Addressing the Trademark Trial and Appeal Board (TTAB) finding that EARNHARDT was not primarily merely a surname, the US Court of Appeals for the Federal Circuit remanded the case to the TTAB to clarify its surname analysis. Teresa H. Earnhardt v. Kerry Earnhardt, Inc., Case No. 16-1939 (Fed. Cir., July 27, 2017) (Chen, J).

Kerry Earnhardt, son of the late professional racecar driver Dale Earnhardt, is co-founder and CEO of Kerry Earnhardt, Inc. (KEI). KEI applied to register the mark EARNHARDT COLLECTION in Class 20 for "furniture" and in Class 37 for "custom construction of homes." Kerry Earnhardt's step-mother (and Dale Earnhardt's widow), Teresa Earnhardt, opposed the application, arguing that the applied-for mark would result in a likelihood of confusion with her registered and common-law DALE EARNHARDT marks used in connection with a variety of goods and services. Teresa Earnhardt further argued that EARNHARDT COLLECTION was primarily merely a surname under § 2(e)(4) of the Lanham Act.

The TTAB dismissed the opposition, finding that Teresa Earnhardt failed to establish a likelihood of confusion and that EARNHARDT COLLECTION was not primarily merely a surname. Earnhardt appealed the TTAB's surname finding.  

Both parties agreed that EARNHARDT, standing alone, is primarily merely a surname. The dispute centered on whether considering the mark in its entirety—with the addition of COLLECTION—changed that conclusion. The Federal Circuit explained that the proper test according to Hutchinson Technology requires the US Patent and Trademark Office (PTO) to make two inquiries:

  • It must determine whether the additional term (here, "collection") is merely descriptive of the applied-for goods and services.
  • It must determine whether the additional term alters the primary significance of the mark. 

Earnhardt argued that the TTAB failed to fully and properly analyze "collection" in discussing only whether the term was generic and not assessing whether the mark was merely descriptive. KEI agreed that the TTAB should address the issue of whether "collection" is generic or descriptive, but, contrary to Teresa Earnhardt's contentions, argued that the TTAB properly assessed both inquiries.

The Federal Circuit agreed with the parties that the TTAB must determine whether "collection" is merely descriptive of the applied-for goods and services. However, in remanding the case back to the TTAB, the Court explained that "upon review of the Board's decision, it is unclear whether the Board engaged in a merely descriptive inquiry for the term 'collection' or if the Board improperly constricted its analysis to only a genericness inquiry." Failure to "adequately explain" whether "collection" is merely descriptive of furniture and custom construction of homes rendered the TTAB's entire surname analysis "deficient." 

Practice Note: In assessing whether the addition of a term to a surname alters the mark such that it is not primarily merely a surname, the PTO must determine whether the additional term is generic or merely descriptive, and whether the addition of that term alters the primary significance of the mark.  

Ongoing Family Feud over Earnhardt Name

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