IP Law Daily TTAB ordered to reconsider surname significance of EARNHARDT COLLECTION for furniture
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Friday, July 28, 2017

TTAB ordered to reconsider surname significance of EARNHARDT COLLECTION for furniture

By Cheryl Beise, J.D.

In a trademark dispute between relatives of the late professional race car driver Dale Earnhardt, the Trademark Trial and Appeal Board’s ruling that the mark EARNHARDT COLLECTION, for furniture and custom home construction services, was registrable has been reversed by the U.S. Court of Appeals for the Federal Circuit because it was unclear whether the Board erred in finding that the mark was not primarily a surname. The court reinstated the opposition proceeding brought by Earnhardt’s widow against her stepson’s company and instructed the Board on remand to determine (1) whether the term "collection" is merely descriptive of the applicant’s identified goods and services, and (2) the primary significance of the mark as a whole to the purchasing public (Earnhardt v. Kerry Earnhardt, Inc., July 27, 2017, Chen, R.).

Applicant Kerry Earnhardt, Inc. ("KEI"), filed two intent-to-use applications to register on the Principal Register the mark EARNHARDT COLLECTION ("Collection" disclaimed) for "Furniture" in International Class 20; and for "Custom construction of homes" in Class 37. Kerry Earnhardt, son of NASCAR legend Dale Earnhardt, is KEI’s co-founder and CEO. Opposer Teresa Earnhardt is Dale Earnhardt’s widow and Kerry Earnhardt’s step-mother. Teresa Earnhardt objected to both registrations on the grounds that the proposed mark was primarily a surname and would cause a likelihood of confusion with her registered DALE EARNHARDT marks and purported common law rights in EARNHARDT. The Board dismissed the opposition, finding that confusion was unlikely and that the composite mark EARNHARDT COLLECTION was not primarily a surname. Teresa Earnhardt appealed.

On appeal, Teresa Earnhardt only challenged the Board’s finding that EARNHARDT COLLECTION was not primarily a surname. Section 2(e)(4) of the Lanham Act prohibits registration of a mark that "is primarily merely a surname," unless the mark has acquired distinctiveness as a source of the applicant's goods.

Both sides agreed that the term "Earnhardt" by itself was primarily merely a surname, but they disagreed whether the mark EARNHARDT COLLECTION, as a whole, would be viewed as primarily merely a surname. The Board found that EARNHARDT COLLECTION was not primarily as surname because the addition of the term COLLECTION diminished the surname significance of EARNHARDT in the mark as a whole.

The Federal Circuit noted that a key inquiry in determining the surname significance of a composite mark like the applicant’s is determining the relative distinctiveness of the second term. Then, the Board must decide whether the mark as a whole, i.e., the combination of the individual parts, conveys the surname as "the primary significance of the mark as a whole to the purchasing public." In re Hutchinson Technology Inc., 852 F.2d 552, 554 (Fed. Cir. 1988) ("Hutchinson").

Teresa Earnhardt contended that the Board erred because it only considered whether the term COLLECTION was generic and not whether it was merely descriptive of KEI’s goods and services.

Upon review of the Board’s decision, the Federal Circuit could not determine whether Teresa Earnhardt was correct because it was "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." The meaning of the Board’ finding that "collection" was not the "common descriptive or generic name" for KEI's goods and services was unclear.

The Federal Circuit concluded that the Board did not adequately explain whether "collection" was merely descriptive of KEI’s goods and services. As a result of this error, the Board’s analysis of the mark as a whole was likewise deficient. The Board’s decision was vacated and the case remanded. On remand, the Board was directed to clarify its findings and analysis, in accordance with Hutchinson, and specifically determine (1) whether the term "collection" is merely descriptive of the applicant’s identified goods and services, and (2) the primary significance of the mark as a whole to the purchasing public.

The case is No. 2016-1939.

Attorneys: Uly Samuel Gunn (Alston & Bird LLP) for Teresa H. Earnhardt. David Blaine Sanders (Robinson Bradshaw & Hinson, P.A.) for Kerry Earnhardt, Inc.

Companies: Kerry Earnhardt, Inc.

MainStory: TopStory Trademark FedCirNews

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