CAFC Rules That Section 44 Applications Must Meet Lanham Act Section 2 Requirements

In a precedential opinion, a CAFC panel majority ruled that applications filed under Section 44 of the Lanham Act must meet the Act's Section 2 eligibility requirements. The court affirmed the TTAB's ruling that the marks DR. RATH and RATH are primarily merely surnames and thus are barred from registration under Section 2(e)(4). In re Rath, Appeals Nos. 04-1419 and 04-1420 (March 24, 2005).

Dr. Matthias Rath
Dr. Matthias Rath did not contest the Board's holdings that the marks are primarily merely surnames. Instead, he argued that "the surname rule is at odds with the Paris Convention as applied to those holding foreign registrations" because that rule "does not fall within any of the three enumerated exceptions to the registration of foreign marks."

The three Convention exceptions, in short, are for marks that infringe another mark, marks that are devoid of any distinctive character, and marks that are contrary to morality or public order. The PTO urged on appeal that surname marks are descriptive and therefore "devoid of any distinctive character," thus falling within the second enumerated exception.

The CAFC, however, concluded that it need not decide whether the surname rule conflicts with the Paris Convention because "the Paris Convention is not a self-executing treaty and requires congressional implementation."

Alternatively, Dr. Rath argued that Section 44(e) of the Lanham Act is congressional legislation implementing the Paris Convention, and that "Section 44(e) itself requires registration because the Paris Convention requires registration." The panel majority disagreed, noting that Section 44(e) provided for registration of a foreign mark "if eligible."

"There is no question but that Congress generally intended section 44 of the Lanham Act to implement the Paris Convention. But this does not mean that Congress intended to do so in every respect or that it actually accomplished that objective in all respects or that it correctly understood the requirements of the Paris Convention in enacting section 44. *** [T]he history generally confirms that the principal register was available to foreign registrants and United States citizens on equal terms -- both had to meet the eligibility requirement of United States law."

The panel majority ruled that the phrase "if eligible" in Section 44(e) refers to eligibility for registration on the principal register, not eligibility under the Paris Convention. It concluded that "Section 44 applications are subject to the section 2 bars to registration, of which the surname rule is one."

In a concurring opinion, Circuit Judge Bryson would not reach the issue of whether the Lanham Act "trumps" the Paris Convention, but would decide on the narrower ground adopted by the TTAB and urged here by the PTO: that the surname rule and the Paris Convention are not inconsistent, that surnames are a subset of "merely descriptive" marks, and that they lack "distinctive character" under the Convention.

This short summary of the CAFC's decision should by no means serve as a substitute for a thorough reading of the court's opinion.

Text ©John L. Welch 2005. All Rights Reserved.