Laurice El Badry Rahme Ltd. d/b/a Laurice & Co.

Trademark Trial and Appeal BoardApr 11, 2012

No. 77517867 (T.T.A.B. Apr. 11, 2012)

Mailed: April 11, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Laurice El Badry Rahme Ltd. d/b/a Laurice & Co. ________ Serial No. 77517867 _______ George Gottlieb, Barbra H. Loewenthal and Rachel M. Weiss of Gottlieb, Rackman & Reisman, P.C., for Laurice El Badry Rahme Ltd. d/b/a Laurice & Co. Cimmerian Coleman, Trademark Examining Attorney, Law Office 102 (Karen M. Strzyz, Managing Attorney). _______ Before Quinn, Zervas and Kuhlke, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: On July 9, 2008, Laurice El Badry Rahme Ltd. d/b/a Laurice & Co. filed for registration on the Principal Register of the mark BOND NO. 9’S DUBAI (in standard character form)1 for goods ultimately amended to “fragrances for personal use, namely, perfumes, colognes, after bath splashes, body sprays, shower gels, soaps, body lotions, 1 Applicant’s address is identified as 9 Bond Street, New York, New York. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77517867 2 massage oils, cosmetics, namely, non-medicated skin care preparations, makeup, lipstick, foundation powder, eyeshadow, nail polish, mascara and eye pencil” in International Class 3.2 Applicant claims an intent to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b). Registration has been finally refused in light of applicant's failure to comply with the examining attorney's requirement for a disclaimer of “DUBAI” on the ground that DUBAI is geographically descriptive of a feature of the identified goods within the meaning of Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2). Upon final refusal of registration, applicant filed an appeal and request for reconsideration. The examining attorney denied the request for reconsideration. Both applicant and the examining attorney filed briefs. For the reasons discussed herein, the Board affirms the requirement for a disclaimer of “DUBAI.” An examining attorney may require an applicant to disclaim an unregistrable component of a mark otherwise registrable. Trademark Act Section 6(a), 15 U.S.C. § 1056(a). Primarily geographically descriptive terms 2 Applicant claims ownership of, inter alia, Registration No. 3184312 for BOND NO. 9 NEW YORK (NEW YORK disclaimed); and Serial No. 77517867 3 within a mark are unregistrable under Trademark Act Section 2(e)(2) and, therefore, are subject to disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer requirement is ground for refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007). “In order for a mark [or a component of a mark] to be considered primarily merely descriptive under Section 2(e)(2), it must be shown that (1) the mark's [or the component’s] primary significance is a generally known geographic location; and (2) that the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark.” In re Spirits of New Merced LLC, 85 USPQ2d 1614, 1616 (TTAB 2007). See also In re Brouwerij Nacional Balashi NV, 80 USPQ2d 1820, 1821 (TTAB 2006); In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); and TMEP § 1210.01(a) (8th ed. October 2011) (“To establish a prima facie case for refusal to register a mark as primarily geographically descriptive, the examining attorney must Registration No. 3235717 for BOND STREET NEW YORK (stylized, NEW YORK disclaimed). Serial No. 77517867 4 show that: (1) the primary significance of the mark is a generally known geographic location, (2) the goods or services originate in the place identified in the mark; and (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark.”) “[W]here there is no genuine issue that the geographical significance of a term is its primary significance, and where the geographical place named by the term is neither obscure nor remote, a public association of the goods or services with the place may ordinarily be presumed from the fact that the applicant's goods or services come from the geographical place named in the mark.” JT Tobacconists, 59 USPQ2d at 1082. See also In re Handler Fenton Western, Inc., 214 USPQ 848 (TTAB 1982). In support of the examining attorney’s position that the term is geographically descriptive of applicant’s goods, the examining attorney relies on the following definition in the record of “Dubai” from encarta.msn.com: “a city in the northeastern United Arab Emirates, and the capital city of Dubai state. Population 1,321,453 (2006)”; applicant’s statement in its October 14, 2009 response that applicant maintains free standing stores in Dubai; and the statement in TMEP § 1213.03(a), as paraphrased by the Serial No. 77517867 5 examining attorney, that “[g]oods or services may be said to ‘originate’ from a geographic location if, for example, they are manufactured, produced or sold there.” Brief at unnumbered p. 5. The examining attorney concludes that DUBAI in the mark is geographically descriptive of a feature of applicant’s goods and must be disclaimed by applicant. Applicant does not seriously contest the examining attorney’s finding that DUBAI is geographically descriptive in its briefs, although it did so in the relevant responses to the relevant Office actions. (The examining attorney issued numerous Office actions which refused registration on several grounds during the course of examination.) So there is no doubt, we make clear that the examining attorney has established prima facie that DUBAI in applicant’s mark is a geographically descriptive term when used on or in connection with applicant’s goods. Specifically, the examining attorney submitted evidence that DUBAI is a geographic location which is not remote or obscure; applicant acknowledged that it maintains stores in DUBAI (where presumably applicant’s goods are sold); and a public association of the goods with the place may be presumed from the fact that the applicant's goods are sold in the geographical place named in the mark. JT Serial No. 77517867 6 Tobacconists, 59 USPQ2d at 1082. See Fred Hayman Beverly Hills Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691, 1695 (TTAB 1996) (“The public, having been exposed to articles reporting on ‘prestige’ fragrances launched on Rodeo Drive and having frequented stores carrying the fragrances of Rodeo Drive retailers, is likely to believe that perfumes originate there. This is especially true when … Rodeo Drive retailers, in the marketing and promotion of their perfumes, emphasize an association with Rodeo Drive. Thus, opposer's evidence demonstrates that the public would be likely to make the requisite goods/place association between perfume and Rodeo Drive.”). See also TMEP § 1310.03 (“The question of whether a term is primarily geographically descriptive under §2(e)(2), … depends on whether the mark identifies the place from which the goods … originate. Goods … may be said to ‘originate’ from a geographic location if, for example, they are … sold there.”). In addition, the examining attorney provided evidence establishing that Dubai is a shopping destination in the Middle East and that perfume is sold in Dubai. Further, applicant seeks to register the mark in standard character form, thus, we must consider the circumstances surrounding its marketing of the goods to include various Serial No. 77517867 7 presentations of the mark including the presentation in applicant’s registered mark (Registration No. 3235717) where New York is separated and clearly indicates a location. Cf. Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011). As noted earlier in this opinion, applicant disclaimed New York in that registration. We now turn to applicant’s arguments in support of registration beginning with applicant’s argument at p. 9 of its brief that its mark is unitary. A unitary mark is a mark with multiple elements that creates a single and distinct commercial impression separate and apart from the meaning of its constituent elements. Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991). A unitary mark could be created “where the words which have been put together function as a unit, with each relating to the other rather than directly to the goods.” Id. at 1052. See also In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) (“Pocket Profile” separable element from Serial No. 77517867 8 “Phacts Pocket Profile;” disclaimer requirement for “Pocket Profile” upheld). According to applicant: The individual terms – BOND – NO. – 9’S – DUBAI – are physically connected to one another on the same line of text. No words or designs are featured above, below or to the side of the mark to distract or extract meaning, from the cohesive phrase. The individual words, absent Applicant’s line of products, have no meaning in the fragrance industry. As such the mark as a whole is completely arbitrary with respect to perfumes and other Class 3 goods. The terms in applicant’s mark are not physically connected to one another; there are spaces between the words in the mark. Further, that the mark is depicted in the drawing page on one line has little bearing on whether the mark is unitary; as noted above, the mark is a standard character mark and hence no claim is made to any design element or stylization. Applicant’s mark may be used so that the wording in the mark appears on one or more lines of text. And, whether applicant’s mark is “completely arbitrary with respect to perfumes and other International 3 goods” has no bearing on whether the mark is unitary. In addition, at pp. 2 – 3 of its reply, applicant argues: BOND NO. 9’S DUBAI is a unitary mark because each word and symbol of the complete mark is of equal weight, that is, none is emphasized over the others, and the words and symbols are side- Serial No. 77517867 9 by-side along a single line. Furthermore, the apostrophe after “9” clearly indicates that “BOND NO. 9” modifies, or possesses “DUBAI.” … Moreover, the fact that the mark includes an apostrophe indicates that it can be classified under the TMEP’s Unitary Mark section, “Compound Words Formed [W]ith Hyphen or Other Punctuation.” TMEP 1213[.05](a)(ii). As noted above, an apostrophe is a form of punctuation (similar to asterisks, hyphens and slashes); therefore BOND NO. 9’S DUBAI is a unitary mark by the TMEP’s own definition because it contains compound words formed by punctuation. These arguments are not persuasive. First, applicant’s argument that the apostrophe after the number nine indicates that BOND NO. 9 modifies, or possesses DUBAI, is not persuasive because the impression created by applicant’s mark is that BOND NO. 9 is the house mark and DUBAI is the product mark.3 Second, the title to TMEP § 1213.05(a)(ii) does not specifically refer to an apostrophe, and an apostrophe is not mentioned as one of the types of punctuation included within TMEP § 1213.05(a)(ii). Third, “[t]he TMEP is not binding on the Board.” In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 at n2 (TTAB 1995), citing West Florida Seafood Inc. v. Jet Restaurants Inc., 31 USPQ2d 1660, 1664 n. 8 (Fed.Cir.1994) (“While the TMEP does not have the force and effect of law, it sets forth the guidelines and procedures 3 Applicant claimed ownership of Registration No. 2742675 for the mark BOND NO. 9. Serial No. 77517867 10 followed by the examining attorneys at the PTO.”); and In re Wine Society of America Inc., 12 USPQ2d 1139, 1141 (TTAB 1989). In view thereof, and primarily because the impression created by applicant’s mark is that BOND NO. 9 is the house mark and DUBAI is the product mark, the mark is not unitary. Because the mark is not unitary, applicant’s argument in its brief that the examining attorney does not have the discretion to reject a unitary mark fails. Applicant argued in one of its responses, and also argues in its brief, that it and third-parties did not have to disclaim geographic names in a number of trademark registrations. Applicant submitted lists of registrations with one of its responses to an Office action, but did not submit copies of the registrations themselves. Applicant’s argument and evidence is not persuasive for two reasons. First, the registrations are not in the record, and the list of registrations does not include critical information such as the goods or services listed in the registrations.4 4 “[I]f an applicant includes a listing of registrations in response to an Office action, and the examining attorney does not advise applicant that the listing is insufficient to make the registrations of record at a point when applicant can correct the error, the examining attorney will be deemed to have stipulated the registrations into the record. … However, the Board will not consider more than the information provided by the applicant. Thus, if the applicant has provided only a list of registration Serial No. 77517867 11 The lists thus have very limited probative value. Second, as is well established, prior decisions in other applications are not binding on the Board and each case is evaluated on its own record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). Finally, applicant points out that the examining attorney required a disclaimer of DUBAI in the January 28, 2009 Office action and reversed his previous position on the disclaimer requirement in the July 23, 2009 Office action, when he stated that “[d]isclaiming the geographically deceptive and primarily geographically deceptively misdescriptive word or term in a mark will not obviate a geographically deceptive and primarily geographically deceptively misdescriptive refusal.” After applicant responded that it had retail stores in Dubai, the examining attorney in the November 5, 2009 Office action re-imposed the disclaimer requirement. According to applicant, “[b]y withdrawing his geographically descriptive [sic] objections, the Examiner made clear that the mark did not contain an ‘unregistrable component’ pursuant to 15 U.S.C. 1056(a). As such, the Examiner failed to meet his burden of proof in this case.” Brief at 8. While numbers and/or marks, the list will have very limited probative value.” TBMP § 1208.02 (3d ed. 2011). Serial No. 77517867 12 efficient examination of an application is certainly desirable, the Office is not precluded from once again raising a refusal after the examining attorney withdrew the refusal. Applicant also argues that the refusal should be reversed because if there are others who desire to use DUBAI in connection with certain goods, then those others can seek to oppose or cancel applicant’s mark. This argument is not a valid basis for reversing a refusal to register. Decision: The requirement for a disclaimer of DUBAI is affirmed. If applicant submits the required disclaimer within thirty days of the mailing date of this decision, this decision will be set aside and the application will move forward for publication.5 5 The standardized printing format for the required disclaimer text is as follows: “No claim is made to the exclusive right to use DUBAI apart from the mark as shown.” TMEP § 1213.08(a).