Elegant Headwear Co., Inc.

Trademark Trial and Appeal Board

Jan 17, 2006

No. 76536428re (T.T.A.B. Jan. 17, 2006)

Mailed:
17 January 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Elegant Headwear Co., Inc.
________

Serial No. 76536428
_______

Request for Reconsideration
_______

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 August 10, 2005, the board affirmed the examining
attorney’s refusal to register applicant Elegant Headwear
Co., Inc.’s mark BABY’S FIRST under Section 2(d) of the
Trademark Act. 15 U.S.C. § 1052(d).
Applicant subsequently sought an extension of time to
request reconsideration, which was granted.
Now, applicant has timely filed a request for
“Reconsideration of Decision on Ex Parte Appeal Pursuant to
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 76536428
2
37 C.F.R. § 2.144.” In this paper (pp. 1-2), applicant
submits:
The decision affirming a Section 2(d) refusal to grant
registration of BABY’S FIRST to appellant was based on
Registration No. 2,39[6],712, the filing of Section 8
and Section 15 Affidavits for said registration being
required on or before October 24, 2006.

Applicant makes of record the enclosed industrial
investigator’s report that the registrant, Trimfoot
Company, is no long[er] using BABY’S FIRST.

Based on said industrial investigator’s report, it is
respectfully requested that the Section 2(d) refusal
based on Registration No. 2,39[6],712 be overruled.

Alternatively, it is requested that the Board suspend
proceedings of appellant’s application Serial No.
76/536,428 for one month beyond October 24, 2006…

Obviously, a cited registration is presumed valid and
an applicant in an ex parte proceeding cannot collaterally
attack the cited registration. See In re Dixie
Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534
(Fed. Cir. 1997):
Dixie's argument that DELTA is not actually used in
connection with restaurant services amounts to a
thinly-veiled collateral attack on the validity of the
registration. It is true that a prima facie
presumption of validity may be rebutted… However, the
present ex parte proceeding is not the proper forum
for such a challenge… Cosmetically Yours, Inc. v.
Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517
(CCPA 1970)… In fact, Cosmetically Yours held that "it
is not open to an applicant to prove abandonment of
[a] registered mark" in an ex parte registration
proceeding; thus, the "appellant's argument… that
[a registrant] no longer uses the registered mark …
must be disregarded." 424 F.2d at 1387, 165 USPQ at
515.
Ser. No. 76536428
3

Thus, applicant’s request for reconsideration is
denied.
Applicant has also requested an extension of almost a
year to determine if the registrant files a Section 8
affidavit. We note that even if no affidavit was filed by
October 24, 2006, it would not be clear if the registration
would be cancelled. Registrant would still have until
April 24, 2007, to file the affidavit with a surcharge.
There is no reason to further delay this proceeding.
Therefore, applicant’s request for another extension of
time is denied.