In Re. Dr. Matthias Rath
Decided March 24, 2005   pdf copy
Judge Dyk with Judges Bryson and Linn

*             The U.S. did not fully implement the Paris Convention treaty with respect to trademarks for foreign applicants.

The Federal Circuit declared in this case that "the Lanham Act overrides the requirements of the Paris Convention with respect to the rights of foreign registrants." Rath, a German citizen, had applied for a counterpart U.S. trademark to his German trademark "RATH" but the PTO refused registration because the mark was primarily merely a surname and lacked acquired distinctiveness.

Rath appealed to the Federal Circuit, arguing that the surname rule contradicts the Paris Convention treaty with respect to foreign trademark holders. This treaty states in part that: A(1) "[e]very trademark duly registered in the country of origin shall be accepted…in the other countries of the Union, subject to the (three) reservations…." Rath argued that the surname rule is not within the reservations of the Paris Convention and that foreign trademark holders have rights that U.S. citizens lack, in this respect.

A majority decision affirmed the PTO's refusal, because "the provisions of the Convention of Paris are not self-executing and legislation is therefore needed" for implementation, yet the U.S. Congress did not implement the cited provision. Judge Bryson in a dissent noted that "whether the Lanham Act should be read to conflict with and trump the Paris Convention …has significant potential implications for international intellectual property law." Judge Bryson preferred instead to interpret the surname rule issue as a formal exception within the Paris Convention, and therefore consistent with U.S. law.

As the dissent pointed out, the court could have interpreted the surname rule within an exception (the trademark is "devoid of any distinctive character) of the Paris Convention. One can wonder what other parts of the Paris Convention have not been implemented.

Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772
Decided February 9, 2005   pdf copy
Judge Rader with Judges Michel and Prost

*             An uncommon foreign word may be used as a strong distinctive term in a trademark.

The PTO refused to register Palm's mark VEUVE ROYALE for sparkling wine based on likelihood of confusion with Veuve's marks including the mark "Royal Widow," partly because "veuve" means "widow" in French. Palm appealed to the Federal Circuit.

The Federal Circuit affirmed. The court pointed out that an arbitrary word "used in an unexpected or uncommon way" for a trademark is "typically strong." Thus, although Palm's mark has a second word that differs from Veuve's mark, the first word is the "dominant feature in the commercial impression created by Palm Bay's mark." The Federal Circuit also disagreed that "foreign equivalents" of the "veuve" mark caused confusion. The court explained that an American buyer would not translate the term veuve" into "widow" and then be confused by the similarity to Veuve's "Royal Widow" trademark.

This case is important to disputes over trademarks that use one or more words of foreign origin. In these instances, whether a consumer can translate and readily understand the foreign meaning becomes an issue.