In Re Compagnie Generale Maritime

Compagnie Generale Maritime (CGM) appeals from the September 28, 1990 decision of the Trademark Trial and Appeal Board (Board), In re Compagnie Generale Maritime, Nos. 584,002, 647,509, 647,512 & 739,620 (TTAB September 28, 1990) (In re CGM ), refusing registration for the mark FRENCH LINE for all of the myriad goods and services applied for by CGM. Because we hold that the Board's subsidiary fact findings and resolutions of the questions of ultimate fact regarding geographic descriptiveness and deceptive misdescriptiveness are not clearly erroneous, we affirm.

CGM, a French corporation, sought registrations, under section 44(e) of the Lanham Act (the "Act"), 15 U.S.C. § 1126(e) (1982),1 of the mark FRENCH LINE in stylized design shown below:NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

for a wide variety of goods and services in a multitude of classes covered by several applications, which were consolidated by the Board of CGM's request.2 The applications were based on French registrations and, in accordance with the statute as interpreted in Board precedent in effect at the time of application, no specimens or affidavits of actual use were required or were submitted therewith.3 The Examining Attorney for the Patent and Trademark Office (PTO) refused registration under section 2(e) of the Act, 15 U.S.C. § 1052(e), on the alternative grounds, as interpreted by the Board, that CGM's mark was either merely descriptive or primarily geographically descriptive.

Before the Board, the Trademark Examining Attorney relied only on the primarily geographically descriptiveness ground, arguing that the primary significance of the words "FRENCH LINE" is geographical and a goods/place association exists or can be presumed to exist between the mark and the goods and services covered by the application. CGM, however, contended that its mark, FRENCH LINE, is not primarily geographically descriptive because the words "bring to mind applicant's transatlantic luxury steamship passenger service and 'applicant's world famous fleet of trans[a]tlantic luxury ocean liners,' " In re CGM, slip op. at 6-7, even though CGM no longer owns or operates any luxury liners.

The Board recognized that in order to establish a prima facie case of primary geographic descriptiveness, the PTO "must establish that the public associates the goods with the place named in the mark," id. at 8 (citing In re Jacques Bernier, Inc., 894 F.2d 389, 391, 13 USPQ2d 1725, 1726 (Fed.Cir.1990); In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA1982)), but need not show that the place is "well known" for the applied-for goods or services, id. (citing In re Nantucket, 677 F.2d at 101, 213 USPQ at 894-95 (Nies, J., concurring); In re Jack's Hi-Grade Foods, 226 USPQ 1028, 1030 (TTAB1985)). The Board found that because France is "a major manufacturing and commercial nation," id., the applied-for goods and services would be associated with the country. The Board further found that the words "FRENCH LINE" are primarily geographic. Thus, the Board found that a potential purchaser of goods or services under the mark "FRENCH LINE" would believe that the products or services came from France, rendering CGM's mark primarily geographically descriptive if the goods and services actually come from France4 or primarily geographically deceptively misdescriptive if the goods and services do not come from France.5

Furthermore, upon consideration of CGM's other contentions on appeal, the Board similarly affirmed refusal of registration. The Board concluded that CGM proffered no evidence to support its contention that "purchasers may associate the mark with applicant's former luxury passenger service rather than with the geographic source," id. at 9--CGM had provided no evidence with its application of any actual use or any public reaction thereto. The Board also determined that the mark was not registrable even with CGM's disclaimer as to the words "French" and "Line" apart from the stylized mark because the stylization was minimal. Finally, the Board noted that, although CGM had submitted evidence that arguably might support a claim of distinctiveness, (1) the evidence did not "pertain to the specific goods and services covered by the[ ] applications," and (2) CGM did not request registration under 15 U.S.C. § 1052(f), which provides an exception, when a mark "has become distinctive of the applicant's goods in commerce," to an otherwise proper refusal of registration under, inter alia, section 1052(e). In re CGM, slip op. at 6 n. 3. The Board did suggest that, in the future, CGM could possibly obtain registration of its mark by filing new applications showing that the mark has become distinctive for the applied-for goods and services. Based on all of these findings, the Board affirmed the refusal of registration for CGM's mark.

We review the Board's findings under the deferential clearly erroneous standard. Whether a mark is primarily geographically descriptive or deceptively misdescriptive is a question of fact. See In re Loew's Theaters, Inc., 769 F.2d 764, 226 USPQ 865 (Fed.Cir.1985); cf. Towers v. Advent Software, Inc., 913 F.2d 942, 944, 16 USPQ2d 1039, 1040 (Fed.Cir.1990) ("Whether a mark is descriptive is a question of fact."). Likewise, "the issue of acquired distinctiveness is a question of fact." In re Loew's, 769 F.2d at 769, 226 USPQ at 869. While we might perhaps have reached a different outcome with respect to some of the goods or services in question had we conducted de novo review, we cannot say that CGM has shown that the Board was clearly erroneous in its findings here.

For example, with regard to clothing, the Board took into account evidence presented by the Trademark Examining Attorney in the form of newspaper clippings discussing, inter alia, party dresses from France, children's fashions from France, and French designer clothes, respectively, as "French line[s]." Moreover, the Board noted that the mark, "THE AMERICAN LINE," for clothing was registered on the Supplemental Register. In addition, one clipping referred to a certain brand of cosmetics from France as a "French line of cosmetics." On such bases, the Board found that the mark is primarily geographical. No clear error is seen in this determination.

We likewise hold that the Board did not clearly err in finding that "France, a major manufacturing and commercial nation, would be perceived as the source of the numerous goods and services listed in the applications if the mark is primarily geographical." In re CGM, slip op. at 8. Certainly, all of the goods and services would either originate in France or should be considered as if they did because they are sold by a French company. The Board's associational finding is not clearly erroneous.6

Because CGM provided no specimens of actual use of its mark or evidence on what associations purchasers made with respect to the mark, we hold that the Board did not clearly err in finding that CGM did not carry its burden of proof that its mark had become distinctive for any of the applied-for goods and services. In any event, CGM never sought registration based on distinctiveness.

In short, the Board's decision rests entirely on findings or determinations of fact, none of which have been shown to be clearly erroneous. Therefore, the decision of the Board upholding the refusal of registration is

AFFIRMED.

FRIEDMAN, Senior Circuit Judge, concurring.

I join Judge Michel's opinion for the court. I write separately to explain why I believe the court correctly declines (footnote 3) to reach the issue on which the dissent would decide the case, namely, whether an applicant for trademark registration in the United States based upon foreign registration of the mark is required to show prior use of the mark for the goods for which registration is sought. The court should not reach out to decide an issue that the litigants did not raise before the Board, that the Board did not decide, and that the appellant did not argue to us.

1. The only issue before the Board was whether the mark "French Line" was unregistrable because it was "primarily geographically descriptive." The sole basis upon which the Board affirmed the Trademark Examining Attorney's refusal to register the mark was that "if applicant's goods in fact come from France, we believe applicant's mark is primarily geographically descriptive of the source of those goods and services, and that if those goods and services do not come from France, then the mark would be primarily geographically deceptively misdescriptive."

In their initial briefs before this court, the parties similarly argued only whether the mark was primarily geographically descriptive. That was the only issue presented at oral argument, until the court asked whether the application was defective because it did not assert prior use of the mark. In response to the court's request, after argument each party filed a supplemental brief addressing that issue. The appellant argued briefly that such use was not required. The Commissioner's brief presented argument on both sides of the question, but took no position on it. These supplemental filings cannot properly be viewed as an injection by the parties of the issue into the case.

"The grounds upon which an administrative order must be judged are those upon which the record discloses that its action was based." Securities & Exchange Comm'n v. Chenery Corp., 318 U.S. 80, 87, 63 S.Ct. 454, 459, 87 L.Ed. 626 (1943). A reviewing court cannot affirm an agency on a ground other than that the agency gave. Id. at 95, 63 S.Ct. at 462 ("an administrative order cannot be upheld unless the grounds upon which the agency acted in exercising its powers were those upon which its action can be sustained"). The same reasoning should also dictate that a reviewing court should not refuse to uphold the result an agency reached, on the ground that the agency's prior decision, upon which the decision under review rests, was itself erroneous.

I recognize that under the practice of the Patent and Trademark Office, there is little likelihood that the validity of the Board's position that prior use need not be shown to obtain United States registration of a trademark based upon a foreign registration, would be directly presented to this court. That consideration, however, does not justify the court in reaching out to decide an issue not raised before it. Although an appellate court always may notice plain error, even though not raised before it, the Board's error that the dissent discerns in this case is not of that kind.

In these circumstances, any change in the Board's position should be made by Congress. Congress apparently has done that in the Trademark Law Revision Act of 1988, discussed briefly below.

The dissent's position is in stark contrast with what the court did in the Crocker case. There, an augmented eight-member Board panel first decided that prior use need not be asserted when United States registration was sought based on a foreign registration. A regular three-member Board panel then refused registration because there was a likelihood of confusion between the two marks involved. On appeal, the only issue the parties raised was likelihood of confusion, and this court affirmed the Board on that issue without consideration of the augmented panel's ruling, made at an earlier stage of the same case, on the use issue. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.Cir.1987). I do not understand why, if the court in that case limited its decision to the issue the parties presented to it, it should not follow the same course here. If, as the dissent now argues, the Crocker prior use ruling was erroneous, one would think that the court contemporaneously reviewing the second Crocker decision would have corrected that error.

A further consideration against deciding the prior use issue in this case is that for the future the issue is likely to have limited, if any, significance. Under the Trademark Law Revision Act, Pub.L. No. 100-667, Title I, § 133(4), 102 Stat. 3935, 3946 (1988), an applicant seeking registration based on a foreign registration must show that it "has a bona fide intention to use the mark in commerce." 15 U.S.C. § 1126(d)(2) (1988). I doubt that, in the face of this change in the statute, the Board will continue to apply the Crocker rule.

2. The dissent argues, however, that the Board had no jurisdiction to consider the application because the application's failure to allege prior use of the mark rendered the application invalid, that a court always may--indeed, must--consider the jurisdiction of the tribunal the decision of which it reviews, and that the Board's lack of jurisdiction deprives us of jurisdiction to decide the merits, I cannot conclude, however, that the Board lacked jurisdiction in this case.

The question the dissent addresses is one of statutory interpretation: Whether the Lanham Act requires an application for trademark registration in the United States based upon foreign registration of the mark to show prior use of the mark. The dissent's conclusion that the Act requires that showing does not establish that without that showing the Board had no "jurisdiction" in the case. "The term 'jurisdiction' ... is a verbal coat of ... many colors." International Longshoremen's Ass'n v. Davis, 476 U.S. 380, 402, 106 S.Ct. 1904, 1918, 90 L.Ed.2d 389 (1986) (Rehnquist, J.) (quoting United States v. Tucker Truck Lines, Inc., 344 U.S. 33, 39, 73 S.Ct. 67, 70, 97 L.Ed. 54 (1952) (Frankfurter, J., dissenting)). The dissent's conclusion that the applicant may not have met the statutory requirements for registration, so that the Board could not grant the application, does not mean that the Board had no jurisdiction in the case.

NIES, Chief Judge, dissenting.

The panel is divided on what issue in this appeal is dispositive. The majority upholds the merits of the Board's decision.1 I would hold (1) that the PTO acted ultra vires in accepting and processing as applications the subject submissions which do not comply with the statutory requirements for an application and (2) that by ruling on the merits, this court is rendering merely an advisory opinion. In re Bose, 687 F.2d 432, 215 USPQ 1 (CCPA1982); In re Dien, 680 F.2d 151, 214 USPQ 10 (CCPA1982). An affirmance of the PTO's refusal to register the alleged marks on the Principal Register for descriptiveness or deceptive misdescriptiveness under 15 U.S.C. § 1052 (section 2(e)) does not put an end to these applications. By a simple amendment to the Supplemental Register, the rejection for descriptiveness or misdescriptiveness is avoided (see 15 U.S.C. § 1091(a)) and the registrations will issue.2 In any event, I disagree with the majority's choice of the ground for decision. The validity and completeness of the submissions as applications is a jurisdictional predicate to any decision on the merits by the PTO and a fortiori to our own review thereof, and must be resolved first. In re Certain Incomplete Trademark Applications, 137 USPQ 69, 77-78 (Dec.Comm'r Pat.1963). Ex parte British Insulated Callendar's Cable Ltd., 83 USPQ 319, 320 (Dec.Comm'r Pat.1949). See also Killip v. Office of Personnel Management, 991 F.2d 1564 (Fed.Cir.1993); Arctic Corner, Inc. v. United States, 845 F.2d 999, 1000-01 (Fed.Cir.1988) (no jurisdiction in this court absent submission and denial of contractor's claim; opinion would be advisory); In re Bose, supra; In re Dien, supra. Unless all statutory requirements are met, the submissions are not entitled to a filing date. Without a filing date, there is nothing to examine. Incomplete Trademark Applications, 137 USPQ at 77-79.

The majority's ruling that the question of whether an agency acted within its powers cannot be decided because of the proscription of Securities & Exchange Commission v. Chenery Corp., 318 U.S. 80, 87, 63 S.Ct. 454, 459, 87 L.Ed. 626 (1943) is contrary to our precedent. See, e.g., Killip v. OPM, supra. In Chenery, the Supreme Court stated, "The grounds upon which an administrative order must be judged are those upon which the record discloses that its action was based." Chenery precludes upholding an administrative decision on the merits on grounds upon which the agency did not rely. However, before looking to the merits of an agency decision, a reviewing court must determine that the agency acted within its powers or ultra vires. A dismissal for lack of statutory authority to make the decision is not an "affirmance on other grounds" of the agency action. Chenery presumes that the agency acted within its powers. "[A]n administrative order cannot be upheld unless the grounds upon which the agency acted in exercising its powers were those upon which its action can be sustained." Chenery, 318 U.S. at 95, 63 S.Ct. at 462 (emphasis added).

Thus, I address the issue of the statutory requirements for an application which must be satisfied to bring a case or controversy respecting the merits before us. "A court may and should raise the question of its jurisdiction sua sponte at any time it appears in doubt." Arctic Corner, 845 F.2d at 1000.

* Background

Compagnie Generale Maritime, a French corporation, (CGM), sought to register FRENCH LINE as a mark for an extensive list of goods and services3 solely on the basis of its registrations in France. The Examiner refused registration on the ground that the mark sought to be registered was, in each instance, unregistrable on the Principal Register under 15 U.S.C. § 1052(e) of the Lanham Act, which precludes registration of merely descriptive or deceptively misdescriptive words. On appeal, the Board held that the primary significance of the phrase "FRENCH LINE" was geographic. Per the Board, consumers were likely to believe that the products or services came from France, if the goods or services were supplied from France; and if not originating there, the phrase would be primarily geographically deceptively misdescriptive. Under either circumstance, registration was, per the Board, precluded except upon proof of distinctiveness. 15 U.S.C. § 1052(f). CGM appealed to this court, arguing that the primary meaning of FRENCH LINE is not geographic and, thus, the holding of descriptiveness or deceptive misdescriptiveness was clearly erroneous.

At oral argument, because the record disclosed CGM's applications contained no allegations that the asserted mark had, in fact, been used anywhere for any goods or services and that no specimen labels evidencing use (and possibly the country of origin) had been filed, applicant's counsel was asked whether CGM's submissions complied with the statutory requirements for an application as specified in Section 1 of the Lanham Act. 15 U.S.C. § 1051.

Citing as authority Crocker Nat'l Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB1984), counsel responded that, as a French national, his client was entitled by treaty to register its alleged mark under 15 U.S.C. § 1126(e) of the Lanham Act (Section 44(e)), even if never used anywhere on the more than 200 items set out in the applications, by virtue of its current registrations in France. Additional briefing on this issue was requested and received.4

The jurisdictional issue raised by this appeal requires judicial interpretation of the Lanham Act, 15 U.S.C. §§ 1051 et seq., respecting the requirements of an application which must be met by a foreign applicant who seeks a U.S. registration based on a foreign registration (hereinafter "home" registration) which qualifies under a treaty to serve as the basis for an application for registration in the United States. This appeal, deals with the provisions of Section 44 of the Lanham Act (15 U.S.C. § 1126) which gave effect to the obligations of the United States under treaties and conventions, prior to the amendments enacted in 1988.5 However, the issues discussed herein are not mooted by the recent changes in the statute inasmuch as the question turns on whether Congress may, in accordance with treaty obligations, impose restrictions on a Section 44 applicant beyond those enumerated in the Convention of Paris for the Protection of Industrial Property of 20th March 1883 ("Paris Convention") of which the United States is a member. The current law imposes such a restriction not recognized in Section 44, albeit a different restriction. The specific question here is whether, under the Lanham Act provisions in effect in 1985 and the Paris Convention, a foreign applicant was entitled to obtain a U.S. trademark registration, pursuant to Section 44 of the Lanham Act, on the basis of a "home" registration for an asserted "mark" which the applicant had not used and was not using anywhere as a trademark or service mark for the goods or services specified in the application. Alternatively stated, did the statutory requirements for a trademark application, particularly the requirement of use of the asserted mark prior to filing, then set forth in Section 1 of the Lanham Act (15 U.S.C. § 1051), apply to foreign applicants? I conclude, as a matter of interpretation, that the statute did not exempt foreign applicants from any requirement for an application except for the requirement of an allegation of use in commerce of the United States for which it could substitute a qualifying "home" registration, and that this interpretation accords with the provisions of the Paris Convention.

The imposition of use requirements on a foreign applicant claiming the benefits of Section 44 has had a tortured history.6 Since 1887, the United States has adhered to the "Paris Convention." As explained by Professor McCarthy:

The Paris Convention is essentially a compact between the various member countries to accord in their own countries to citizens of the other contracting parties' trademark and other rights comparable to those accorded their own citizens by their domestic law. The underlying principle is that foreign nationals should be given the same treatment in each of the member countries as that country makes available to its own citizens ["national treatment"]. The Convention is not premised upon the idea that the trademark laws of each member nation shall be given extraterritorial application, but on exactly the converse principle that each nation's law shall have only territorial application.

1 McCarthy, Trademarks and Unfair Competition, § 19:24, at 927 (2d ed. 1984). Thus, common law and civil law countries with very different trademark laws were all able to join the Convention without changes in basic principles of national law. See generally, Stephen Ladas, Patents Trademarks and Related Rights, National and International Protection, §§ 22-28 & 564-631 (hereinafter Ladas ). National laws, thus, continued to determine whether rights arose from use--the common law principle or from registration--the civil law principle. See Ladas, at pp. 1226-1229.7

Provisions have been included in trademark statutes since the Act of March 3, 1897 to accommodate the treaty. Under the Trademark Act of 1905, applicants who were entitled to file for registration based on a "home" registration, nevertheless, were required to specify in the application a date of first use somewhere (not necessarily in U.S. commerce) and to provide specimens evidencing the mark was in use. Pub.L. No. 58-59, § 2, 33 Stat. 724, 725. The Trademark Act of 1946 (Lanham Act) carried forward enablement of the Convention and other treaties in Section 44. The initial regulations respecting requirements of an application, promulgated by the Patent Office under the Lanham Act (hereinafter "Trademark Rules"), specifically continued to impose the same requirements of information concerning use of the mark, as well as evidence of use, as under the 1905 Act.8 In 1947, a Commissioner of Patents decision reviewed and upheld the validity of the Trademark Rules as in accordance with the Convention. The purported application was not accepted for examination, even though based on a British registration, where specimens of actual use could not be supplied because the mark had not been used anywhere. On its face, the purported application was incomplete and void. Ex parte British Insulated Callender's Cable Ltd., 83 USPQ at 319 (Dec.Comm'r Pat.1949).

In 1955, another Commissioner of Patents decision, Ex parte Societe Fromageries Bel, 105 USPQ 392 (Dec.Comm'r Pat.1955) (the "Merry Cow" case), overruled the standing fifty year interpretation of treaty rights and held that a foreign applicant need not allege any use in its application because such previous requirement was contrary to the Convention.

In 1962, the Patent Office reverted back to the British Insulated interpretation by issuing Trademark Rules which required foreign applicants relying on a "home" registration, nevertheless, to submit labels evidencing actual use of the mark and supply dates of first use somewhere. See 27 Fed.Reg. 1044 (Oct. 12, 1962). In 1963, these Trademark Rules were upheld in Incomplete Trademark Applications, 137 USPQ at 77-78.

It must be noted at this point that the issue of incompleteness of an application which results in the refusal of a filing date is usually one petitionable to the Commissioner. See Pony Int'l, 1 USPQ2d at 1076, 1078-79; see also, e.g., British Insulated, 83 USPQ 319; Merry Cow, 105 USPQ 392; Incomplete Trademark Applications, 137 USPQ 69. The TTAB has jurisdiction over an ex parte case only after an application has been accepted as meeting the statutory formalities and the mark has been refused registration during examination. It has no jurisdiction to review a Commissioner's decision. Although rare, an issue of an invalid application may also arise in inter partes proceedings where an adversary raises the issue. Thus, the TTAB infrequently has a case before it which raises an issue of the completeness of an application. In 1973, however, this occurred in John LeCroy & Son, Inc. v. Langis Foods, Ltd., 177 USPQ 717 (TTAB1973) (the "Lemon Tree" case). However, it must be pointed out that where the issue is raised before the Board, the Commissioner takes the position that the Board must follow his interpretation of the law.9

In the Lemon Tree case, an application by a Canadian national was examined and approved for registration. In the opposition, the opposer asserted that the application was defective for failure of the applicant to have used the purported mark at the time required. The PTO attempted to resurrect the Merry Cow "no-use required" interpretation based on treaty rights, but that decision was reversed on appeal to the district court. 376 F.Supp. 962, 182 USPQ 132 (D.D.C.1974). On further appeal, the Circuit Court determined that the foreign applicant had used its mark and that the issue of registering an unused "mark" was not in the case. SCM Corp. v. Langis Foods, Ltd., 539 F.2d 196, 202-03 n. 12, 190 USPQ 288, 293-94 n. 12 (D.C.Cir.1976). Thus, the refusal to accept Section 44 applications without compliance with Section 1 remained the practice.

The saga continued with the Commissioner's 1977 proposed rule change eliminating a use requirement for foreign applicants, 42 Fed.Reg. 40,450 (Aug. 10, 1977), which proposal was withdrawn a year later after much criticism. 973 Official Gaz.Pat. and Trademark Off. 19 (Trademarks) (Aug. 1, 1978). See Pegram, supra note 4, at 169.

For six years the matter lay dormant, with the controlling authority being the Incomplete Trademark Applications decision (use required) and with the Trademark Rules requiring a foreign applicant to conform to all requirements of a regular application, including an allegation of actual use, albeit, actual use in United States commerce was not necessary for a Section 44 application.

In 1984, the Commissioner, acting through the Board in the Crocker Bank case,10 adopted the position that a use requirement for a Section 44 applicant is inconsistent with the Paris Convention and that the Lanham Act had to be interpreted so as to eliminate the conflict. This was accomplished by ruling that Section 1 did not apply to Section 44 applications. The Crocker Bank ruling was the Commissioner's position at the time the subject applications of CGM were filed.11

The starting point for resolution of the issue presented is, of course, the statute. It is necessary to construe a number of sections of the Lanham Act, particularly sections 1, 44, and 45. These sections provided in pertinent parts at the relevant time:

Sec. 1 (15 U.S.C. § 1051) : Registration; application; payment of fees; designation of resident for service of process and notice

The owner of a trade-mark used in commerce may register his trade-mark under this chapter on the principal register established:

(a) By filing in the Patent and Trademark Office--

(1) a written application, in such form as may be prescribed by the Commissioner, verified by the applicant, or by a member of the firm or an officer of the corporation or association applying, specifying applicant's domicile and citizenship, the date of applicant's first use of the mark, the date of applicant's first mark in commerce, the goods in connection with which the mark is used and the mode or manner in which the mark is used in connection with such goods, and including a statement to the effect that the person making the verification believes himself, or the firm, corporation, or association in whose behalf he makes the verification, to be the owner of the mark sought to be registered, that the mark is in use in commerce, and that no other person, firm, corporation, or association, to the best of his knowledge and belief, has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when applied to the goods of such other person, to cause confusion, or to cause mistake, or to deceive....

(2) a drawing of the mark; and

(3) such number of specimens or facsimiles of the mark as actually used as may be required by the Commissioner.

(b) By paying into the Patent and Trademark Office the filing fee.

(c) By complying with such rules or regulations, not inconsistent with law, as may be prescribed by the Commissioner.

(d) If the applicant is not domiciled in the United States he shall designate by a written document filed in the Patent and Trademark Office the name and address of some person resident in the United States on whom may be served notices or process in proceedings affecting the mark....

* * * * * *Sec. 44 (15 U.S.C. § 1126) International Conventions (a): Register of marks communicated by international bureaus

The Commissioner shall keep a register of all marks communicated to him by the international bureaus....

(b) : Benefits of section to persons whose country of origin is party to convention or treaty

Any person whose country of origin is a party to any convention or treaty relating to trade-marks, trade or commercial names, or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits of this section under the conditions expressed herein to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of a mark is otherwise entitled by this chapter.

(c) : Prior registration in country of origin; country of origin defined

No registration of a mark in the United States by a person described in subsection (b) of this section shall be granted until such mark has been registered in the country of origin of the applicant, unless the applicant alleges use in commerce.

For the purposes of this section, the country of origin of the applicant is the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment, the country in which he is domiciled, or if he has not a domicile in any of the countries described in subsection (b) of this sect