The U.S. Court of Appeals for the Federal Circuit upheld the decision of the Trademark Trial and Appeals Board (TTAB) affirming the U.S. Patent and Trademark Office’s (USPTO) refusal to register the marks RATH and DR. RATH, even though the marks had been registered in Germany, the applicant’s home country. In re Rath, Case Nos. 04-1419- 1420 (Fed. Cir. Mar. 24, 2005) (Dyk, J.; Bryson, J., concurring).
Dr. Matthias Rath, a German citizen, filed U.S. trademark applications for the marks RATH and DR. RATH for use in connection with a line of nutritional supplements and related goods and services. Dr. Rath’s U.S. applications were based on his existing German trademark registrations for the same marks. The USPTO refused registration of the RATH and DR. RATH marks because they are "primarily merely surnames" and, therefore, not registrable under the Lanham Act without proof of acquired distinctiveness.
Dr. Rath argued that the Paris Convention for the Protection of Industrial Property, of which both the U.S. and Germany are signatories, required the U.S. to register his marks because they had attained registration in Germany. The Paris Convention provides guidelines for the protection in all member countries of marks registered in one member country. The USPTO, however, argued that the applications fell within the exception listed in the Paris Convention allowing the denial of a registration where it is "devoid of any distinctive character."
Instead of addressing whether the Lanham Act’s rule regarding surnames in U.S. trademarks conflicts with the Paris Convention, the Federal Circuit held that because the Paris Convention is not a self-executing treaty, it does not have direct effect until it is implemented by domestic law.
In a concurring opinion, Judge Bryson opined that "[t]he question whether the Lanham Act should be read to conflict with and trump the Paris Convention is a difficult one…I would instead decide the case on the narrower ground that the Lanham Act and the Paris Convention are in accord as applied in this case."
Practice Note: In view of this case, it would be a good practice when filing U.S. trademark applications based on foreign trademark registrations to consider whether the trademark is independently eligible for registration on the principal register under U.S. law and to not rely exclusively on the Paris Convention.
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