What’s In A Name?August 2, 2017

Theresa Earnhardt, widow to professional race car driver Dale Earnhardt and step-mother to Kerry Earnhardt, appealed the Trademark Trial and Appeal Board’s decision that her stepson’s mark, EARNHARDT COLLECTION, was notas a whole primarily a surname.

Theresa Earnhardt is the owner of trademark registrations and common law rights in the use of the mark DALE EARNHARDT. Kerry Earnhardt, as CEO of Kerry Earnhardt, Inc., attempted to apply for a trademark on “EARNHARDT COLLECTION,” but Theresa opposed registration for various reasons including that the mark was “primarily merely a surname” under Section 2(e)(4) of the Lanham Act. 15 U.S.C. § 1052(e)(4) (2012). Under this section, registration is denied to marks that are “primarily merely a surname” because many people can share the same surname, and if it were allowed, they would be prevented from using it in business. In re Etablissements Darty et Fils, 759 F2d. 15, 17 (Fed. Cir. 1985); U.S.C. § 1052(e)(4). To identify whether a mark is primarily merely a surname the significance of the markas a whole to the purchasing public must be determined. In re Hutchinson Technology Inc., 852 F.2d. 552, 554 (Fed. Cir. 1988).

The Federal Circuit found that it was unclear as to whether the Board carried out a “merely descriptive” analysis to the mark as a whole. The Board included language that suggests the term “collection” is not the “common or descriptive name” for KEI’s furniture and custom home construction services. However, it remained indefinite as to whether the Board was also analyzing the significance of the mark “EARNHARDT COLLECTION” as a whole to the purchasing public. The decision was therefore vacated and remanded in light of the opinion.

Read the Full Opinion Here


For more information or if you have questions, please contact one of our  MVS IP attorneys or call us at (515) 288-3667.


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