• Teresa Earnhardt opposed mark EARNHARDT COLLECTION for likelihood of confusion and being primarily a surname
  • TTAB failed to explain adequately whether term ‘collection’ was merely descriptive
  • Court reversed TTAB’s finding that EARNHARDT COLLECTION was not primarily merely a surname

In Teresa H Earnhardt v Kerry Earnhardt, Inc (KEI) the court found that the Trademark Trial and Appeal Board failed to explain adequately whether the term ‘collection’ in the trademark EARNHARDT COLLECTION was merely descriptive in connection with its goods and services. As a result, the court found the board’s analysis of the EARNHARDT COLLECTION mark overall was deficient. The court vacated and remanded the case to the board for further analysis and clarification. In particular, the court instructed the board to determine whether:

  • the term ‘collection’ in the EARNHARDT COLLECTION was merely descriptive in connection with the goods and services; and
  • adding the term ‘collection’ altered the primary significance of the EARNHARDT COLLECTION mark as a whole to the purchasing public.

Teresa Earnhardt was the widow of noted professional car racer Dale Earnhardt and the owner of US trademark registrations containing DALE EARNHARDT and common law trademark right in EARNHARDT as a stand-alone mark. Kerry Earnhardt was the co-founder and CEO of KEI and the son of Dale Earnhardt and the stepson of Teresa Earnhardt. Through KEI, Kerry Earnhardt developed the EARNHARDT COLLECTION lifestyle brand and licensed the mark for use in connection with custom home design and construction services. Teresa Earnhardt owned the trademark registrations for DALE EARNHARDT in both typed and stylised form. Teresa Earnhardt opposed KEI’s application for EARNHARDT COLLECTION on the basis of likelihood of confusion with her prior trademark rights and that the mark was primarily a surname.

Both parties agreed that ‘Earnhardt’ by itself is primarily a surname but disagreed on whether the addition of ‘collection’ in the mark EARNHARDT COLLECTION altered this conclusion. The board found that Teresa Earnhardt had failed to establish a likelihood of confusion between her marks and KEI’s proposed mark. Further, the board found that KEI’s proposed mark was not primarily a surname.

Under the US Trademark Act, a mark can be denied registration if it is “primarily merely a surname” as many people can share a surname and each of them could have an interest in using their surname in business. To evaluate whether a mark is primarily merely a surname, the board needed to determine if the primary significance of the EARNHARDT COLLECTION mark as a whole in connection with the applied for goods and services is that of a surname. The board also needed to determine the relative distinctiveness of the second term ‘collection’ in the mark. When determining a mark with multiple terms and elements, the board cannot isolate the mark into separate elements and evaluate them separately.

In the appeal, Teresa Earnhardt argued that the addition of ‘collection’ to the EARNHARDT COLLECTION mark did not sufficiently diminish the surname significance of Earnhardt when the mark is used for furniture or custom home construction services. KEI argued that the board properly found ‘collection’ was not generic or merely descriptive for the mark’s stated goods and services. The US Board of Appeals for the Federal Circuit found the board’s analysis to be insufficient because it was unclear if the board had engaged in a merely descriptive inquiry for the term ‘collection’ or had engaged only in a genericness inquiry. In other words, the court believed it was unclear if the board had analysed and concluded that the mark was both not descriptive and not generic. If the board based its decision on the conclusion that a mark containing a surname plus a merely descriptive term is registrable as a matter of law, the court stated that this was an incorrect analysis. It held that the board should have conducted a two-part inquiry to determine whether adding additional terms to a surname was sufficient to make the mark registrable as a whole. The two-part inquiry should decide whether:

  • the additional term or terms are merely descriptive of the applicant’s goods and services; and
  • adding the additional term or terms alters the primary significance of the mark as a whole to the purchasing public. 

Since it was unclear whether the board determined the term ‘collection’ was merely descriptive of KEI’s goods and services, the court concluded the entire analysis was deficient. The court therefore reversed the board’s finding that KEI’s mark EARNHARDT COLLECTION for furniture and custom construction of homes was not primarily merely a surname.

This article first appeared in World Trademark Review. For further information please visit www.WorldTrademarkReview.com.