM IN SUPPORT OF
`DEFENDANT AVON PRODUCTS
`INC.’S NOTICE OF MOTION AND
`MOTION TO DISMISS UNDER FED. R.
`CIV. P. 12(B)(1)
`
`Date: Ma 23, 2005
`Time:
`10: 0a.m.
`CTRM: 8
`
`NYOI/GRAHM/10055823
`
`‘,
`
`BNFY 518l49vl
`
`CASE NO. 05-02169 R (MANx)
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`DECLARATION OF MICHELLE M. GRAHAM
`
`1, Michelle M. Graham, hereby state and declare as follows:
`
`1.
`
`I am an Associate in the law firm of Kelley Drye & Warren LLP and
`
`am one of the attorneys representing defendant Avon Products, Inc. (“Avon”) in the
`
`above—entitled action and in administrative proceedings against plaintiff Dean
`
`‘ Rhoades (“Rhoades”) filed in the Trademark Trial and Appeal Board (“TTAB”) of
`
`E
`
`the U.S. Patent and Trademark Office (“PTO”). The facts stated in this declaration
`
`l are true of my own personal knowledge, or based on information and documents to
`
`which I have access in the course of my representation of Avon. I make this
`
`Declaration in support of Plaintiff’ s Motion to Dismiss.
`
`2.
`
`Pursuant to Local Rule 7-3, on April 8, 2005, William R. Golden, Jr.,
`
`Esq., and I telephoned Rhoades’ counsel, Steven A. Freund, Esq. in order to meet
`
`and confer about the instant motion. Mr. Golden left a message which was not
`
`returned.
`
`3.
`
`On April 11, 2005, I telephoned Mr. Freund, stated that Avon intended
`
`i
`
`to file the instant motion and requested that the parties hold a meet and confer
`
`conference. Mr. Freund indicated that he or his colleague, Donald B. Rosen, Esq.,
`
`_ would telephone me later that day. Mr. Rosen did call and he and I conferred about
`
`i
`
`the instant motion. I informed Mr. Rosen that Avon believed that the Complaint
`
`10O
`
`was filed in bad faith to short circuit discovery in the TTAB proceedings, among
`
`other reasons, and requested that Rhoades withdraw the Complaint. Mr. Rosen
`; stated that Rhoades had no intention of withdrawing the Complaint and confirmed
`
`this position in a telephone voicemail message left on April 13, 2005.
`
`4.
`
`Avon’s mark ANEW is the one of the top selling brands in the anti-
`
`aging skin care category. Since Avon’s introduction of ANEW skin care products
`
`in 1991, Avon extended its usage to under—eye creams, body lotions, hand and nail
`
`creams, vitamin C serums, retinol treatment products, sunscreen lotions, toners,
`
`cleansers, exfoliating products, and other related beauty and wellness products.
`
`, NY0l/GRAHM/10055823
`BNFY 518149“
`
`-2-
`
`CASE NO. 05-02169 R (MANx)
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`True and correct Copies of photographs of ANEW products are annexed hereto as
`
`Exhibit 1.
`
`5.
`
`Avon has registered the following ANEW-formative trademarks: in the
`
`PTO:
`
`Reg. No. 1,982,608 for the mark ANEW for “Skin care preparations, namely facial
`moisturizer, facial exfoliant, facial cleanser, chest and neck exfoliant, hand an.d
`t body exfoliant, eye cream, and cosmetics, namely facial foundation” in
`International Class 3 which issued in 1996;
`
`Reg. No. 2,718,121 for the mark ANEW ULTIMATE for “Non—medicated skin
`care preparations” in International Class 3 which issued in 2003; and
`
`Reg. No. 2,936,317 for the mark ANEW for “Medicated skin care products,
`namely, facial skin lotions and creams” in International Class 5 which issued in
`2005.
`
`; True and correct copies of Avon’s Certificates of Registration for the above marks
`
`0 are annexed hereto as Exhibits 2, 3, and 4, respectively.
`
`6.
`
`Avon also owns the following trademark applications filed in the PTO
`
`I
`
`for ANEW—forrnative trademarks:
`
`1 Serial No. 78/205,424 for the mark ANEW CLINICAL for “Skin care products,
`namely, non—medicated anti—wrinkle facial skin cream and lotion, facial scrub,
`and facial peel” in International Class 3 filed on Januaiy 21, 2003;
`'
`
`Serial No. 78/446,105 for the mark ANEW ULTIMATE NIGHT for “Skin care
`products, namely, facial moisturizer” in International Class 3 filed on July 6,
`2004;
`
`T Serial No. 78/446,104 for the mark ANEW ULTIMATE DAY for “Skin care
`products, namely, facial moisturizer” in International Class 3 filed on July 6,
`2004;
`
`a Serial No. 78/382,318 for the mark ANEW for “Cosmetics, namely, lipstick, lip
`liner, lip gloss, non—medicated lip balm, facial foundation, facial powder, facial
`
`KELLEY DRYE 6!
`WARREN LLP
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`concealer, blush, mascara, eyebrow pencil, eyeshadow, eyeliner; hair care
`preparations; and nail care preparations all of the aforementioned goods sold
`alone and in combination in gift sets comprised of some or all of said goods” in
`International Class 3 filed on March 11, 2004;
`
`Serial No. 78/489,315 for the mark ANEW CLINICAL LASER for “Skin care
`products, namely, non—medicated facial serum, facial cream, facial lotion, and
`facial moisturizer” in International Class 3 filed on September 24, 2004; and
`
`Serial No. 78/382,347 for the mark ANEW for “Dietary, nutritional, vitamin and
`mineral supplements; nutritional snack bars and beverage powder mix for use as
`meal replacements” in International Class 5 filed on March 11, 2004.
`
`True and correct status copies of Avon’s applications for the above marks are
`
`. armexed hereto as Exhibits 5, 6, 7, 8, 9, and 10, respectively.
`
`7.
`
`Avon owns registrations and applications for additional ANEW-
`
`formative trademarks throughout the world.
`
`8.
`
`Avon’s award—winning ANEW product line has been heavily
`
`advertised and promoted. A true and correct copy of awards received by Avon for
`
`the ANEW line is armexed hereto as Exhibit 11. True and correct copies of recent
`
`; advertisements and promotional materials featuring ANEW products are annexed
`
`3 hereto as Exhibit 12. True and correct copies of recent newspaper and magazine
`
`articles about ANEW products are annexed hereto as Exhibit 13.
`
`9.
`Avon’s sales of ANEW products in the United States are in excess of
`half a billion dollars.
`
`10.
`
`On January 10, 2001, Avon filed in the TTAB Opposition No.
`
`91121754, entitled Avon Products, Inc. v. Dean L. Rhoades, opposing registration
`
`of Application Serial No. 75/797,335 for the designation DERMANEW for
`“Electric facial massage apparatus and skin exfoliating cream for resurfacing facial
`
`i skin sold together as a unit,” which was filed by Rhoades on September 13, 1999
`
`{O\l
`
`E under Section 1(b) of the Lanham Act. A true and correct copy of the Notice of
`28 3 Opposition is annexed hereto as Exhibit 14.
`KELLEY DRYE 6:
`WARREN LLP
`
`; NYOI/GRAHM/l005582.3
`BNFY 5l8l49vl
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`- 4 -
`
`CASE NO. O5-02169 R (MANX)
`
`

`
`
`
`11.
`
`Shortly after Avon filed Opposition No. 91121754, settlement
`
`discussions commenced between Michael Hicks, Esq., Rhoades’ outside cou:nsel,
`
`and I. At an undetermined point after our initial discussions, Hicks became
`
`‘ Rhoades’ in-house counsel.
`
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`24
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`26 A
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`12. During the parties’ early settlement talks, Rhoades, without disclosure
`
`to Avon, applied to register additional ANEW~forrnative marks. When Avon
`
`learned of these applications, it filed six additional administrative proceedings in
`
`the TTAB against Rhoades opposing his applications or seeking to cancel his
`
`registrations.
`
`13.
`
`On May 15, 2002, Avon filed in the TTAB Opposition No. 91151696,
`
`entitled Avon Products, Inc. v. Dean L. Rhoades, opposing registration of
`
`Application Serial No. 76/290,995 for the designation KERANEW for “Hair care
`
`preparations, namely, shampoo, conditioners, styling gels, styling lotions and
`
`styling products adding volume, shine and control,” which was filed by Rhoades on
`
`July 26, 2001 under Section 1(a) of the Lanham Act. A true and correct copy of the
`
`Notice of Opposition is annexed hereto as Exhibit 15.
`
`14. On June 8, 2004, Avon filed in the TTAB Opposition No. 91160851,
`
`entitled Avon Products, Inc. v. Dean L. Rhoades, opposing registration of
`
`Application Serial No. 76/490,037 for the designation IF IT IS NOT
`
`DERMANEW, IT IS NOT PERSONAL MICRODERMABRASION for
`
`“Cosmetics, namely, toners, cremes, namely facial, body, hand and foot creme,
`
`exfoliating lotions and cremes for use on the skin, face, body, hands and feet; skin
`
`moisturizers; hydrating moisturizers for the skin; lotions, namely, skin, face, hand
`
`and body lotion; soap; non—medicated foot lotions and cremes; non—medicated
`
`lotions and cremes for cellulite reduction; non—medicated lotions and creams for use
`
`on stretch marks and cleansers for the skin, face, body, hands and feet,” which was
`
`27
`
`‘
`
`filed by Rhoades on February 20, 2003 under Section 1(b) of the Lanham Act. A
`
`KELLEY DRYE& J
`WARREN LLP
`J NYOI/GRAHM/10055823
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`CASE NO. 05-02169 R (MANX)
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`15.
`
`On June 18, 2004, Avon filed in the TTAB Opposition No. 91160985
`
`entitled Avon Products, Inc. v. Dean L. Rhoades, opposing registration of
`
`Application Serial No. 76/490,033 for the designation IF IT IS NOT
`E DERMANEW, IT IS NOT PERSONAL MICRODERMABRASION for “Skin
`
`1
`
`1
`
`;
`
`systems comprised of a handheld electric or battery operated massage and toning
`
`apparatus as well as skin stimulator attachments, foam applicator attachments, skin
`toner, skin creme, skin moisturizer, and skin cleanser sold as a unit,” which was
`
`filed by Rhoades on February 20, 2003 under Section 1(b) of the Lanham Act. A
`true and correct copy of the Notice of Opposition is annexed hereto as Exhibit 17.
`
`16.
`
`On July 26, 2004, Avon filed in the TTAB Cancellation No.
`
`92043538, entitled Avon Products, Inc. v. Dean L. Rhoades, to cancel Registration
`1 No. 2,861,067 for the designation GEMANEW for “Skin and facial cosmetics,
`3 namely, toner, microderrnabrasion creme, moisturizer, hydrating moisturizer, lotion
`
`r-A A f and cleanser,” which issued on July 6, 2004 based on Rhoades’ filing of
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`Application Serial No. 76/477,824 filed on December 23, 2002 under Section 1(a)
`
`of the Lanham Act. A true and correct copy of the Notice of Opposition is annexed
`1 hereto as Exhibit 18.
`
`17. On August 18, 2004, Avon filed in the TTAB Cancellation No.
`
`% 92043601, entitled Avon Products, Inc. v. Dean L. Rhoades, to cancel Registration
`
`No. 2,872,366 for the designation GEMANEW for “Skin care system, namely, a
`
`, hand held electrical or battery operated massage and exfoliating apparatus, skin
`
`j stimulator attachments, foam applicator attachments, toner, creme, moisturizer, and
`
`1 cleanser sold as a unit,” which issued on August 10, 2004 based on Rhoades’ filing
`of Application Serial No. 76/477,656 filed on December 23, 2002 under Section
`i 1(a) of the Lanham Act. A true and correct copy of the Notice of Opposition is
`annexed hereto as Exhibit 19.
`
`18.
`
`On October 1, 2004, Avon filed in the TTAB Opposition No.
`
`23
`KELLEY DRYE& i
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`i NY01/GRAHM/1005582.3
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`91162392, entitled Avon Products, Inc. v. Dean L. Rhoades, opposing registration
`
`_ 6 _
`
`CASE NO. 05-02169 R (MANx)
`
`

`
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`10
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`
`of Application Serial No. 76/426,003 for the designation DERMANEW PALM
`
`MICRODERMABRASION SYSTEM for “Electrical facial massage apparatus and
`
`skin exfoliating cream for resurfacing facial skin sold together as a unit” which was
`
`filed by Rhoades on June 27, 2002 under Section l(b) of the Lanham Act. A true
`
`i and correct copy of the Notice of Opposition is annexed hereto as Exhibit 20.
`
`19. On November 29, 2004, the TTAB consolidated Cancellation Nos.
`
`1 92043538 and 92043601. A true and correct copy of the 'ITAB’s Order is annexed
`
`hereto as Exhibit 21.
`
`20.
`
`In late 2003, Rhoades named Christine Lofgren, Esq. as attorney of
`
`record in the TTAB administrative proceedings after which the parties again
`
`attempted a settlement. Although settlement talks resumed, they were repeatedly
`
`stalled by Rhoades’ counsel.
`
`21.
`
`For over four years, Avon has agreed to extensions of the discovery
`
`times in the combined TTAB administrative proceedings to avoid the imposition of
`
`unnecessary costs on Rhoades.
`
`22.
`
`In Fall 2004, Rhoades sought leave to file late Answers in three TTAB
`
`14
`15 I
`
`16
`
`17 ‘
`
`proceedings. Because of the ongoing settlement negotiations, Avon consented to
`
`18 9
`
`19
`
`20 1
`
`21
`22
`23
`
`Rhoades’ motions to reopen and extend his time to answer in Cancellation Nos.
`92043538 and 92043601, but sensing bad faith tactics, Avon refused to consent to a
`third such motion to reopen in Opposition No. 91162392. Accordingly, that motion
`
`has been fully briefed and is now before the TTAB. True and correct copies of
`
`Rhoades’ stipulated motions to reopen and extend registrant’s time to answer or
`
`otherwise respond to petition for cancellation in Cancellation Nos. 92043538 and
`
`24
`
`92043601 are armexed hereto as Exhibits 22 and 23, respectively. True and correct
`
`25
`26
`
`copies of Rhoades’ motion to reopen applicant’s time to answer notice of
`
`opposition filed in Opposition No. 91162392 and Avon’s opposition papers are
`
`27
`
`annexed hereto as Exhibits 24 and 25, respectively.
`
`28
`KELLEY DRYE& 1
`WARREN LLP
`: NYOl/GRAHM/l005582.3
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`23.
`
`BNFY 5l8l49vl
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`In late 2004, Michael Gold, Esq., another attorney in Lofgren’s firm,
`
`- 7 -
`
`CASE NO. 05-02169 R (MANX)
`
`

`
`
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`took over the settlement discussions for Rhoades. His involvement lasted until
`
`January 2005, when Avon terminated settlement negotiations.
`
`24.
`
`In or about January 2005, Lofgren reappeared as main counsel in the
`
`'ITAB administrative proceedings and thereafter she and I resumed settlement talks.
`
`Lofgren advised me that she would continue to represent Rhoades for settlement
`
`purposes only, as Wesley Miller, Esq., Rhoades’ new in—house counsel, would
`
`5 become counsel of record in the 'ITAB administrative proceedings.
`
`25.
`
`On February 8, 2005, Avon served Rhoades with Opposer’s First
`
`Request for Production of Documents and Things, Opposer’s First Set of
`
`_
`
`Interrogatories and a Notice of Deposition in Opposition 91121754. True and
`
`[ correct copies of these discovery requests are annexed hereto as Exhibit 26.
`
`26. On February 9, 2005, Avon served Rhoades with Opposer’s First
`
`. Request for Production of Documents and Things and Opposer’s First Set of
`
`Interrogatories in Opposition 91160851. True and correct copies of these discovery
`requests are annexed hereto as Exhibit 27.
`
`27. On February 10, 2005, Avon served Rhoades with Opposer’s First
`Request for Production of Documents and Things and Opposer’s First Set of
`Interrogatories in Opposition 91160985. True and correct copies of these discovery
`
`requests are annexed hereto as Exhibit 28.
`
`28. On February 11, 2005, Avon served Rhoades with Opposer’s First
`
`; Request for Production of Documents and Things, Opposer’s First Set of
`
`E
`
`Interrogatories and a Notice of Deposition in consolidated Cancellations 92043538
`
`and 92043601. True and correct copies of these discovery requests are armexed
`
`hereto as Exhibit 29.
`
`29.
`
`Shortly after Avon served Rhoades with the discovery requests,
`
`interrogatories and deposition notices above, Lofgren and Miller indicated that
`
`i Rhoades wished to resume settlement negotiations. Accordingly, Avon granted
`
`' Rhoades extensions as outlined below:
`
`KELLEY DRYE 8:
`WARREN LLP
`
`NY01/GRAHM/10055823
`2 BNFY 5l8l49vl
`
`- 8 —
`
`CASE NO. 05-02169 R (MANx)
`
`

`
`
`
`RPR 12 2285
`
`8:25 PM FR if ' LLF’
`
`212 888 788?‘ =k2BB42BBBB34Sl2l P.B2
`
`Original Deadline
`Discovery responses due
`on March 15, 2005,
`deposition noticed for
`March 11, 2005
`
`Extended Deadline
`Discovery responses due
`on March 29, 2005,
`deposition reset for March
`25, 2005, then reset again
`for April 8, 2005.
`
`Consolidated
`Cancellations 92043501
`and 92043538
`
`Discovery responses due Discovery responses due
`on March 18, 2005,
`on April 1, 2005,
`deposition noticed for
`deposition reset for April
`March 24, 2005
`7, 2005
`
`30. On March 24, 2005, Avon and I were engaged in active settlement
`
`negotiations with Lofgren and Miller on Rhoades’ behalf.
`
`31. On March 28, 2005, counsel for Rhoades filed Motions to Suspend
`. Pending Civil Action in consolidated Cancellations 92043538 and 92043601 and
`
`Oppositions 91160985, 91160851 and 91121754. True and correct copies of these
`
`f motion papers are annexed hereto as Exhibits 30, 31, 32, 33, and 34.
`
`X
`
`I declare under penalty ofperjury under the laws of the United States that the
`foregoing is true and correct. Executed in New York, New York this 12th day of
`April, 2005.
`
`M1.
`
`, / #
`
`Michelle M. Graham
`
`KELLEY DRYE it
`WARREN LLI’
`
`‘ NY01/GRAHMI10055823
`
`— 9 -
`
`CASE No. 05-02169 R (MANx)
`
`>k>k TOTQI PQGF.fiF >K>k
`
`

`
`b Exhibit 1
`
`

`
`
`
`ANEW CLARIFYING ESSENCE
`
`Ir:-sr. E:-M ‘.3
`
`NYO 1/VENAK/l005288.1
`
`

`
`ANEW ADVANCED ALL-IN-ONE MAX SPF 15 UVA/UVB LOTION
`
`76up
`
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`
`NY01/VENAK/lO05288.1
`
`I
`
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`
`ANEW ULTRA CREAM CLEANSER
`
`1; 3fl?*1
`
`33‘
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`‘Jib.-£1.5-
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`
`NYOINENAK/1005288.1
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`
`
`ANEW LUMINOSITY ULTRA ADVANCED
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`ANEW RETROACTIVE+ REPAIR FACE CREAM
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`NY01/VENAK/lO05288.l
`
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`ANEW CLINICAL MICRO-EXFOLIANT
`
`‘E..anfIr‘_;.l4-.
`
`NYOI/VENAK/1005288.!
`
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`
`ANEW RETROACTIVE+ 2-IN-ONE CLEANSER
`
`
`
`NYOI/VENAK/1005288.!
`
`

`
`ANEW FORCE EXTRA TRIPLE LIFTING DAY CREAM SPF 15
`
`NY01/VENAK/lO05288.1
`
`

`
`ANEW ULTIMATE EYE CREAM
`
`NYOINENAK/lO05288.1
`
`

`
`ANEW ONE PERFECT GIFT SET
`
`
`
`NYO INENAK/1005288. 1
`
`Vi
`
`

`
`ANEW ULTIMATE MASK
`
`_.' 1.4--.
`
`
`
`NYO I/VENAK/1005289. 1
`
`

`
`
`
`ANEW CLINICAL LIFT AND TUCK PROFESSIONAL BODY SHAPER.
`
`NYOI/VENAK/l005289.l
`
`

`
`ANEW RETROACTIVE+ NIGHTLY RENEWAL GIFT SET
`
`
`
`NYO I/VENAK/1005289. 1
`
`

`
`ANEW PERFECT EYE CARE CREAM SPF 15
`
`
`
`NYOI/VENAK/l005289.l
`
`

`
`ANEW CLEARLY C 10% VITAMIN C SERUM
`
`\“\1-“xx.
`
`NYOINENAK/l005289.l
`
`

`
`ANEW FORCE EXTRA TRIPLE LIFTING NIGHT CREAM
`
`
`
`NYO]/VENAK/1005289. I
`
`24»
`
`

`
`ANEW LINE ELIMINATOR DUAL RETINOL FACIAL TREATMENT
`
`
`
`NYOI/VENAK/lO05289.1
`
`L (o
`
`

`
`ANEW LINE ELIMINATOR NEO-RETINOL LINE PLUMPER SPF 15
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`
`¢‘fiNl3\«V
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`NYOINENAK/1005289.!
`
`‘Z7
`
`

`
`ANEW ULTIMATE SKIN TRANSFORMING CREAM
`
`
`
`NYOINENAK/10052891
`
`Z8’
`
`

`
`ANEW CLINICAL LINE AND WRINKLE CORRECTOR
`
`
`
`fl‘xNEUL/:.LIwmr»a_
`5_‘’l'. 9!‘. fl
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`ANEW ULTIMATE HAND AND NAIL CREAM SPF 15
`
`
`
`-‘~uL.‘\-A‘‘
`
`NY0l/VENAK/lO053ll.l
`
`

`
`ANEW RETROACTIVE+ REPAIR BODY LOTION
`
`
`
`NYOI/VENAK/l0053ll.l
`
`.3 x
`
`

`
`ANEW RETROACTIVE+ EYE SERUM
`
`NYOINENAK/100531 1.1
`
`

`
`ANEW CLINICAL 2-STEP FACIAL PEEL
`
`
`
`NYOI/VENAK/1005311.!
`
`3-,4
`
`

`
`ANEW CLINICAL DEEP CREASE
`
`CONCENTRATE WITH BO-HYLUROX
`
`‘\t\.vFmxx
`
`NYOINENAK/100531 1.1
`
`

`
`ANEW CLINICAL LASER SYSTEM
`
`
`
`NYOI/VENAK/100531 1.1
`
`SS
`
`

`
`
`
`ANEW ADVANCED ALL-IN-ONE MAX SPF 15 UVA/UVB CREAM
`
`
`
`NYOINENAK/1005311.]
`
`'53
`
`

`
`AVON ULTIMATE LUXURIES GIFT SET
`
`
`
`NYOINENAK/10053l1.1
`
`

`
`ANEW RETROACTIVE+ DAY DEFENSE SPF 15 UVA/UVB
`
`NYOI/VENAK/1005311.]
`
`

`
`-«mm
`
`

`
`
`
`CERTIFICATE OF REGISTRATION
`
`This is to certify that the records of the Patent and Trademark Office show that an
`
`application was filed in said Office for registration of the Mark shown herein, a copy of said
`
`Mark and pertinent data from the Application being annexed hereto and made a part hereof,
`
`And there having been due compliance with the requirements of the law and with the
`
`regulations prescribed by the Commissioner of Patents and Trademarks,
`
`Upon examination,
`
`it appeared that the applicant was entitled to have said Mark
`
`registered under the Trademark Act of 1946, as amended, and the said Mark has been duly
`
`registered this day in the Patent and Trademark Office on the
`
`PRINCIPAL REGISTER
`
`to the registrant named herein.
`
`This registration shall "remain in force for TEN years unless sooner terminated as
`
`provided by law.
`
`
`
`In Testimony whereof I have hereunto set
`my hand and caused the seal of the Patent
`and Trademark Office to be affixed this
`
`twenty-fifth day of June 1996.
`
`

`
`
`
`. E EI E 3!?
`
`
`
`
`
`
`
`
`
`
`
`.44....._._......._....-_......_.....N........-._......._.......................-.....,,..._....-..._.._..-__..—_.—-—-—--—--~~
`
`NOTICE
`
`This Registration will be canceled by the Commissioner of Patents and
`
`Trademarks at the end of six years following the date of registration, unless
`
`within one year next precadirzg the expiration of such six years, the registram '
`
`files in the Patent and Trademari Office an affidavit showing that said
`
`mark is in use in Commerce or showing that its nonuse is due to special
`circurnstancu which excuse such nonuse and is not due to any intention to
`
`abandon the mark. A fee of $100.00 for each class must accompany the
`affidavit.
`
`‘ro
`
`

`
`
`
`Int. CI.: 3
`
`
`
`Prior U.S. CIs.: 1, 4, 6, 50, 51 and 52
`
`Reg. No. 1,982,608
`United States Patent and Trademark Office Registered June 25,1996
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`ANEW
`
`AVON vuouucrs, INC. (NEW YORK conro-
`RATION)
`9 WEST 57TH STREET
`NEW YORK, NY 10019
`
`PREPARATIONS,
`CARE
`SKIN
`FOR:
`NAMELY FACIAL MOISTURIZER, FACIAL
`EXFOLIANT, FACIAL CLEANSER, CHEST
`AND NECK EXFOLIANT, HAND AND BODY
`EXFOLIANT, EYE CREAM, AND COSMETICS,
`
`NAMELY FACIAL FOUNDATION, IN CLASS 3
`(U.S. CLS. I, 4, 6, 50, SI AND 52).
`FIRST USE
`4-0-1995;
`IN COMMERCE
`4—0—I995.
`OWNER OF US. REG. NOS.
`I,87I,799.
`
`I,732,358 AND
`
`SER. NO. 74—705,I78, FILED 7—Z4—I995.
`
`LALITHA MANI, EXAMINING ATTORNEY
`
`
`
`........._.‘...._.-.I....-..........-._....-,_,,_,
`
`‘H
`
`

`
`

`
`
`
`31'7-
`
`
`
`CERTIFICATE OF REGISTRATION
`
`PRINCIPAL REGISTER
`
`The Mark shown in this certificate has been registered in the United States
`
`Patent and Trademark Ofiice to the named registrant.
`
`The records of the United States Patent and Trademark Ofiice show that
`an application for registration of the Mark shown in this Certificate wasfiled in the
`Ofiice; that the application was examined and determined to be in compliance with
`the requirements ofthe law and with the regulations prescribed by the Director ofthe
`United States Patent and Trademark Oflice; and that the Applicant is entitled to
`registration ofthe Mark under the Trademark/tct of1946, asAmended.
`
`A copy of the Mark and pertinent data from the application are part of
`this certificate.
`
`This registration shall remain in force for TEN (10) years, unless
`terminated earlier as provided by law, and subject to compliance with the provisions
`ofSection 8 ofthe TrademarkAct of1946, asAmended.
`
`
`
`Director ofthe United States Patent and Trademark Oflice
`
`‘ta
`
`

`
`
`
`Requirements for Maintaining a
`
`Federal Trademark Registration
`
`'41»
`
`SECTION 8: AFFIDAVIT OF CONTINUED USE
`
`The registration shall remain in force for 10 years, except that the
`registration shall be canceled for failure to file an Affidavit of Continued
`Use under Section 8 of the Trademark Act, 15 U.S.C. §l058, upon the
`expiration of the following time periods:
`i) At the end of 6 years following the date of registration.
`ii) At the end of each successive 10-year period following the date of
`registration.
`‘
`
`Failure to file a proper Section 8 Aflidavit at the appropriate time will result in the
`cancellation of the registration.
`
`SECTION 9: APPLICATION FOR RENEWAL‘ A
`
`The registration shall remain in force for 10 years, subject to the provisions .
`of Section_ 8, except that the registration shall expire for failure to file an.
`Application for Renewal under Section 9 of the Trademark Act, 15 U.S.C.
`§1059, at the end of each successive 10-year period following the date of
`registration.
`‘
`
`Failure to file a proper Application for Renewal at the appropriate time will result in
`the expiration of the registration.
`
`No further notice or reminder of these requirements will be sent to the
`Registrant by the Patent and Trademark Office. It is recommended
`that the Registrant contact the Patent and Trademark Office
`approximately one year before the expiration of the time periods shown
`above todetemiine the requirements and fees for the filings required to
`maintain the registration.
`
`

`
`
`
`Int. C1.: 3
`
`,
`
`Prior U.S. Cls.: I, 4, 6, 50,51, and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 2,718,121
`Registered May 20, 2003
`
`
`
`,6‘.1
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`ANEW ULTIMATE
`
`INC.
`
`(NEW YORK COR-
`
`AVON PRODUCTS,
`PORATION)
`I251 AVENUE OF THE AMERICAS
`NEW YORK, NY 10020
`FOR: NON-MEDICATED SKIN CARE PREPARA-
`TIONS, IN CLASS 3 (us. CLS. 1, 4, 5, 50, 51 AND 52).
`
`OWNER OF U.S. REG. NOS. 1,732,358,
`AND OTHERS.
`
`l,993,I65,
`
`3“ 78*’63v‘2" “LED 5“ "2°°'-
`
`FIRST USE 9-0-2002; IN COMMERCE 9-0-2002.
`
`MICHAEL WEBSTER, EXAMINING ATTORNEY
`
`‘/4
`
`

`
`Exhibit 4
`
`

`
`
`
`CERTIFICATE OF REGISTRATION
`
`PRINCIPAL REGISTER
`
`The Mark shown in this certificate has been registered in the United States
`
`Patent and Trademark Ofiice to the named registrant.
`
`The records of the United States Patent and Trademark Oflice show that
`an application for registration of the Mark shown in this Certificate was filed in the
`Oflice; that the application was examined and determined to be in compliance with
`the requirements ofthe law and with the regulations prescribed by the Director ofthe
`United States Patent and Trademark Oflice; and that the Applicant is entitled to
`registration ofthe Mark under the TrademarkAct of I946, as Amended.
`
`A copy of the Mark and pertinent data from the application are part of
`this certificate.
`
`the owner of the
`To avoid CANCELLATION of the registration,
`registration must submit a declaration of continued use or excusable non-use
`between thefifth and sixth years after the registration date. (See next pagefitr more
`information.) Assuming such a declaration is properly filed,
`the registration will
`remain inforcefor ten (10) years, unless terminated by an order ofthe Commissioner
`for Trademarks or a federal court. (See next page for information on maintenance
`requirementsfirr successive ten-year periods.)
`
`
`
`Director of the United States Patent and Trademark Office
`¢'f§
`
`

`
`
`
`REQUIREMENTS TO MAINTAIN YOUR FEDERAL
`TRADEMARK REGISTRATION
`
`Requirements in the First Ten Years*
`What and When to File:
`
`° First Filing: A Declaration of Continued Use (or Excusable Non—use), filed between the
`5th and 6th years after the registration date. (See 15 U.S.C. §l058; 37 C.F.R. §2.16l.)
`0 Second Filing: A Declaration of Continued Use (or Excusable Non-use) and an
`Application for Renewal, filed between the 9th and 10th years after the registration date.
`(See 15 U.S.C. §l058 and §l059; 37 C.F.R. §2.l6l and 2.183.)
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
`° A Declaration of Continued Use (or Excusable Non—use) zfll an Application for
`Renewal, filed between each 9th and 10111-year period after the date when the first
`ten—year period ends. (See 15 U.S.C. §l058 and §l059; 37 C.F.R. §2.l6l and 2.183.)
`
`Grace Period Filings*
`
`There is a six-month grace period for filing the documents listed above, with payment of
`an additional fee.
`
`The U.S. Patent and Trademark Office (USPTO) will N_(_Y_1‘ send you any future notice
`or reminder of these filing requirements. Therefore, you should contact the USPTO
`approximately one year prior to the deadlines set forth above to determine the
`requirements and fees for submission of the required filings.
`NOTE: Electronic forms for the above documents, as well as information regarding
`current filing requirements and fees, are available online at the USPTO web site:
`
`WWW. g_(_)_K
`
`YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT
`FILE THE DOCUNIENTS IDENTIFIED ABOVE DURING THE
`SPECIFIED TI