## Facts

- Dr. Matthias Rath, a German citizen, sought U.S. registration on the Principal Register of “DR. RATH” and “RATH” for various goods and services.
- Rath relied on existing German registrations and applied in the United States under Lanham Act § 44.
- The examining attorney refused registration under Lanham Act § 2(e)(4) because the marks were “primarily merely a surname,” and Rath did not establish acquired distinctiveness under § 2(f).
- The Trademark Trial and Appeal Board (TTAB) affirmed the refusal.
- On appeal, Rath conceded the marks were primarily merely surnames but argued the Paris Convention and Lanham Act § 44 required registration based on his home-country registrations.

## Issues

1. Whether the Paris Convention requires the United States to register a mark “duly registered” in the applicant’s country of origin even if the mark is barred by Lanham Act § 2(e)(4) as “primarily merely a surname.”
2. Whether Lanham Act § 44 grants foreign applicants a substantive right to registration that overrides § 2(e)(4)’s surname bar when the applicant has a valid foreign registration.

## Decision

- The Federal Circuit affirmed the TTAB’s refusal to register “DR. RATH” and “RATH.”
- The court held the Paris Convention does not compel U.S. registration of marks that fail substantive U.S. registrability requirements.
- The court held Lanham Act § 44 does not exempt foreign applicants from the substantive restrictions of Lanham Act § 2, including § 2(e)(4).
- Because Rath conceded the marks were primarily merely surnames and did not show acquired distinctiveness, refusal of registration was proper.

## Legal Principles

- Lanham Act § 44 provides procedural mechanisms and national treatment for applicants from treaty countries, not broader substantive trademark rights than domestic applicants.
- Foreign applicants proceeding under § 44(e) must satisfy U.S. substantive registrability standards “in the same manner and subject to the same conditions” as other applicants, including the prohibitions in § 2.
- The Paris Convention is implemented through U.S. statute; it does not displace or preempt the Lanham Act’s substantive bars to registration.
- A mark that is “primarily merely a surname” is barred from the Principal Register absent proof of acquired distinctiveness under § 2(f).

## Conclusion

The Federal Circuit held that neither the Paris Convention nor Lanham Act § 44 requires registration of a foreign applicant’s mark that is primarily merely a surname; foreign registrations may support a U.S. filing basis but do not override the Lanham Act’s substantive registrability requirements.


In re Rath, 402 F.3d 1207 (Fed. Cir. 2005)