concurring.
I fully concur in Parts I, II, and III of the court’s opinion. With respect to Parts IV and V, I concur only in the result. In Parts IV and V, the court holds that the Lanham Act overrides the requirements of the Paris Convention with respect to the rights of foreign registrants. The majority acknowledges that Congress sought to implement the Paris Convention through the Lanham Act but concludes, surprisingly, that Congress did not “accomplish! ] that objective.”
The question whether the Lanham Act should be read to conflict with and trump the Paris Convention is a difficult one that has significant potential implications for international intellectual property law. Because I do not believe it is necessary to decide that issue in this case, I would instead decide the case on the narrower ground that the Lanham Act and the Paris Convention are in accord as applied in this case.
The position taken by the majority is summarized by McCarthy, who states, albeit without much support, that “[ajpart from the special benefits extended to applications by foreign persons under § 44, such applications are subject to all the normal bars to United States registration on the Principal Register.” 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 29:13 (4th ed.2004). Besides citing some dated TTAB opinions for that proposition,1 McCarthy cites this court’s decision in In re Establissements Darty et Fils, 759 F.2d 15 (Fed.Cir.1985). The pertinent discussion of the issue in that case, however, is terse and unenlightening. The court merely stated in the closing paragraph of DaHy that section 44(d) did not excuse the applicant from the need to prove secondary meaning to register a surname. The court then added that section 44(e) “specifically directs issuance of a registration on the Principal Register only ‘if eligible.’ ” Id. at 18. That language does not indicate whether the court was suggesting that proof of secondary meaning for a surname is required only under the Lanham Act, or is required by both the Lanham Act and the Paris Convention, and it is therefore not a sufficient ground on which to rest the decision of this important question.
I
The language of the Paris Convention, together with the language of the Lanham Act that adopts the Paris Convention, seems unequivocally to give foreign registrants rights unless their foreign registered marks fall within one of the express exceptions set forth in Article 6 of the Convention.
Article Qquinquies of the Paris Convention states, in its current version:
Every trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union.
Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases: ... when they are devoid of any distinctive character.
Paris Convention for the Protection of Industrial Property, July 14, 1967, Art. 6quinquies, 21 U.S.T. 1583. Congress enacted the Lanham Act in large part to meet its obligation to protect the rights afforded registrants in the Paris Convention. See Crocker, 223 USPQ at 928 (the *1216goal of meeting the requirements of international treaties “pervaded deliberations in legislative hearings over a period of six years during which the structure of the eventual Act was formulated or perfected”). Section 45 of the Lanham Act makes that explicit: “The intent of this Act is to ... provide rights and remedies stipulated by treaties and conventions respecting trademarks ... entered into between the United States and foreign nations.” 15 U.S.C. § 1127. Section 44(b) of the Lanham Act further provides:
Any person whose country of origin is a party to any convention or treaty relating to trademarks ... to which the United States is also a party ... 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.
15 U.S.C. § 1126(b) (emphasis added). The clear import of that language is that the treaties to which the United States is a party, including the Paris Convention, may give foreign nationals greater trademark rights than are available to United States citizens. See SCM Corp. v. Langis Foods Ltd., 539 F.2d 196, 201-02 (D.C.Cir.1976) (while recognizing that section 2(d) of the Lanham Act prohibits United States nationals from registering a trademark “previously used in the United States by another,” the court held that registration in a foreign country trumped that requirement in part due to Article 4 of the Paris Convention); see also Allan Zelnick, Shaking the Lemon Tree: Use and the Paris Union Treaty, 67 Trademark Rep. 329, 339 (1977) (“The very purpose of [Article 6 quinquies] was to afford nationals of member states a right to request in all other member country states marks which nationals of the receiving country could not file in their home country.”).
Although the PTO’s interpretation of section 44 in light of the Paris Convention has changed over time, see John B. Pe-gram, Trademark Law Revisions: Section Uh, 78 Trademark Rep. 141, 162-70 (1988), the PTO has explicitly adopted the view that the Paris Convention gives foreign nationals rights under the Lanham Act that may be unavailable to United States citizens. In Ex parte Societe Fromageries Bel, 105 USPQ 392 (Dec. Comm’r Pat. 1955) (charmingly denominated “the Merry Cow case”), the Commissioner considered the case of a foreign owner of a trademark who attempted to obtain a United States trademark but had not provided any evidence that the mark had been used in commerce. Interpreting section 44 of the Lanham Act, the Commissioner noted that “it is apparent that there are no inconsistencies between the Convention and the statute, so the only matter left for consideration is the interpretation” of Article 6. Id. at 397. The Commissioner stated that if the case did not fall within the three exceptions enumerated in Article 6quin-quies then
[r]educed to its simplest form, Article 6 merely means that when a registration of a mark has issued in an applicant’s home country (“country of origin”) in accordance with the law of that country, the United States Patent Office will, upon receipt of a properly executed application ... accept the foreign registration at face value and issue a registration in the United States.
Id. at 398. The Commissioner found that all the formal conditions for registration of a trademark under the Lanham Act were met and therefore registered the foreign owner’s mark without requiring that the owner show prior use in the United States. Id. at 397.
*1217Merry Cow remained the law until 1963, when the Commissioner revisited the question whether a foreign applicant had to demonstrate prior use of the mark under section 44. In the case of In re Certain Incomplete Trademark Applications, 137 USPQ 69 (Dec. Comm’r Pat.1963), the Commissioner reversed Merry Cow and required foreign applicants under section 44 to show prior use, although the case was decided on a narrower ground than the Merry Cow decision. Id. at 75. Specifically, the Commissioner noted that Article 6 of the Paris Convention allowed every member country of the Union to individually determine the “conditions for filing and registration,” and that the requirement to show prior use was such a formal “condition” of filing a trademark application. Id. Thus, although the Commissioner disagreed with the result in Merry Cow, the ground for his disagreement was a narrow one not applicable to this case: the Commissioner overruled Merry Coiv on the ground that the requirement to demonstrate prior use was a formality. The Commissioner made plain, however, that rejections based on substantive requirements, such as descriptiveness, were prohibited by both the Lanham Act and the Paris Convention.
Even the Commissioner’s narrow interpretation that upheld the requirement of showing prior use was not allowed to stand. In the 1984 Crocker case, the TTAB overruled Certain Incomplete Trademark Applications, holding that a showing of use was not required of foreign applicants because
Section 44 is 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 purpose of the conventions and implementing statute.
1984 WL 63595, 223 USPQ at 918. The Board concluded that Article Qquinquies of the Paris Convention “establish[ed] a minimum standard for all member countries as to what grounds for refusal of registration any mark duly registered in the country of origin can be imposed by the other countries.” Id. at 920-21. Therefore, the Board reaffirmed the underlying principle of both Merry Cow and Certain Incomplete Trademark Applications that the Lanham Act and the Paris Convention limit the substantive grounds on which the PTO can refuse a foreign trademark owner’s application.
The Crocker decision continues to be good law. In In re Compagnie Generale Maritime, 993 F.2d 841 (Fed.Cir.1993), this court addressed a case in which a foreign trademark applicant was denied United States registration of a mark based on geographical descriptiveness. This court first had to address whether Crocker set forth the controlling principles of law. We held that it did: “Crocker National Bank was governing case law at the time of [Compagnie Generale Maritime’s] applications and still is today.” Id. at 844 n. 3. It is clear that the court in Compagnie Generale was well aware of Crocker and Merry Cow. As Judge Nies stated, id. at 857 (Nies, C.J., dissenting),
[t]he Crocker Bank decision ... adopted the view that a use requirement was a substantive ground of rejection ... and that a foreign registration could be rejected only on the grounds recognized in the Convention itself. Those grounds, per Crocker Bank, are only those found in Article 6 [6quinquies of Lisbon text].
It is clear that Judge Nies, in dissent, understood that Merry Cow and Crocker set forth the governing law at the time, *1218although she expressed the view that those cases should be overruled. Id. at 858.
Judge Nies was not alone in her belief that Crocker was controlling law. The Board has consistently treated Crocker as controlling authority. See Lane Ltd. v. Jackson Int’l Trading Co., 1994 WL 740491, 33 USPQ2d 1351 (TTAB 1994); Clairol Inc. v. Compagnie D’Editions Et De Propaganda Du Journal La Vie Claire-Cevic S.A., 24 USPQ2d 1224 (TTAB 1991). Commentators have also assumed that Crocker is still controlling authority, with some suggesting that it may only be undone through legislation. See Daniel R. Bereskin & Aaron Sawchuk, Crocker Revisited: The Protection of Trademarks of Foreign Nationals in the United States, 93 Trademark Rep. 1199 (2003); Jeffrey M. Samuels & Linda B. Samuels, The Changing Landscape of International Trademark Law, 27 Geo. Wash. J. Int’l L. & Econ. 433, 448-49 (1994).
Crocker has been criticized, and it may be that Crocker was not correctly decided. But the principle underlying that decision cannot be lightly disregarded, particularly in view of this court’s endorsement of Crocker in the Compagnie Generale case. The majority states that we have approved of only the “holding” of Crocker and not the “broader language.” To accept the result of Crocker without the rationale, however, makes little sense. Crocker did not simply state the prior use rule in a vacuum, but came to it only after a careful analysis of the history of the Paris Convention and Lanham Act.
In addition to citing the Darty case, addressed above, the majority cites In re Mastic, Inc., 829 F.2d 1114 (Fed.Cir.1987), which stated that an application under section 44 of the Lanham Act must satisfy “all other provisions of the Act including, inter alia, the requirement that the mark is not likely to cause confusion with a registered mark.” That statement does not support the view that the Lanham Act is inconsistent with the Paris Convention, since likelihood of confusion with a registered mark is one of the grounds on which the Paris Convention permits a foreign registration to be denied. Thus, the cited passage from Mastic, like the cited passage from Darty, does not indicate that the Lanham Act conflicts with the Paris Convention, but rather may simply reflect the understanding that the particular requirements at issue are imposed by both authorities. At the time those cases were decided, after all, it was generally understood that the Lanham Act explicitly adopted the requirements of the Paris Convention, and that the statutory bars to registration allowed by the Paris Convention were congruent with the bars to registration created by the Lanham Act. See 2 Stephen P. Ladas, Patents, Trademarks and Related Rights, National and International Protection § 572 (1975) (“[T]he reasons for which registration is denied on the principal register are those for which, under article Qquinquies of the Paris Convention, a contracting party may refuse a mark even though it is registered in the country of origin.”). If Judge Nies had thought her opinions in Darty and Mastic had effectively overruled Crocker Bank, she would not have needed to argue in her dissent in Compagnie Generale that Crock-er and Merry Cow should be overturned; the deed would already have been done.
II
The legislative history of the Lanham Act makes clear that one of Congress’s major goals in passing the Act was to satisfy this country’s obligations under the Paris Convention. See S.Rep. No. 79-1333 (1946), reprinted in 1946 U.S.C.C.A.N. 1274, 1276 (“Industrialists in this country *1219have been seriously handicapped in securing protection in foreign countries due to our failure to carry out, by statute, our international obligations.”). That goal remained clear throughout the original deliberations on the Act. See Crocker, 223 USPQ at 932 (reproducing the remarks of Commissioner Coe in the 1938 House hearings) (“[I]n the interest of clarity, as well as the integrity of treaty obligations, we have put the treaty provisions into our law.”) (emphasis added). In fact, that intent was explicitly placed into the statute in 15 U.S.C. §§ 1126-27.
Legislative history from later amendments of the Lanham Act shows a continuing commitment to that original purpose. In urging the 1961 amendments to section 44, the Department of State explained that the Paris Convention had two separate requirements: (1) national treatment so that “each member country is required to extend to nationals of other member countries the same protection and rights which it grants to its own nationals”; and (2) “each country is required to provide certain rights or special advantages for other members’ nationals.” S.Rep. No. 87-1019 (1961), reprinted in 1961 U.S.C.C.A.N. 3044, 3048. The Department of State, however, believed that it could not legally deposit the ratified copy of the Lisbon version of the Paris Convention until Congress specifically implemented changes to the Lanham Act. Id. at 3049. Therefore, the government clearly felt that the United States’ participation in the Paris Convention actually required the enactment of the Lanham Act. Such a belief would be illogical if Congress had regarded the Lan-ham Act as inconsistent with the Paris Convention. In addition, the State Department noted that most of the changes in the Lisbon version would not require changes to the Lanham Act, “since most of the changes are already consonant with our law.” Id. Since then, Congress has repeatedly reaffirmed that the Lanham Act implemented the United States’ obligations under the Paris Convention. See, e.g., S.Rep. No. 100-515 (1988), reprinted in 1988 U.S.C.C.A.N. 5577, 5606 (“These amendments will not affect U.S. obligations under the Paris Convention.”).
While accepting that Congress intended section 44 to implement the Paris Convention, the majority notes that Congress may have failed to achieve that objective or failed to understand the requirements of the Paris Convention. Yet it seems inconceivable that Congress could specifically try to implement a piece of legislation, fail, and then labor for 60 years under the delusion that it had done so. That possibility seems especially unlikely since a “treáty will not be deemed to have been abrogated or modified by a later statute, unless such purpose on the part of Congress has been clearly expressed.” Cook v. United States, 288 U.S. 102, 120, 53 S.Ct. 305, 77 L.Ed. 641 (1933). The Paris Convention explicitly requires each member country to adopt appropriate legislation to implement the Convention. See Paris Convention, Art. 25 (Every member country “undertakes to adopt, in accordance with its constitution, the measures necessary to ensure the application of this Convention.”). Congress did nothing to suggest that it was not following the obligations of Art. 25 when it adopted the Lanham Act.
Pointing to the provision of section 44(e) that grants registration to foreign registrants “if eligible,” the majority asserts that section 44 applicants must be “eligible” for registration under section 2 and therefore foreign registrations are subject to all of the section 2 bars to registration, regardless of whether those bars may violate the substantive provisions of international agreements such as the Paris Convention. That conclusion is surprising, *1220particularly in light of the fact that Congress originally included such language in section 44(e) and expressly deleted it. A prior version of section 44(e) read, “A mark duly registered in the country of origin of the applicant and not registrable under section 2 of this Act may be registered on the supplemental register.” H.R. 4744, 76th Cong. § 45(d) (1939). Congress eliminated that requirement of registrability under section 2 in the enacted version of the Lanham Act. Furthermore, while that change was under consideration, one of the purposes of section 44(e) was said to be “to make it clearer that we should not refuse registration to the foreign applicant on the ground that it was not trademark subject matter under our law.” Trade-Marks: Hearings on H.R. 4744 Before the Subcomm. on Trademarks of the House Comm. on Patents, 76th Cong. 170-71 (1939). In light of that background, it seems unlikely that the words “if eligible” were intended to mean “registrable under section 2 of the Act,” thus reinserting in shorthand form the very provision that had been purposefully omitted.
In light of (1) our treaty obligations; (2) the fact that section 44 was viewed as a distinct piece of legislation implementing those treaty obligations; (3) the legislative purpose behind the Lanham Act; and (4) our decision in Compagnie Generate, the term “if eligible” is more appropriately read to refer to the explicit eligibility requirements set forth in section 44(b), which incorporates the eligibility requirements of applicable international agreements, including the Paris Convention. In other words, the applicant must be a person whose country of origin is a party to a convention relating to trademarks, the restrictions set forth in section 44 must not apply, and registration must be allowable under the applicable conventions. In the event those requirements are satisfied, the person is “eligible” for the benefits conferred by section 44. In sum, the more natural reading of the “if eligible” language of section 44(e) is that it refers to eligibility under section 44 of the Lanham Act and thus incorporates the requirements of the Paris Convention for foreign applications.
Ill
Instead of adopting the position that the Paris Convention confers no rights on foreign registrants — a position not adopted by the TTAB and not argued by any party in this appeal — I would decide this case on the ground upheld by the Board and argued by the government: that the Paris Convention and the “primarily merely a surname” rule are not inconsistent. That approach makes it unnecessary to decide whether the requirements of section 2 of the Lanham Act prevail over the eligibility provisions of the Paris Convention.
Article Qquinquies permits nations that are parties to the convention to bar registration of marks that are “devoid of distinctive character” or merely descriptive because, for instance, they only designate the kind, intended purpose, or place of origin of the good. Surnames are a subset of “merely descriptive” marks. Courts have routinely conflated those two categories, but have nevertheless held that surnames fall into these categories. See Conan Props., Inc. v. Conans Pizza, Inc., 752 F.2d 145, 155 (5th Cir.1985) (“ ‘Conan’ is a surname and can be regarded as a descriptive term rather than an inherently distinctive mark.”); Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir.1999) (“Marks that are ‘primarily merely surnames’ constitute a specific subcategory of descriptive marks.”); Larsen v. Terk Techs. Corp., 151 F.3d 140, 148 (4th Cir.1998) (“The use of a surname as a mark ... is considered to be a descriptive *1221mark and generally must develop secondary meaning in order to receive protection.”); Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 125 (4th Cir.1990) (“[B]oth surnames and first names — are regarded as descriptive terms.”). The overwhelming weight of authority is that surnames are both descriptive and void of distinction. Although the policies underlying the “primarily merely a surname” rule and the prohibition against registration of “merely descriptive” marks differ, see Peaceable Planet, Inc. v. Ty, Inc., 362 F.3d 986 (7th Cir.2004), the two have traditionally been closely associated and, in light of the historical treatment of the two, it is not unreasonable to regard the “devoid of any distinctive character” category of the Paris Convention as encompassing surnames. Accordingly, I would affirm the Board’s decision on this narrow ground; I would not decide whether the Lanham Act and the Paris Convention can be read disparately with respect to foreign registrants, and whether foreign registrants have no rights under the Paris Convention unless those rights are also conferred by the Lan-ham Act.
. Those TTAB opinions all predate the Board’s decision in Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 1984 WL 63595, 223 USPQ 909, 928 (TTAB 1984), and therefore represent superseded Board law.