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appealtrialwillpatenttrademarkcase law

Related Cases

Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 U.S.P.Q.2d 1411

Facts

This case involves a trademark application by Kerry Earnhardt, Inc. (KEI) to register the mark EARNHARDT COLLECTION for furniture and custom home construction services. Teresa Earnhardt opposed the registration, claiming a likelihood of confusion with her registered marks in DALE EARNHARDT and asserting that EARNHARDT COLLECTION is primarily merely a surname under the Lanham Act. The Trademark Trial and Appeal Board (TTAB) dismissed her opposition, finding no likelihood of confusion and that EARNHARDT COLLECTION is not primarily merely a surname. Teresa Earnhardt appealed the TTAB's decision.

Issue

Did the TTAB err in finding that the mark EARNHARDT COLLECTION is not primarily merely a surname under the Lanham Act?

Rule

Under the Lanham Act, a mark may be denied registration if it is primarily merely a surname, as surnames are shared by multiple individuals who may have an interest in using them in business. The primary significance of the mark as a whole to the purchasing public must be evaluated, considering whether the additional term in the mark alters its surname significance. The Patent and Trademark Office (PTO) must assess the mark in its entirety rather than in isolated components.

Analysis

The TTAB found that the term 'collection' diminishes the surname significance of 'Earnhardt' in the mark EARNHARDT COLLECTION. However, the court noted that the TTAB's analysis was unclear regarding whether 'collection' is merely descriptive of KEI's goods and services. The court emphasized that the TTAB must determine if the addition of 'collection' alters the primary significance of the mark to the purchasing public, as established in prior case law.

Conclusion

The court vacated and remanded the TTAB's decision, requiring clarification on whether 'collection' is merely descriptive and how it affects the primary significance of the mark EARNHARDT COLLECTION.

We vacate and remand the Board's finding that KEI's mark EARNHARDT COLLECTION for furniture and custom construction of homes is not primarily merely a surname.

Who won?

The court did not declare a prevailing party as it vacated and remanded the TTAB's decision for further clarification. The outcome of the case will depend on the TTAB's reassessment of the mark EARNHARDT COLLECTION in light of the court's guidance regarding the analysis of surname significance and descriptiveness.

The court did not declare a prevailing party as it vacated and remanded the TTAB's decision for further clarification.

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