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Some issues with trademark when it consists of surname

Kerry Earnhardt is the co-founder and CEO of KEI, the son of Dale Earnhardt (a professional race car driver who passed away in 2001), and the stepson of Teresa Earnhardt. In addition to racing cars professionally from 1992–2006, Kerry Earnhardt has developed other business ventures through KEI, including the EARNHARDT COLLECTION lifestyle brand. KEI has licensed the mark EARNHARDT COLLECTION to Schumacher Homes, Inc. for use in connection with custom home design and construction services.

Teresa Earnhardt is the widow of Dale Earnhardt and the owner of trademark registrations containing the mark DALE EARNHARDT in typed and stylized form and common law rights in the use of the mark DALE EARNHARDT in connection with various goods and services. While KEI’s trademark application was still pending at the PTO, Teresa Earnhardt filed notices of opposition seeking to prevent KEI from registering EARNHARDT COLLECTION based on a likelihood of confusion with Teresa Earnhardt’s marks and based on the position that KEI’s mark is primarily merely a surname.

The Board found that Teresa Earnhardt did not establish a likelihood of confusion between her marks and KEI’s proposed mark. It also found that EARNHARDT COLLECTION is not primarily merely a surname. The Board explained that although the term “Earnhardt” by itself has the “look and feel” of a surname, the addition of the term “collection” diminishes the surname significance of “Earnhardt” in the mark as a whole. The Board found that “collection” is “not the common descriptive or generic name” for KEI’s goods and services.

Teresa Earnhardt appealed. The parties agree that the term “Earnhardt” by itself is primarily merely a surname, but they disagree 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.” Because EARNHARDT COLLECTION is a combination of two terms, the PTO must consider the mark “in its entirety” rather than merely “considering the mark as two separate parts.” Thus, 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.

Teresa Earnhardt contended that the Board made an incomplete assessment of the term “collection” in KEI’s proposed mark, by looking only to whether that term is generic for the goods and services recited in KEI’s application, and failing to consider whether that term is merely descriptive. And therefore, in Teresa Earnhardt’s view, the Board erroneously concluded that the addition of “collection” to the mark sufficiently diminished the surname significance of “Earnhardt” simply because “collection” is not generic for KEI’s goods and services. She concluded that, under the proper analysis, the addition of the merely descriptive “collection” term does not alter the primary significance of the mark as primarily merely a surname, when the mark is used in connection with KEI’s furniture or custom home construction services.

KEI agreed that the Board had to determine whether “collection” is either generic or merely descriptive of KEI’s goods and services. KEI responded, however, that the PTO properly found that “collection” is neither generic nor merely descriptive. Both parties focused on Hutchinson, as the precedent that governs this case.

In Hutchinson, the PTO concluded that the mark HUTCHINSON TECHNOLOGY was primarily merely a surname because Hutchinson was a surname and the applicant conceded that “technology” described many goods similar to those listed in the application (which included electronic components and computer products). The PTO found that the term “technology” was “not the common descriptive or generic name” for Hutchinson’s goods, but “technology” was merely descriptive of those goods based on the “conceded common usage of ‘technology’ in connection with goods of that type.” The PTO thus found that “the inclusion of ‘technology’ in the mark as a whole did not alter the surname significance of ‘Hutchinson’ or create the impression that HUTCHINSON TECHNOLOGY was not primarily merely a surname.”

But the court reversed because (1) the PTO did not properly consider the mark as a whole, and (2) it incorrectly found that “technology” was “merely descriptive” of the recited goods. The court determined that “technology” did not convey an “immediate idea” of the “ingredients, qualities, or characteristics of the goods” listed in the application, and therefore “held that the PTO clearly erred by finding that the term ‘technology’ is merely descriptive of Hutchinson’s goods.” The court further held that “the PTO’s findings on the effect of the inclusion of ‘technology’ in the mark, as a whole, also were clearly erroneous” because “the PTO never considered what the purchasing public would think when confronted with the mark as a whole.”

The Board relied heavily on Hutchinson for its analysis, but in Hutchinson, the court did not find 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, the PTO had to make two inquiries. First, it had to determine whether the additional term was “merely descriptive” of the applicant’s goods and services, and second, it had to determine whether adding the additional term to the surname altered the primary significance of the mark as a whole to the purchasing public. The Board did not adequately explain whether “collection” was merely descriptive of KEI’s goods and services, its analysis of the mark as a whole was likewise deficient.

Under these circumstances, the court vacated and remanded this case to the Board to clarify its findings and analysis, consistent with court’s explanation of Hutchinson. On remand, 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.