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Trademark Trial and Appeal Board Electronic Filing System. 3935
`
`ESTTA Tracking number: ESTTA32424
`
`Filing date3
`
`05/08/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91160985
`
`Defendant
`Rhoades, Dean L.
`Rhoades, Dean L.
`i 9107 Wilshire Boulevard, Suite 400
`Beverly Hills, CA 90210
`
`Wesley T. Miller, Esq.
`DermaNeW, Inc.
`Correspondence 9107 Wilshire BlVd., Suite 400
`Address
`Beverly Hills, CA 90210
`
`Wes1eytmi11er@coX.net
`APPLICANTA’S REPLY TO OPPOSERA’S OPPOSITION TO
`MOTION TO SUSPEND PROCEEDING PENDING CIVIL
`ACTION
`Wesley T. Miller
`
`Submission
`
`Filer's Name
`
`Filer‘s e—mail
`
`Wes1eytmi11er@cOX.net
`
`Signature
`
`/Wesley T. Miller/’
`
`Attachments
`
`Reply to Opp to Motion to Suspend - Opp no 91160985.pdf( 7 pages
`% )
`l Miller Declaration re Reply to Opp to Motion to Suspend - Opp no
`91160985.pdf( 3 pages)
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91160985
`
`Avon Products, Inc.,
`
`Opposer,
`
`V.
`
`Rhoades, Dean L.,
`
`Applicant
`
`\_/\_/\_/\_/\_/\_/\_/\_/\_/
`
`APPLICANT’S REPLY TO OPPOSER’S OPPOSITION TO MOTION TO
`
`SUSPEND PROCEEDING PENDING CIVIL ACTION
`
`1. PRELIMINARY STATEMENT
`
`Applicant Dean L. Rhoades (“Applicant”) submits this REPLY to OPPOSER
`
`Avon Products, Inc.’s OPPOSITION TO MOTION TO SUSPEND PROCEEDING
`
`PENDING CIVIL ACTION. The OPPOSITION TO MOTION TO SUSPEND filed by
`
`Avon Products, Inc. (“Avon”) is an attempt by Avon to cause undue hardship and
`
`expense to Applicant for no legitimate or meritorious purpose. The Board should grant
`
`Applicant’s MOTION TO SUSPEND and deny Avon’s OPPOSITION to said MOTION:
`
`1) as lacking merit based upon the circumstances presented; 2) as contrary to long-
`
`standing Board policy and the authority granted the Board under Trademark Trial and
`
`Appeal Board Manual of Procedure (“TBMP”) § 510.02 and 37 C.F.R. § 2.1 17(a); 3) to
`
`promote judicial economy by allowing a consolidation of the issues presently before the
`
`Board to be more fully and uniformly litigated in the United States District Court Civil
`
`

`
`Action No. 05—02l69R (MANx); and, 4) to avoid inconsistent judgments in the civil
`
`action in the District Court and in the multitude of TTAB proceedings.
`
`This REPLY is supported by the Declaration of Wesley T. Miller ("Miller
`
`Decl."), Counsel for Applicant, which is attached hereto and incorporated by reference.
`
`II.
`
`ARGUMENT
`
`A.
`
`APPLICANT’S MOTION TO SUSPEND WAS MADE IN GOOD
`
`FAITH
`
`Contrary to Avon's assertions, Applicant brought the pending MOTION TO
`
`SUSPEND in good faith and in anticipation of fully and uniformly litigating all current
`
`U.S. trademark disputes with Avon in a single forum in the United States District Court.
`
`An actual case and controversy exists between the parties, and has existed, since at least
`
`September of 2003, when Applicant was explicitly threatened with an action for
`
`trademark infringement by Avon’s in—house counsel, John Bergin. Miller Decl., ‘][ 6.
`
`Moreover, outside counsel for Avon, Michelle M. Graham, is misleading in her
`
`assertions to the Board and to the U.S. District Court in her declaration that negotiations
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`were “active” on March 24, 2005. On that date, and after Applicant rejected oppressive
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`and overreaching settlement terms having nothing to do with the trademark dispute, in-
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`house counsel for Avon, John Bergin, declared the negotiations to be “at an impasse,”
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`and he went on to state that the attorneys for Avon wanted to confer privately to
`
`“examine their options.” Miller Decl., ‘][ 4. Before the negotiations broke down, Mr.
`
`Bergin had insisted on terms that Applicant believed to be oppressive and overreaching
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`and unrelated to the trademarks at issue in the dispute between Applicant and Avon. Id.
`
`

`
`Mr. Bergin prefaced his insistence on the oppressive and overreaching terms by stating
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`that Avon would not give up its “right to damages” in settlement without obtaining those
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`terms. Id.
`
`As the Board is well aware, its powers do not include the right to award damages
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`of any kind. Therefore, a claim for damages could only be made in litigation at the
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`District Court level, which is where the parties are now. Clearly in this context, Mr.
`
`Bergin was reiterating Avon’s threat of litigation for trademark infringement, affirming
`
`an actual case and controversy existed at the time Applicant filed his action in the U.S.
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`District Court. By its very inclusion of its MOTION TO DISMISS the pending District
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`Court action as Exhibit B to its OPPOSITION TO MOTION TO SUSPEND
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`PROCEEDING PENDING CIVIL ACTION that is before this Board, Avon concedes
`
`that the District Court is the proper forum for adjudication of the full panoply of factual
`
`and legal issues in its dispute with Applicant. Further, this proceeding before the TTAB
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`is not the proper forum for adjudication of said MOTION TO DISMISS, as it is germane
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`only to the civil action currently before the U.S. District Court for the Central District of
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`California.
`
`In its OPPOSITION TO MOTION TO SUSPEND PROCEEDING PENDING
`
`CIVIL ACTION before this Board, Avon offers as additional alleged evidence of
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`Applicant’s so—called “bad faith” the fact that Applicant has experienced several changes
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`of counsel representing him in these proceedings. This assertion stands in stark contrast
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`to the well—established public policy against punishing a party or allowing any negative
`
`inferences to be drawn from a party’s selection of more effective representation.
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`Moreover, at the times of Applicant’s changes in counsel of record, there were no
`
`

`
`pending discovery requests from Opposer, and the changes in counsel had no significant
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`impact in prolonging either the negotiations with Avon or these proceedings.
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`Accordingly, Avon’s argument is completely without merit.
`
`B.
`
`SUSPENSION OF TTAB PROCEEDINGS IS SUPPORTED BY
`LAW TTAB POLICY AND PUBLIC POLICY
`
`The Board is authorized by law to suspend matters before it when the parties
`
`thereto become engaged in litigation of issues before the Board. 37 C.F.R. § 2.1 l7(a)
`
`provides that:
`
`“Whenever it shall come to the attention of the Trademark Trial and
`
`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.”
`
`Moreover, it is the long—standing policy and practice of the Board to suspend
`
`proceedings when, “In view of the fact that the issues involved in the civil action may
`
`have direct bearing upon applicant's right to register its mark. . .suspension of proceedings
`
`pending final disposition of the civil action [is] correct and proper.” The Other
`
`Telephone Company v. Connecticut National Telephone Company, Inc., l8l USPQ 779
`
`(Con1rPats 1974). See also Tuvache Inc. v. Emilio Pricci Perfumes, International Inc. et
`
`al., 152 USPQ 574 (S.D. N.Y. 1967); Whopper—Burger, Inc. v. Burger King
`
`Corporation, l7l USPQ 805 (TTAB l97l).
`
`Avon has cited no cases in support for its request that this Board abandon its
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`policy of suspending opposition and cancellation issues where the parties are engaged in
`
`civil action. Instead, Avon asserts in its OPPOSITION TO MOTION TO SUSPEND that
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`Applicant filed a Complaint for declaratory judgment “in order to avoid responding to
`
`

`
`discovery and being deposed in a number of opposition and cancellation proceedings
`
`presently before the Board.” This assertion lacks any factual or legal foundation or any
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`foundation in the long—standing policies and practices of the Board in promoting judicial
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`economy. Indeed, given that full discovery will occur and depositions will be taken as a
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`result of and, incident to, the pending civil action, Avon's assertion of dilatory tactics is
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`disingenuous.
`
`Similar arguments against suspension of TTAB proceedings pending the outcome
`
`of civil actions have been addressed by the Comn1issioner’s Office, and those arguments
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`have been rejected based upon the authority vested in the Board and its exercise of sound
`
`discretion in promoting judicial economy. In The Other Telephone Company v.
`
`Connecticut National Telephone Company, Inc., l8l USPQ 779 (Con1rPats 1974), the
`
`Commissioner denied a petition to vacate the Board’s order suspending TTAB
`
`proceedings. In supporting the Board’s exercise of discretion to suspend the proceedings,
`
`the Commissioner stated,
`
`“Since a civil action had been instituted and the request for suspension had
`occurred prior to the close of opposer's testimony period it was not unreasonable
`under the circumstances for the opposer to forego moving forward and taking
`costly testimony for presentation as evidence in the opposition proceedings. If the
`civil action would, in fact, dispose of the issues currently before the Board it
`would be an exercise in futility to pursue evidence at this time which would not
`necessarily affect the outcome of the opposition.”
`
`Id at p. 781. In the present case, Applicant filed his MOTION TO SUSPEND prior to the
`
`close of the discovery period and he chose to forego further discovery in the TTAB
`
`proceedings based entirely upon his concern over the duplication of efforts, the waste of
`
`resources that would result from continued discovery in the TTAB and in the civil action,
`
`and in good faith anticipation of the Board’s favorable ruling on his MOTION TO
`
`SUSPEND.
`
`

`
`Here, Applicant is engaged in six opposition and/or cancellation proceedings in
`
`the U.S. brought by Avon, as well as similar proceedings brought by Avon in six foreign
`
`jurisdictions. Avon’s actions in these matters make clear its intention to oppressively
`
`take advantage of its extensive resources to the detriment of the Applicant by forcing the
`
`Applicant to defend his marks in many jurisdictions simultaneously and at great expense.
`
`Applicant’s desire to preserve resources and to consolidate the U.S. trademark issues with
`
`Avon into a single action, to be fully litigated and resolved with finality in federal court,
`
`should not be thwarted by Avon’s attempt to unnecessarily prolong these proceedings.
`
`Further, “judicial economy warrants a consolidation of issues, including those which may
`
`be presented for determination by the Board or which may have a bearing on an issue
`
`before the Board, into one forum vested with the authority to hear all issues presented. It
`
`is not unreasonable, in such a case, that proceedings be stayed in the administrative
`
`tribunal pending the final disposition of issues by the other forum.” The Other Telephone
`
`Company, at p. 782.
`
`As the issues presented for adjudication in Applicant's civil action have direct
`
`bearing upon the issues before the Board, there is a present and obvious risk of
`
`inconsistent judgments, and the adjudication of those issues in U.S. District Court will be
`
`dispositive of the issues before the Board, the present matter is Lily the type of
`
`circumstance contemplated by 37 C.F.R. § 2.1 l7(a) and put into practice by the Board.
`
`The long—standing policy of the Board, well— grounded in law and practice, and the
`
`principles of judicial economy dictate a ruling by the Board in favor of Applicant’s
`
`MOTION TO SUSPEND PROCEEDINGS PENDING CIVIL ACTION.
`
`//
`
`

`
`III.
`
`CONCLUSION
`
`Suspension of the TTAB proceeding is correct and proper in this, and the related,
`
`TTAB proceedings. Disposition of the civil action will determine who has superior
`
`trademark rights and whether Applicant’s mark creates a likelihood of confusion or
`
`infringement of Opposer’s mark. The civil action therefore involves issues in common
`
`with those before the Board. Thus, further proceedings on this matter in the TTAB prior
`
`to the final disposition of the civil action would in fact be duplicative, unduly
`
`burdensome and wasteful for the Board and the parties, and not be dispositive of the
`
`trademark dispute between the parties. Accordingly, it is respectfully submitted that all
`
`further proceedings in Opposition No. 91160985 be suspended pending disposition of
`
`Civil Action No. 05—02l69R (MANX).
`
`DATED: May 8, 2005
`
`By:
`
`/Wesley T. Miller/
`
`Wesley T. Miller
`Attorney for Applicant Dean L. Rhoades
`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that a true copy of the within APPLICANT’S RESPONSE
`
`TO OPPOSER’S OPPOSITION MOTION TO SUSPEND PROCEEDING PENDING
`
`CIVIL ACTION was served via first class mail upon the Opposer by depositing a copy
`
`thereof in the mail, postage prepaid, directed to MICHELLE GRAHAM, KELLEY
`
`DRYE & WARREN, LLP, l0l PARK AVENUE, NEW YORK, NY l0l78, this 8th day
`
`of May, 2005.
`
`/Wesley T. Miller/
`
`Wesley T. Miller
`Attorney for Applicant Dean L. Rhoades
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91160985
`
`Avon Products, Inc.,
`
`Opposer,
`
`V.
`
`Rhoades, Dean L.,
`
`Applicant
`
`\_/\_/\_/\_/\_/\_/\_/\_/\_/
`
`DECLARATION OF WESLEY T. MILLER
`
`I, Wesley T. Miller, hereby state and declare as follows:
`
`1.
`
`I am the Attorney of Record and counsel for the APPLICANT in the
`
`aboVe—captioned action before the Trademark Trial and Appeal Board of
`
`the U.S. Patent and Trademark Office. The facts stated in this Declaration
`
`are of my own personal knowledge, or based upon information and
`
`documents to which I have access in the course of my representation of
`
`Applicant. I make this Declaration in support of APPLICANT’S
`
`RESPONSE TO OPPOSER’S OPPOSITION TO MOTION TO
`
`SUSPEND PROCEEDING PENDING CIVIL ACTION.
`
`Applicant Dean L. Rhoades and his related company DermaNew, Inc.
`
`(collectively, "DermaNew"), filed a complaint in the United States District
`
`Court for the Central District of California for declaratory relief on March
`
`24, 2005, requesting a judgment of non—infringement of AVon’s “ANEW”
`
`marks and to establish the right to register Applicant's marks with the
`
`

`
`USPTO. The complaint requested said judgment for the marks
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`“DERMANEW”, “KERANEW”, “GEMANEW”, “DERMANEW
`
`INSTITUTE”, “IF IT IS NOT DERMANEW, IT IS NOT PERSONAL
`
`MICRODERMABRASION”, and “DERMANEW PALM
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`MICRODERMABRASION SYSTEM”, amongst others, and collectively
`
`referred to hereafter as the “DermaNew marks”. All of these marks are
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`currently at issue in these TTAB proceedings.
`
`Prior to the filing of the above—mentioned complaint on March 24, 2005, a
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`conference call was held between attorneys for Avon Products, Inc.
`
`(“Avon”), and counsel for Applicant Dean L. Rhoades. Participants in that
`
`conference call were: John Bergin, in—house counsel for Avon; Michelle
`
`M. Graham, outside counsel for Avon; Christine Lofgren, outside counsel
`
`for Applicant Dean L. Rhoades and DerrnaNew, Inc.; and me, Wesley T.
`
`Miller, in—house counsel for Applicant Dean L. Rhoades and DerrnaNew,
`
`Inc.
`
`Prior to the March 24, 2005, conference call, the parties had been
`
`negotiating with a view toward the settlement of their trademark disputes
`
`on a worldwide basis.
`
`On March 24, 2005, counsel for Applicant (Christine Lofgren and Wesley
`
`T. Miller) communicated to counsel for Avon that Avon had requested
`
`terms that were overreaching and oppressive to Applicant, unrelated to the
`
`parties’ trademark dispute, and therefore unacceptable to Applicant. John
`
`Bergin, in—house counsel for Avon, then declared that our settlement
`
`

`
`negotiations were “at an impasse.” Mr. Bergin went on to state that Avon
`
`would not give up its “right to damages” in a settlement of the trademark
`
`dispute without Applicant’s acquiescence to the unrelated terms demanded
`
`by Avon.
`
`6.
`
`On information and belief, Applicant Dean L. Rhoades has been under the
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`implicit threat of litigation with Avon for trademark infringement since the
`
`inception of these opposition proceedings, and he has been under the
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`explicit threat of litigation from Avon since at least September of 2003,
`
`following a face—to—face meeting with Avon’s in—house counsel, John
`
`Bergin, during which Mr. Bergin repeatedly and explicitly threatened to
`
`sue Mr. Rhoades for trademark infringement for use of the marks at issue.
`
`7.
`
`Avon has filed six opposition and/or cancellation actions in the United
`
`States Patent and Trademark Trial and Appeals Board related to the
`
`“DermaNew” marks, all of which are at issue in the pending Civil Action
`
`filed by Applicant and DermaNew, Inc.
`
`8.
`
`Avon has additionally filed and/or has pending filings for opposition or
`
`cancellation actions related to the “DermaNew” marks in at least six
`
`foreign jurisdictions, including: the European Community, Israel, Brazil,
`
`Canada, Hong Kong, and South Korea.
`
`I declare under penalty of perjury under the laws of the United States that the foregoing is
`
`true and correct. Executed in Aliso Viejo, California, this 8th day of May, 2005.
`
`/Wesley T. Miller/
`
`Wesley T. Miller
`Attorney for APPLICANT Dean L. Rhoades

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