Elegant Headwear Co., Inc.

Trademark Trial and Appeal Board

Aug 10, 2005

No. 76536428 (T.T.A.B. Aug. 10, 2005)

Mailed:
10 August 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Elegant Headwear Co., Inc.
________

Serial No. 76536428
_______

Myron Amer of Myron Amer, P.C. for Elegant Headwear Co.,
Inc.

Tejbir Singh, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Hairston, Drost, and Kuhlke, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On July 30, 2003, Elegant Headwear Co., Inc.
(applicant) applied to register the mark BABY’S FIRST (in
standard character form) on the Principal Register for
goods ultimately identified as “baby bibs not of paper” in
Class 25.1

1 The application includes a date of first use and a date of
first use in commerce of July 1, 2001. The application contains
a disclaimer of the word “Baby’s.”
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 76536428
2
The examining attorney2 refused to register applicant’s
mark under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)) because of a prior registration for the mark
BABY’S FIRST in standard character form for “infants’
footwear” in Class 25.3
When the refusal was made final, applicant filed this
appeal.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by § 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).

2 The current examining attorney was not the original attorney in
the case.
3 Registration No. 2,396,712, issued October 24, 2000. The
registration contains a disclaimer of the word “Baby’s.”
Ser. No. 76536428
3
The first factor we consider is the similarities and
dissimilarities in the marks. In this case, the marks are
for the identical words, “Baby’s First,” in standard
character form. Therefore, there are no differences in the
marks.
The second factor we consider is whether the goods of
applicant and registrant are related. When the marks are
identical, the goods and/or services do not have to be as
close in order to hold that there is a likelihood of
confusion. Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ
70, 78 (TTAB 1981) (When both parties are using or intend
to use the identical designation, “the relationship between
the goods on which the parties use their marks need not be
as great or as close as in the situation where the marks
are not identical or strikingly similar”). See also In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed.
Cir. 1993) (“[E]ven when goods or services are not
competitive or intrinsically related, the use of identical
marks can lead to an assumption that there is a common
source”).
In this case, applicant has limited its identification
of goods to “baby bibs not of paper.” Registrant’s goods
are “infants’ footwear.” Applicant’s bibs and registrant’s
footwear are specifically for babies/infants. Reflecting
Ser. No. 76536428
4
this point, both applicant and registrant have disclaimed
the term “Baby’s.” The examining attorney has submitted
evidence to show that infants’ footwear and baby bibs are
related. For example, the Jordan-Marie website displays
babies’ shoes and bibs sold on the same page. The Elegant
Baby Gift website shows a rose bib and crocheted knit
booties sold on the same page. The Yellow Turtle website
under “Baby Gifts and Clothing” includes the following
statement: “Everything for babies including baby gifts,
baby clothing, baby gift baskets, baby booties… baby
slippers, baby bibs.” Furthermore, the examining attorney
has submitted several registrations, e.g., Nos. 2,177,579;
2,513,619; and 2,823,820, that provide some suggestion that
entities have registered a common mark for baby bibs and
infants’ footwear. See In re Infinity Broadcasting Corp.
of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001) (“The
registrations show that entities have registered their
marks for both television and radio broadcasting services.
Although these registrations are not evidence that the
marks shown therein are in use or that the public is
familiar with them, they nevertheless have probative value
to the extent that they serve to suggest that the services
listed therein, including television and radio
broadcasting, are of a kind which may emanate from a single
Ser. No. 76536428
5
source. See, e.g., In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 at n. 6 (TTAB
1988)").
More importantly, we observe that applicant’s specimen
of record for its baby bibs contains the wording “Headwrap
and Ballet Slipper Set” and “SIZE: 0-3 Months.” Ballet
slippers are a type of footwear and, thus, applicant’s own
specimen indicates that it is also the source of infants’
footwear. We are mindful that in “order to find that there
is a likelihood of confusion, it is not necessary that the
goods or services on or in connection with which the marks
are used be identical or even competitive. It is enough if
there is a relationship between them such that persons
encountering them under their respective marks are likely
to assume that they originate at the same source or that
there is some association between their sources.”
McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB
1989). See also In re Opus One Inc., 60 USPQ2d 1812, 1814-
15 (TTAB 2001). Here, we conclude that baby bibs not of
paper and infants’ footwear are related and that when
prospective purchasers encounter the identical mark on the
identified goods they are likely to believe that there is
an association between the sources of the goods.
Ser. No. 76536428
6
We add that inasmuch as these products are advertised
together, purchasers of baby bibs and infants’ footwear
would at least overlap and include parents and other people
buying clothing items for babies. The evidence showing
websites that sell bibs and footwear, certainly supports a
conclusion that the channels of trade for these items would
be similar. Also, there are no restrictions in either
applicant’s or registrant’s identification of goods so the
goods are not restricted as to price or type of baby bibs
or infants’ footwear. The OneStepAhead website lists the
prices of a “Super Bib” as $16.95 and various booties and
footwear between $9.95 and $19.95. Therefore, these goods
would be relatively inexpensive items.
Applicant submits (Reply Brief at 1) that the
examining attorney’s position is that “there is per se
confusion, if the marks, as in this case, are identical.”
However, we do not understand that the examining attorney
is arguing for a per se rule. Indeed, the examining
attorney has discussed the goods of applicant and
registrant and determined that they are closely related
rather than arguing that there is per se confusion.
In addition, applicant argues (Brief at 3) that the
“number of BABY’S FIRST-identified goods is of an extent
that no reasonable purchaser would assume they originate
Ser. No. 76536428
7
from the same source and thus the common use of BABY’S
FIRST is not a source of consumer confusion.” We note that
evidence of the weakness of the term BABY’S FIRST is not of
record and, therefore, we cannot assume that BABY’S FIRST
is a weak mark entitled to only a very narrow scope of
protection. We add that even if evidence of third-party
registrations were properly of record, they “cannot be used
to justify the registration of another confusingly similar
mark.” In re J.M. Originals Inc., 6 USPQ2d 1393, 1394
(TTAB 1987).4 We add that even a weak mark would be
entitled to protection when the identical mark is used on
closely related goods.
After considering the evidence and arguments of the
examining attorney and applicant, we conclude that when the
identical mark BABY’S FIRST is used on baby bibs not made
of paper and infants’ footwear, confusion is likely. If we
had any doubts on this issue, we must resolve them against
applicant. In re Pneumatiques, Caoutchouc Manufacture et

4 Applicant also refers to a prior decision of the TTAB involving
the same mark of applicant for additional goods (Serial No.
76409880). Apparently, the prior application at one time
contained even more goods in different classes and the examining
attorney cited other registrations as a bar to registration. It
is not clear why there would be no confusion in the instant
application because different registrations were cited against
other goods for which applicant sought registration.
Ser. No. 76536428
8
Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729, 729
(CCPA 1973).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.