Federal Circuit returns dispute over Dale Earnhardt trademark rights back to USPTO

Dale Earnhardt, Sr. CC-SA-2.0.

Earnhardt v. Kerry Earnhardt, Inc., (Fed. Cir. July 27, 2017) (Before Wallach, Chen, and Hughes, J.) (Opinion for the court, Chen, J.)

Teresa Earnhardt appealed from the dismissal of its opposition to the trademark registration of EARNHARDT COLLECTION by Kerry Earnhardt, Inc (“KEI”).

Teresa Earnhardt is the widow of Dale Earnhardt and the owner of common law rights and trademark registrations for the mark DALE EARNHARDT in typed and stylized form, in connection with various goods and services. Kelly Earnhardt is the co-founder and CEO of KEI, the son of Dale Earnhardt, and the stepson of Teresa Earnhardt. Kelly Earnhardt has developed business ventures and licensing through KEI, including the EARNHARDT COLLECTION lifestyle brand, in connection with custom home design and construction services.

Teresa Earnhardt opposed KEI’s registration of EARNHARDT COLLECTION based on a likelihood of confusion with her common law rights and registered marks in DALE EARNHARDT and her common law rights in EARNHARDT. Additionally, Teresa Earnhardt opposed KEI’s registration because the mark was “primarily merely a surname” under Section 2(e)(4) of the Lanham Act. The Board found that Teresa Earnhardt did not establish a likelihood of confusion between her marks and KEI’s proposed mark. The Board also found that EARNHARDT COLLECTION is not primarily merely a surname. Teresa Earnhardt appealed.

The parties agree that the term “Earnhardt” by itself is primarily merely a surname, but they disagree on whether the mark EARNHARDT COLLECTION as a whole is primarily merely a surname. Teresa Earnhardt contends that the Board made an incomplete assessment of the term “collection” in KEI’s proposed mark by failing to consider whether that term is merely descriptive.

The analysis of a combination surname mark requires two inquires. First, is the term added to the surname “merely descriptive” of the applicant’s goods and services? In re Hutchinson Technology, Inc., 852 F.2d 552 (Fed. Cir. 1988). Specifically, is “collection” merely descriptive of KEI’s goods and services? Second, did adding the additional term to the surname alter the primary significance of the mark, as a whole, to the purchasing public? In re Hutchinson at 554. A key element is determining the relative distinctiveness of the second term in the mark, in this case, “collection.” Id. at 554-55. The Board failed to answer this question. Indeed, the Board’s opinion was contradictory and left the Court “uncertain as to [the Board’s] findings” on whether “collection” is merely descriptive. This uncertainty undermined the inquiry about the primary significance of the mark to the purchasing public.

The Court vacated and remanded the Board’s finding that EARNHARDT COLLECTION for furniture and custom home construction is not primarily merely a surname. The Board was instructed to complete the two required inquiries and explicitly determine: (1) whether the term “collection” was merely descriptive of KEI’s furniture and custom home construction services, and (2) whether “collection” altered the primary significance of the mark as a whole to the purchasing public.

The analysis of a combination surname mark requires determining: (1) whether the additional term was merely descriptive of applicant’s goods and services, and (2) the primary significance of the mark as a whole to the purchasing public.

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