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

Trademark Trial and Appeal Board

Apr 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
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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
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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
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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).