Earnhardt v. Kerry Earnhardt, Inc.

             

      In Earnhardt v. Kerry Earnhardt, Inc. (CAFC 2016-1939), Teresa Earnhardt (Ms. Earnhardt) opposed the registration of Kerry Earnhardt, Inc.’s (KEI) trademark applicant to register the mark EARNHARDT COLLECTION for “furniture” with the U.S. Patent and Trademark Office (PTO) based on an asserted likelihood of confusion with her registered marks in DALE EARNHARDT for goods and services and her common law rights in EARNHARDT.  Additionally, Ms. Earnhardt opposed registration because in her view EARNHARDT COLLECTION is “primarily merely a surname” under Section 2(e)(4) of the Lanham Act (the Act).  The Trademark Trial and Appeal Board (Board) dismissed Ms. Earnhardt’s opposition because it found that there was no likelihood of confusion between EARNHARDT COLLECTION and Ms. Earnhardt’s marks, and it found that EARNHARDT COLLECTION is not primarily merely a surname.

                 Ms. Earnhardt appeals the Board’s finding that EARNHARDT COLLECTION is not primarily merely a surname.  The Court of Appeals for the Federal Circuit held that it was unclear whether the Board’s analysis properly applied its decision in In Re Hutchinson Technology Inc. (Fed. Cir. 1988), and the appellate court vacated the Board’s opinion and remanded for reconsideration.  The Board found that EARNHARDT COLLECTION is not primarily merely a surname because the term “collection” diminishes the surname significance of “Earnhardt” in the mark as a whole.  Also, the Board found that “collection” is “not the common descriptive or generic name” for KEI’s goods and services - KEI has broad business ventures.  The Board analogized the issues in this case to issues raised in Hutchinson, a case in which the Court of Appeals for the Federal Circuit found that the term “Technology” was not “merely descriptive” of Hutchinson’s goods - i.e., “technology” did not convey an “immediate idea” of the “ingredients, qualities, or characteristics of the goods” listed in the application.

                 Under the Hutchinson test for surnames, a mark is primarily merely a surname if the surname “is the primary significance of the mark as a whole to the purchasing public.”  A mark comprised of two or more terms must be considered “in its entirety” rather than merely “consider[ing] the mark as two separate parts” - e.g., “the Board may not ‘dissect’ the mark into isolated elements.” See e.g., DuoProSS Meditech Corp.  The Court of Appeals, therefore, states that “[in order] to evaluate whether the commercial impression of a mark that combines a surname with a second term is still primarily merely the surname, the PTO must determine whether the primary significance of the mark as a whole in connection with the recited goods and services is that of the surname.”  And “[a] key element in such an inquiry is determining the relative distinctiveness of the second term in the mark.”  “[T]he Board, [however], may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components.”   The Court of Appeals for the Federal Circuit, however, did not hold that “any mark consisting of a surname and a merely descriptive term is registrable as a trademark as a matter of law, nor did [the court]  find that such a mark is always primarily merely a surname and not registrable as a matter of law” - instead, a court must make the two inquiries: (1) determine whether the additional term was “merely descriptive” of the applicant’s goods and services, and (2) determine whether adding the additional term to the surname altered the primary significance of the mark as a whole to the purchasing public.

                 Here, that the Board failed to adequately determine whether the addition of the term “collection” to the mark EARNHARDT COLLECTION altered the primary significance of the mark as a whole to the purchasing public.  Specifically, the Board, in view of Hutchinson, must determine as a part of this inquiry whether the “collection” is merely descriptive of KEI’s goods and services.  The Court on remand to the Board stated that the Board should determine “(1) whether the term ‘collection’ is merely descriptive of KEI’s furniture and custom home construction services, and (2) the primary significance of the mark as a whole to the purchasing public.”