August, 8th, 2017

By Christopher J. Stankus

On July 27, 2017, the Federal Circuit vacated and remanded for reconsideration the TTAB’s finding that the mark EARNHARDT COLLECTION is not primarily merely a surname because it was unclear whether the TTAB’s analysis properly applied its In re Hutchinson surname test.

In Earnhardt v. Kerry Earnhardt, Inc. (2016-1939), Kerry Earnhardt, Inc. (KEI) sought registration for “EARNHARDT COLLECTION” for furniture and custom construction of homes. Kerry Earnhardt is the son of deceased NASCAR legend Dale Earnhardt and the stepson of the appellant, Teresa Earnhardt. Teresa Earnhardt is the widow of Dale Earnhardt and owner of the trademark DALE EARNHARDT for various goods and services. Teresa Earnhardt opposed registration based on an asserted likelihood of confusion with her mark, DALE EARNHARDT, and argued that the mark EARNHARDT COLLECTION is primarily merely a surname under Section 2(e)(4) of the Lanham Act.

The TTAB found that Teresa Earnhardt did not establish a likelihood of confusion between the marks, and that the mark EARNHARDT COLLECTION is not primarily merely a surname. On appeal, the parties agreed that the term “Earnhardt” by itself is primarily merely a surname; however, the parties disagreed on whether the mark EARNHARDT COLLECTION as a whole is primarily merely a surname.

A mark is primarily merely a surname if the surname “is the primary significance of the mark as a whole to the purchasing public.” In re Hutchinson Tech. Inc., 852 F.2d 552, 554 (Fed. Cir. 1988). Here, because the mark EARNHARDT COLLECTION is a combination of two terms, the mark must be considered as a whole to determine whether the primary significance of the mark to the purchasing public is that of the surname.

The Federal Circuit held that the PTO must make two inquiries: (1) whether the additional term, COLLECTION, was merely descriptive of the KEI’s goods and services, and (2) whether adding COLLECTION to the surname altered the primary significance of the mark as a whole to the purchasing public.

The Federal Circuit reasoned that the TTAB’s opinion was unclear whether it engaged in a merely descriptive inquiry for the term “collection” or if it improperly constricted its analysis to only a genericness inquiry.

On the one hand, the Board’s decision could be understood as finding that “collection” is neither generic nor merely descriptive of KEI’s goods and services, and adding “collection” to “Earnhardt” alters the surname of Earnhardt in the mark as a whole, such that the purchasing public would not consider the mark as a whole to be primarily a merely surname….On the other hand, the Board’s decision could be understood as finding that a mark consisting of a surname and a merely descriptive term is registrable as a trademark as a matter of law so long as the descriptive term is not generic.

Therefore, the Federal Circuit vacated and remanded for the TTAB to clarify its findings and analysis, consistent with its explanation of Hutchinson.

Practice Points

The question of whether a term is primarily merely a surname depends on the primary significance to the purchasing public. Take into consideration the following five factors when registering a surname to assess the mark’s primary significance:

  1. whether the surname is rare;
  2. whether the term is the surname of anyone connected with the applicant;
  3. whether the term has any recognized meaning other than as a surname;
  4. whether it has the “look and feel” of a surname; and
  5. whether the stylization of lettering is distinctive enough to create a separate commercial impression.

Further, adding identifiers to the surname can distinguish its primary significance apart from the surname, and ensure the PTO considers the mark in its entirety rather than analyzing its individual elements separately.

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