In re Rath: Section 44 Filings Still Must Clear the Surname Bar

The Federal Circuit holds the Paris Convention is not self-executing and Section 44 foreign-registration filings must satisfy the Lanham Act's Section 2 bars.

By Lidiia Levitska  ·  July 11, 2026
Rows of vitamin and supplement bottles on a pharmacy shelf
Dr. Rath's German registration could not force U.S. registration of a primarily-merely-a-surname mark. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

In In re Rath, 402 F.3d 1207 (Fed. Cir. 2005), decided March 24, 2005, the Federal Circuit answered a question that goes to the core of how foreign trademark owners enter the U.S. register: does a foreign registration, backed by the Paris Convention and Section 44 of the Lanham Act, entitle the owner to a U.S. registration even when the mark would fail a domestic bar? The court, in an opinion by Judge Dyk with a concurrence by Judge Bryson, said no. The Paris Convention is not self-executing, and Section 44 does not command the USPTO to register a mark that cannot clear the substantive requirements of Section 2. A foreign filing route changes the use requirement, not the registrability standards.

The applicant, Dr. Matthias Rath, a German citizen, sought to register DR. RATH and RATH on the Principal Register for health-related goods and services, relying on his German registrations. The examining attorney refused under the bar against marks that are primarily merely a surname, the Trademark Trial and Appeal Board affirmed, and the Federal Circuit affirmed the Board. The decision has become the standard citation for the proposition that treaty-based applications must still satisfy every U.S. substantive ground of registrability.

At a glance

  • Case: In re Rath, 402 F.3d 1207 (Fed. Cir. 2005) (Serial Nos. 75/753,445 and 75/753,597)
  • Court: U.S. Court of Appeals for the Federal Circuit
  • Decided: March 24, 2005 (Dyk, J.; Bryson, J., concurring; Linn, J., on the panel)
  • Holding: The Paris Convention is not self-executing, and Section 44 does not require registration of a foreign-registered mark that fails a Section 2 bar, including the primarily-merely-a-surname bar of 15 U.S.C. § 1052(e)(4).
  • Status: Final and good law as of July 2026; embedded in USPTO practice through TMEP § 1007.

Two doors into the U.S. register for foreign owners

Foreign trademark owners can reach the U.S. register without first using their marks in American commerce. Section 44 of the Lanham Act, 15 U.S.C. § 1126, implements U.S. treaty obligations, principally under the Paris Convention. Section 44(d) lets an applicant claim priority based on a home-country application filed within the prior six months, and Section 44(e) lets an applicant obtain a U.S. registration based on a registration in its country of origin. The signature benefit of the Section 44 route is that the applicant is excused from the ordinary requirement of use in commerce before registration.

That exemption is narrow, however. It relieves the applicant of the use requirement that Section 1 imposes on domestic applicants. It says nothing about the many other requirements a mark must meet to be registrable. Those requirements live in Section 2 of the Lanham Act, 15 U.S.C. § 1052, which bars registration of marks that are, among other things, deceptive, merely descriptive, likely to cause confusion, or, as relevant here, “primarily merely a surname” under Section 2(e)(4). In re Rath is about whether the Section 44 door lets an applicant walk past those Section 2 bars. It does not.

The surname refusal and the treaty argument

The facts were undisputed in a way that sharpened the legal question. Dr. Rath conceded that DR. RATH and RATH are primarily merely surnames, which ordinarily makes them unregistrable on the Principal Register without a showing of acquired distinctiveness. His argument was not that the surname rule was misapplied. It was that the surname rule could not be applied to him at all, because his German registrations, channeled through Section 44 and the Paris Convention, entitled him to U.S. registration notwithstanding the domestic bar.

The court rejected the premise at two levels. First, it held that the Paris Convention is not self-executing. Quoting its predecessor court’s decision in Kawai v. Metlestics, 480 F.2d 880 (CCPA 1973), the Federal Circuit reaffirmed that the Convention “was not self-executing and required implementing legislation.” A litigant therefore cannot invoke the treaty directly to override a domestic statute; the rights a foreign owner enjoys are those Congress actually enacted in Section 44, no more.

Second, and decisively, the court held that Section 44 itself does not exempt foreign applicants from the Section 2 bars. In the court’s words, “it is impossible to read section 44(e) to require the registration of foreign marks that fail to meet United States requirements for eligibility. Section 44 applications are subject to the section 2 bars to registration,” and the primarily-merely-a-surname rule “is one” of those bars. The eligibility language in Section 44(e) refers to eligibility under U.S. registrability law, which means Section 2 continues to apply.

Article 6quinquies and the “as is” argument

Dr. Rath also invoked Article 6quinquies of the Paris Convention, the “telle quelle” or “as is” clause, which provides that a trademark “duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union.” He read that language to compel U.S. registration of his marks exactly as registered in Germany.

The court did not resolve that argument on the treaty’s own terms. It answered on statutory grounds instead. Article 6quinquies, like the rest of the Convention, is not self-executing, so it does not by itself create a registration right enforceable against the USPTO. And Section 44(e) directs registration on the principal register only “if eligible,” language the court read as referring to eligibility for registration on the principal register “rather than eligibility under the Paris Convention.”

It is worth being precise about where the majority stopped. The PTO had argued that surname marks are descriptive and therefore “devoid of any distinctive character” within Article 6quinquies’s own exceptions, so that no conflict exists between the Lanham Act and the Convention. The majority declined to take that route: “We need not decide whether the surname rule conflicts with the Paris Convention because we find that the Paris Convention is not a self-executing treaty and requires congressional implementation.” It closed on the same note, saying that whether the surname rule conflicts with the Convention’s requirements “as applied to foreign registrants is a matter we need not decide.” In re Rath is therefore a holding about the statute. It is not a ruling that the surname bar and Article 6quinquies are compatible.

Judge Bryson concurred on a narrower ground. In his view the case did not even present a genuine conflict between the surname bar and the treaty, because a primarily-merely-a-surname mark can fairly be treated as one “devoid of distinctive character” within Article 6quinquies’s own exceptions. On that reading the U.S. surname rule and the Convention are simply consistent, and there is no need to decide how a true conflict would come out.

The doctrinal lineage

The decision did not sit atop a settled line of authority so much as narrow one. Rath, and Judge Bryson’s concurrence, relied primarily on the Board’s decision in Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 U.S.P.Q. 909 (TTAB 1984), the source of the familiar description of Section 44 as “an independent provision, standing on its own feet with respect to applications for registration depending upon it and the conventions as the bases for United States registration, except for such formal requirements and conditions for registration as are consistent with the purposes of the conventions and the implementing statute.” The majority read that language narrowly rather than adopting it. It said the court had previously approved the holding of Crocker on prior use, citing In re Compagnie Generale Mar., 993 F.2d 841, 843 n.3 (Fed. Cir. 1993), “but not the broader language.” The precedent doing the real work was In re Etablissements Darty et Fils, 759 F.2d 15 (Fed. Cir. 1985), which had already held that a Section 44(d) applicant was not excused from the surname rule. In re Rath clarified what Section 44’s independence does and does not mean. Section 44 stands on its own for purposes of the use requirement, but the substantive Section 2 bars are not mere formalities that a treaty can wash away. They are conditions of registrability that every applicant, foreign or domestic, must satisfy.

Open questions

  • How does acquired distinctiveness fit the Section 44 route? A surname mark can be registered on a showing of secondary meaning, but proving acquired distinctiveness for a mark not yet used in U.S. commerce raises practical questions the opinion did not resolve.
  • Where exactly is the line between a “formal” condition and a “substantive” bar? In re Rath places the Section 2 bars on the substantive side, but the precise boundary for other requirements continues to be worked out in examination.
  • How do parallel international systems interact? The Madrid Protocol offers another treaty-based path to the U.S. register, and applicants must be careful that a route which eases use requirements does not create the impression that it eases registrability requirements. It does not.

Implications for brands and businesses

  • A foreign registration is not a bypass. Section 44 excuses use before registration, not the Section 2 bars. Screen a foreign mark against U.S. registrability grounds before filing.
  • Surnames need a secondary-meaning plan. If your mark is primarily merely a surname, expect a refusal on any filing basis. Build and document acquired distinctiveness, or consider the Supplemental Register.
  • Do not rely on treaties as self-executing. The Paris Convention gives U.S. rights only through Section 44 as Congress wrote it. Frame arguments around the statute, not the treaty text alone.
  • Coordinate international filing strategy with U.S. counsel. The cheapest path onto the register is not helpful if the mark will be refused on substantive grounds. Align home-country and U.S. strategy early.

Frequently asked questions

What did In re Rath decide about Section 44 and the Paris Convention? The Federal Circuit held that the Paris Convention is not self-executing and that Section 44 of the Lanham Act does not require the USPTO to register a foreign-registered mark that fails a U.S. substantive bar to registration. A Section 44 applicant is exempt from the domestic use requirement, but it must still satisfy the Section 2 bars, including the prohibition on marks that are primarily merely a surname.

Does a foreign registration force the USPTO to register a mark ‘as is’? No. Dr. Rath relied on Article 6quinquies of the Paris Convention, the “telle quelle” or “as is” clause, but the court held the Convention is not self-executing, so it creates no registration right enforceable on its own against the USPTO. The court read Section 44(e)‘s “if eligible” language to refer to eligibility under U.S. registrability law, so Section 44 does not override Section 2. The majority expressly declined to decide whether the surname bar actually conflicts with Article 6quinquies.

Is In re Rath still good law? Yes. As of July 2026 it remains the leading Federal Circuit authority for the rule that Section 44 foreign-registration applicants must meet the Section 2 substantive bars. The rule is embedded in USPTO examining practice through TMEP Section 1007, which cites In re Rath for the proposition that Section 44 applications are subject to the Section 2 bars to registration.

Authorities and sources

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Lidiia Levitska
About the Author

Lidiia Levitska

International Intellectual Property Attorney

Lidiia Levitska focuses on intellectual property dispute resolution, policy, and advisory work across international institutions and government bodies. From 2021 to 2025 she served at the World Intellectual Property Organization (WIPO), managing arbitration cases and overseeing compliance with the Uniform Domain-Name Dispute-Resolution Policy (UDRP), and earlier led IP policy research as a Senior Policy Officer at the American Chamber of Commerce in Ukraine. She holds an LL.M. in International Intellectual Property Law from Chicago-Kent College of Law and an M.A. in Information Technology Law from the University of Tartu, and was admitted to the Ukrainian Bar in 2019.

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