Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1027343
`
`Filing date:
`
`01/07/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Admar International, Inc.
`
`Corporation
`
`Citizenship
`
`Delaware
`
`3030 Aurora Avenue
`Monroe, LA 71201
`UNITED STATES
`
`Robert M. Chiaviello, Jr.
`NubyLaw
`3030 Aurora Avenue
`Monroe, LA 71201
`UNITED STATES
`bobc@nuby.com
`3184104012
`
`Registration Subject to Cancellation
`
`Registration No.
`
`4680050
`
`Registration date
`
`01/27/2015
`
`Registrant
`
`TALBOTS GROUP, LIMITED PARTNERSHIP, THE
`One Talbots Drive
`Hingham, MA 02043
`UNITED STATES
`
`Additional Registrant Information
`
`Additional registrant in-
`formation provided by
`the petitioner
`
`The Talbots, Inc.
`One Talbots Drive
`Hingham, MA 02043
`UNITED STATES
`no email provided
`no phone number provided
`
`Goods/Services Subject to Cancellation
`
`Class 003. First Use: 2014/09/29 First Use In Commerce: 2014/09/29
`All goods and services in the class are subject to cancellation, namely: perfume, eau de toilette
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`

`

`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`
`88597762
`
`Application Date
`
`08/29/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`DR. TALBOT'S
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2011/12/31 First Use In Commerce: 2011/12/31
`(Based on Use in Commerce) Baby powder;Baby powders; Lip balm; Lip balm;
`Skin cream; Skin creams; Skin creams in liquid and in solid form; Skin creams in
`liquid and solid; Skin creams in liquid and solid form(Based on Intent to Use)
`Body wash; Cleaner for use on stainless steel; Cream soaps; Detergent soap;
`Detergents for household use; Dish detergents; Shampoos; Shampoos for ba-
`bies; Toothpaste;Toothpastes; Wipes impregnated with a cleaning preparation;
`Wipes impregnated with a skin cleanser; After sun creams; Anti-aging cream;
`Anti-aging creams; Anti-wrinkle cream; Anti-wrinkle creams; Baby shampoo;
`Baby wipes impregnated with cleaning preparations; Bath cream; Beau-
`tycreams; Beauty creams for body care; Beauty balm creams; Body cream;
`Body creamsoap; Body creams; Cases for baby wipesimpregnated with cleaning
`preparations;Cosmetic creams for skin care; Cosmetichand creams; Cosmetic
`massage creams; Disposable wipes impregnated with cleaning chemicals or
`compounds for industrial and commercial use; Disposable wipes impregnated
`with cleansing chemicals or compounds for babies; Disposable wipes impreg-
`nated with cleansing compounds for useon babies; Eye cream; Face creams;
`Facecreams for cosmetic use; Face and body creams; Face and body beauty
`creams; Facial cream; Facial creams; Hair shampoo; Hand cleaners; Hand
`creams; Laundry detergent; Laundry detergents; Lip cream; Liquid laundry de-
`tergents; Massage creams;Moisturising creams; Moisturizing creams; Non-
`medicated balms for use on lips; Non-medicated cream soap; Non-medicated lip
`balm that does not contain beeswax; Non-medicated lip balms; Non-medicated
`diaper rash cream; Non-medicated foot cream; Non-medicated herbal body care
`products, namely, body oils, salves, and lip balms; Non-medicated skin creams;
`Non-medicated skin creams with essential oils for use in aromatherapy; Non-
`medicated skin care creams and lotions; Non-medicated skin care preparations,
`namely, creams, lotions, gels, toners, cleaners and peels; Non-medicated skin
`care preparations, namely, creams; Powder laundry detergents; Spray cleaners
`for use on stainless steel
`
`U.S. Registration
`No.
`
`5180038
`
`Registration Date
`
`04/11/2017
`
`Application Date
`
`08/01/2016
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`DR. TALBOT'S ORIGINAL SINCE 1933
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording "DR. TALBOT'S ORIGINAL SINCE 1933". The
`wording "DR. TALBOT'S" appears inside an oblong shaped banner which bi-
`sects an oval containing rays of light and the wording "ORIGINAL" in the top
`portion and "SINCE 1933" in the bottom portion.
`
`Class 005. First use: First Use: 2009/08/06 First Use In Commerce: 2009/08/06
`Medicated diaper rash ointments and lotions; Medicated skin preparation for
`usein treating diaper rash
`
`Attachments
`
`88597762#TMSN.png( bytes )
`87123175#TMSN.png( bytes )
`Talbots - US Cancellation - Petition - Final - 2020.01.07.pdf(195324 bytes )
`
`Signature
`
`/Robert M. Chiaviello, Jr./
`
`Name
`
`Date
`
`Robert M. Chiaviello, Jr.
`
`01/07/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the Matter of Registration No. 4,680,050
`
`For the Mark: TALBOTS
`
`Registered: 27 January 2015
`
`
`ADMAR INTERNATIONAL, INC.,
`
`
`
`
`
`
`
`Petitioner,
`
`
`
`Cancellation No. _________
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`THE TALBOTS, INC.,
`
`v.
`
`
`
`Respondent.
`
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`Admar International, Inc., Petitioner, a corporation organized and existing under the laws
`
`of Delaware with a principal place of business at 3030 Aurora Avenue, Monroe, LA 71201,
`
`believes that it has been and will continue to be damaged by U.S. Trademark Registration No.
`
`4,680,050 for the mark TALBOT, and hereby petitions for cancellation of the TALBOT mark
`
`pursuant to Section 14(1) of the Lanham Trademark Act of 1946 ("Lanham Act"), 15 U.S.C. §
`
`1064(1).
`
`As grounds for cancellation, Petitioner alleges as follows:
`
`1. Petitioner is in the business of licensing the design, distribution, promotion and sale of
`
`personal care products.
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`
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`1
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`

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`2. Petitioner is the owner of the application, bearing Serial No. 88/597,762, to register the
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`mark DR. TALBOT’S for Body wash; Cleaner for use on stainless steel; Cream soaps;
`
`Detergent soap; Detergents for household use; Dish detergents; Shampoos; Shampoos for
`
`babies; Toothpaste; Toothpastes; Wipes impregnated with a cleaning preparation; Wipes
`
`impregnated with a skin cleanser; After sun creams; Anti-aging cream; Anti-aging creams;
`
`Anti-wrinkle cream; Anti-wrinkle creams; Baby shampoo; Baby wipes impregnated with
`
`cleaning preparations; Bath cream; Beauty creams; Beauty creams for body care; Beauty
`
`balm creams; Body cream; Body cream soap; Body creams; Cases for baby wipes
`
`impregnated with cleaning preparations; Cosmetic creams for skin care; Cosmetic hand
`
`creams; Cosmetic massage creams; Disposable wipes impregnated with cleaning
`
`chemicals or compounds for industrial and commercial use; Disposable wipes impregnated
`
`with cleansing chemicals or compounds for babies; Disposable wipes impregnated with
`
`cleansing compounds for use on babies; Eye cream; Face creams; Face creams for cosmetic
`
`use; Face and body creams; Face and body beauty creams; Facial cream; Facial creams;
`
`Hair shampoo; Hand cleaners; Hand creams; Laundry detergent; Laundry detergents; Lip
`
`cream; Liquid laundry detergents; Massage creams; Moisturizing creams; Moisturizing
`
`creams; Non-medicated balms for use on lips; Non-medicated cream soap; Non-medicated
`
`lip balm that does not contain beeswax; Non-medicated lip balms; Non-medicated diaper
`
`rash cream; Non-medicated foot cream; Non-medicated herbal body care products, namely,
`
`body oils, salves, and lip balms; Non-medicated skin creams; Non-medicated skin creams
`
`with essential oils for use in aromatherapy; Non-medicated skin care creams and lotions;
`
`Non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and
`
`
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`2
`
`

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`peels; Nonmedicated skin care preparations, namely, creams; Powder laundry detergents;
`
`Spray cleaners for use on stainless steel, all in International Class 3.
`
`3. Petitioner is the owner of U.S. Trademark Registration No. 5,180,038 for the stylized word
`
`mark DR. TALBOT’S ORIGINAL SISNCE 1933 for use on medicated diaper rash
`
`ointments and lotions and medicated skin preparation for use in treating diaper rash, all in
`
`International Class 5. By assignment dated January 7, 2020, Petitioner is the owner of nine
`
`U.S. Trademark applications for the word mark NUBY in the various international classes
`
`and for the various goods and services as set out in the chart attached as Exhibit A.
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`4. Petitioner has licensed the DR. TALBOT’S mark in interstate commerce in the United
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`States to Talbot’s Pharmaceuticals Family Products, LLC., continuously since August 6,
`
`2009 for use in connection with the sale, promotion and distribution of personal care
`
`products including products that are similar if not identical to the products offered under
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`Respondent’s mark. Petitioner supervises the design, manufacture, promotion and sale of
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`the personal care products offered under the DR. TALBOT’S mark to insure that they are
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`of high quality encompassing attractive and unique product designs and are constructed of
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`high quality materials using state of the art manufacturing. All good will associated with
`
`the use of the DR. TALBOT’S mark accrues to the benefit of Petitioner.
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`5. Petitioner and Petitioner’s licensee have used the DR. TALBOT’S mark in interstate
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`commerce in the United States continuously since at least August 6, 2009 in connection
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`with the sale and distribution of various personal care products including medicated diaper
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`rash ointments and lotions, medicated skin preparation for use in treating diaper rash, and
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`products that are similar if not identical to the products offered under Respondent’s mark.
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`3
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`

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`6. As a result of its widespread, continuous, and exclusive use of the DR. TALBOT’S mark
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`to identify its personal care products including medicated diaper rash ointments and lotions,
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`medicated skin preparation for use in treating diaper rash, and products that are similar if
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`not identical to the products offered under Respondent’s mark, the DR. TALBOT’S mark
`
`identifies Petitioner as their source. Petitioner owns valid and subsisting federal statutory
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`and common law rights to the DR. TALBOT’S mark.
`
`7. Petitioner’s DR. TALBOT’S mark is distinctive to both the consuming public and
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`Petitioner’s trade.
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`8. Petitioner and Petitioner’s licensee have expended substantial time, money and resources
`
`marketing and promoting medicated diaper rash ointments and lotions and medicated skin
`
`preparation for use in treating diaper rash, and products that are similar if not identical to
`
`the products offered under Respondent’s mark, all sold under the DR. TALBOT’S mark
`
`throughout the United States including the use of point of purchase materials, displays and
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`social media.
`
`9. The personal care products including medicated diaper rash ointments and lotions and
`
`medicated skin preparation for use in treating diaper rash, and products that are similar if
`
`not identical to the products offered under Respondent’s mark, Petitioner’s licensee offers
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`under the DR. TALBOT’S mark are of high quality encompassing attractive and unique
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`product designs and are constructed of high quality materials using state of the art
`
`manufacturing.
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`10. Upon information and belief, Respondent, The Talbots, Inc., a Delaware corporation with
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`an address at One Talbots Drive, Hingham, MA 02043, is the current listed owner of
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`Registration No. 4,680,050 for the mark TALBOT in connection with perfume and eau de
`
`
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`4
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`

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`toilette in International Class 3. That trademark registration, based on an application filed
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`on April 24, 2014, was issued on January 27, 2015.
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`11. Petitioner’s DR. TALBOT’S mark has priority over Respondent’s mark because
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`Petitioner’s first-use date of the DR. TALBOT’S mark predates the filing date of
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`Respondent’s application for Registration No. 4,680,050 or any other date on which the
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`Respondent may rely for purposes of priority.
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`12. Respondent’s mark is essentially identical to Petitioner’s DR. TALBOT’S mark.
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`13. The goods covered by Respondent’s Trademark Registration No. 4,680,050 are
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`substantially identical to the personal care products offered by Petitioner’s licensee under
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`the DR. TALBOT’S mark.
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`14. Respondent’s Trademark Registration No. 4,680,050 is unrestricted as to consumers or
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`trade channels. As such, it is presumed that Respondents’ goods identified in the
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`challenged registration are sold to ordinary consumers of personal care products including
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`medicated diaper rash ointments and lotions and medicated skin preparation for use in
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`treating diaper rash, including consumers of Petitioner’s licensee’s personal care products
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`including medicated diaper rash ointments and lotions and medicated skin preparation for
`
`use in treating diaper rash, and travel in all ordinary trade channels through which
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`Petitioner’s licensee sells personal care products including medicated diaper rash ointments
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`and lotions and medicated skin preparation for use in treating diaper rash under its DR.
`
`TALBOT’S mark.
`
`GROUND FOR CANCELLATION –
`PRIORITY AND LIKELIHOOD OF CONFUSION
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`15. Respondent’s registration should be cancelled because it consists of a mark which is
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`identical to Petitioner’s previously used DR. TALBOT’S mark as to be likely, when used
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`
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`5
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`

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`in connection with Respondent’s goods, to cause confusion, mistake, or deception, and to
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`cause damage to Petitioner thereby.
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`WHEREFORE, Petitioner respectfully requests that its cancellation be sustained, and the
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`Respondent’s Trademark Registration No. 4,680,050 be cancelled.
`
`Respectfully submitted this 7th day of January 2020,
`
`_/s/Robert M. Chiaviello Jr._____
`Robert M. Chiaviello, Jr.
`NubyLaw
`New York Bar No. 2148687
`Texas Bar No. 04190720
`Louisiana Bar No. 37370
`3030 Aurora Avenue
`Monroe, LA 71201
`(318) 410-4012
`bobc@nuby.com
`
`Attorney for Petitioner Admar International, Inc.
`
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`6
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`EXHIBIT A
`EXHIBIT A
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`7
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`

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`Serial Number
`88598271
`
`Class
`21
`
`88598181
`88598340
`
`20
`28
`
`88598145
`
`11
`
`88598101
`
`10
`
`88598052
`
`88597839
`
`88597776
`
`9
`
`8
`
`7
`
`Goods
`holders; Toothbrushes;
`cases; Toothbrush
`Toothbrush
`Toothbrushes; Toothbrushes; Toothbrushes, electric; Bottle
`cleaning brushes; Cleaning brushes for household use; Dental
`care kit comprising toothbrushes and floss; Electric toothbrush
`replacement handles and recharging docks sold as a unit; Electric
`toothbrush replacement heads; Electric toothbrushes; Electric
`tooth brushes; Electrical toothbrushes; Finger brushes for dental
`care; Finger brushes for dental care of babies and children; Finger
`toothbrushes; Finger toothbrushes for babies; Hair, nail and tooth
`brushes; Manual
`toothbrushes; Oral care kit comprising
`toothbrushes and floss; Tooth brush cases; Tooth brushes; Tooth
`brushes, non-electric
`Bottle racks
`Toy jewelry; Baby multiple activity toys; Bath toys; Bathtub toys;
`Infant toys; Infant action crib toys; Infant development toys; Plush
`toys; Plush toys with attached comfort blanket; Soft knitted toys;
`Soft sculpture toys; Soft sculpture plush toys; Squeezable
`squeaking toys; Squeeze toys; Stuffed toy animals; Stuffed toy
`bears; Stuffed toys; Stuffed and plush toys; Water toys; Water
`squirting toys; Water-squirting toys
`Sterilizers; Baby bottle sterilizers; Electric warmers for feeding
`bottles; Electric beverage warmers; Electric beverage warmers in
`the nature of bottles; Milk sterilizers; Water sterilizers; Water
`sterilizers
`Breast pumps; Pacifier clips; Pacifier cloth for attachment to
`infant pacifiers; Pacifiers for babies; Teethers; Thermometers for
`medical purposes; Thermometers for medical use; Babies' bottles;
`Baby bottle nipples; Baby bottles; Baby feeding pacifiers; Breast
`milk storage bottles; Clinical thermometers; Clips for pacifiers;
`Disposable baby bottle liners; Disposable teats being pacifiers for
`babies; Ear
`thermometers; Fever
`thermometers; Health
`monitoring devices consisting of blood pressure monitors,
`thermometers and pedometers; Infrared thermometers for medical
`purposes; Nipples for baby bottles; Nursing bottles; Pouches
`specially adapted for holding pacifiers; Teats being pacifiers for
`babies
`Baby monitors; Remote video monitoring system consisting
`primarily of a camera and video monitor for recording and
`transmitting images to a remote location; Video monitors; Video
`baby monitors
`Manicure implements, namely, nail clippers; Manicure sets;
`Scissors; Scissors
`for children; Nail scissors; Pedicure
`implements, namely, nail clippers
`Electric infant formula mixers for household use
`
`
`
`8
`
`

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`Serial Number
`88593092
`
`Class
`5
`
`Goods
`Gels for use as personal lubricant; Gels, creams and solutions for
`dermatological use; Insect-repellents; Insect repellent agents;
`Insect repellent incense; Insect repellents; Insect repellents in pre-
`moistened towelette form; Ovulation test kits; Pregnancy test kits
`for home use; Aloe Vera gel for therapeutic purposes; Anti-
`inflammatory gels; Antibacterial alcohol skin sanitizer gel;
`Bracelets impregnated with insect repellent; Medicated diaper
`rash ointment; Medicated diaper rash ointments and lotions;
`Pharmaceutical products and preparations against dry skin caused
`by pregnancy; Pharmaceutical products and preparations for
`pregnancy blemishes; Pharmaceutical products and preparations
`for hydrating the skin during pregnancy; Pharmaceutical products
`and preparations for preventing skin blemishes during pregnancy;
`Pharmaceutical products and preparations to prevent stretch
`marks; Preparations for repelling animals, birds and insects;
`Preparations for repelling insects; Preparations to prevent nail-
`biting and thumb-sucking; Teething gels; Therapeutic spray to
`sooth and relax the muscles; Wearable insect repelling devices for
`attachment to clothing sold pre-filled with insect repelling
`preparations; Wearable insect repelling devices in the nature of
`bracelets sold pre-filled with insect repelling preparations.
`
`
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`9
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`