Rath alternatively 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. However, again, the court was not persuaded:
It is well established that executory treaties (those treaties that are not self-executing) have no direct effect until implemented by domestic law. [citation omitted.] Our predecessor court held that "[t]he Paris Convention was not . . . self-executing and required implementing legislation." Kawai v. Metlestics, 480 F.2d 880, 884 (C.C.P.A. 1973). Rath argues, however, that the older CCPA decision of Master, Wardens, Searchers, Assistants & Commonalty of Co. of Cutlers v. Cribben & Sexton Co., 202 F.2d 779 (C.C.P.A. 1953), conflicts with Kawai. In that case, the CCPA concluded that the Paris Convention "is part of our law and no special legislation in the United States was necessary to make it effective here."
We are obligated to follow the later decision in Kawai because
"the Court of Customs and Patent Appeals always sat in banc and therefore later decisions overcome earlier inconsistent ones." [citation omitted] It is also plain that Kawai is correct. The Paris Convention itself suggests that it is not self-executing. Article 25 states that "[a]ny country party to this Convention undertakes to adopt, in accordance with its constitution, the measures necessary to ensure the application of this Convention" and that "[i]t is understood that, at the time a country deposits its instrument of ratification or accession, it will be in a position under its domestic law to give effect to the provisions of this Convention." The majority of other Courts of Appeals that have considered the issue have also held that the Paris Convention is not self-executing.
. . . Rath relies upon Davidoff Extension S.A. v. Davidoff Intâ€™l, Inc., 221 U.S.P.Q. 465 (S.D. Fla. 1983), for the proposition that the Paris Convention is self-executing. Davidoff holds that the Paris Convention is self-executing. However, we are not bound by this decision and we do not find it persuasive.
A mark is not "eligible" for registration on the principal register under the statute unless it satisfies the section 2 requirements, including the surname rule. The legislative history cited by the concurrence does not support a contrary conclusion. 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. To the extent that there was any consideration of the continued applicability of United States
eligibility requirements to foreign marks, the legislative history cited by the concurrence suggests, at most, that Congress intended to permit registration of otherwise ineligible marks on the supplemental register, not the principal register. There is simply no way to read this history as suggesting that Congress intended to require registration on the principal register despite United States eligibility requirements. If anything, the history confirms that the principal register was available to foreign registrants and United States
citizens on equal termsâ€”both had to meet the eligibility requirements of United States law.