Teresa Earnhardt, widow of race car driver Dale Earnhardt, opposed two applications of her stepson Kerry's company for the mark EARNHARDT COLLECTION for furniture and custom construction of homes, on two grounds: likelihood of confusion with the registered marks EARNHARDT and DALE EARNHARDT for various goods and services, and violation of the Section 2(e)(4) bar on registration of surnames. Teresa H. Earnhardt v. Kerry Earnhardt, Inc., Opposition Nos. 91205331 and 91205338 (February 26, 2016) [not precedential]. 

Likelihood of confusion: Opposer established priority of use for the common law mark DALE EARNHARDT for beanbag chairs, plates, figurines, ornaments, ornament plates, clocks, and tabletop figurines. The goods and services in the pleaded registration were "primarily memorabilia/novelty items, clothing, and professional automobile racing services." But opposer did not offer any testimony or evidence that the goods and services in the registrations were related to applicant's goods and services. The Board concluded that applicant's goods and services are not related to opposer's goods and services.

Opposer claimed that the mark DALE EARNHARDT is famous, but the Board found no evidence that the mark is famous with respect to any goods.

As to channels of trade, the Board concluded that the involved goods and services "are not sold in the same marketing milieu." Oppser's customers are likely to be impulse buyers of Dale Earnhardt apparel and memorabilia, whereas applicant's customers will purchase furniture and custom homes with some degree of care.

The Board found EARNHARDT to be the dominant portion of applicant's mark, and concluded that the involved marks are similar in appearance, sound, connotation, and commercial impression.

Relying on the Harry Winston case, opposer argued that the family relationship between the parties is an additional factor that supports a finding of likelihood of confusion. However, in that case, both parties were in the jewelry business. Here, applicant's goods and services are not related to car racing, and Kerry Earnhardt took steps to associate the mark EARNHARDT COLLECTION with himself, his family, and his company, rather than with his father or opposer. Thus the relationship between the parties does not affect the Section 2(d) determination.

Balancing the relevant du Pont factors, the Board found that applicant's mark is not likely to cause confusion with those of opposer.

Section 2(e)(4): The surname EARNHARDT ranked as number 16,852 in the U.S. Census database, with 1559 appearances. While it is not a common surname, neither is EARNHARDT so rare that it would not be regarded as a surname for Section 2(e)(4) purposes. Of course, EARNHARDT is in fact the surname of persons connected with both parties. The term has no other recognized meaning, and has the "look and feel" of a surname. 

However, the Board must evaluate the mark EARNHARDT COLLECTION as a whole. Applicant contended that COLLECTION is a generic term, and therefore the two word mark is still considered a surname. 

Not so fast, said the Board. COLLECTION may be descriptive of the manner in which some furniture is marketed, but it is not generic. Likewise with home design, COLLECTION does not refer to any class or category. 

The Board relied on In re Hutchinson Technology, Inc., 7 USPQ2d 1490 (Fed. Cir. 1988), in which the CAFC panel majority found that HUTCHINSON TECHNOLOGY was not primarily merely a surname because the term TECHNOLOGY was not generic. 

Therefore, the Board dismissed the Section 2(e)(4) claim. 

Read comments and post your comment here.

TTABlog comment: I think COLLECTION should be considered highly descriptive, and that EARNHARDT COLLECTION is primarily merely a surname. COLLECTION adds nothing, in my view, to diminish the surname significance of EARNHARDT.

HUTCHINSON TECHNOLOGY sounds like the name of a company. EARNHARDT COLLECTION sounds like an assortment of things collected by someone named Earnhardt.