{"id":1402,"date":"2017-11-21T08:51:10","date_gmt":"2017-11-21T08:51:10","guid":{"rendered":"http:\/\/www.dekuzu.com\/en\/?p=1402"},"modified":"2017-11-21T08:51:10","modified_gmt":"2017-11-21T08:51:10","slug":"some-issues-with-trademark-when-it-consists-of-surname","status":"publish","type":"post","link":"https:\/\/www.dekuzu.com\/en\/2017\/11\/some-issues-with-trademark-when-it-consists-of-surname.html","title":{"rendered":"Some issues with trademark when it consists of surname"},"content":{"rendered":"

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\u20132006, 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.<\/span><\/p>\n

<\/span><\/p>\n

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\u2019s 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\u2019s marks and based on the position that KEI\u2019s mark is primarily merely a surname.<\/span><\/p>\n

The Board found that Teresa Earnhardt did not establish a likelihood of confusion between her marks and KEI\u2019s proposed mark. It also found that EARNHARDT COLLECTION is not primarily merely a surname. The Board explained that although the term \u201cEarnhardt\u201d by itself has the \u201clook and feel\u201d of a surname, the addition of the term \u201ccollection\u201d diminishes the surname significance of \u201cEarnhardt\u201d in the mark as a whole. The Board found that \u201ccollection\u201d is \u201cnot the common descriptive or generic name\u201d for KEI\u2019s goods and services.<\/span><\/p>\n

Teresa Earnhardt appealed. The parties agree that the term \u201cEarnhardt\u201d by itself is primarily merely a surname, but they disagree on whether the mark EARNHARDT COLLECTION as a whole is primarily merely a surname.<\/span><\/p>\n

A mark is primarily merely a surname if the surname \u201cis the primary significance of the mark as a whole to the purchasing public.\u201d Because EARNHARDT COLLECTION is a combination of two terms, the PTO must consider the mark \u201cin its entirety\u201d rather than merely \u201cconsidering the mark as two separate parts.\u201d 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.<\/span><\/p>\n

Teresa Earnhardt contended that the Board made an incomplete assessment of the term \u201ccollection\u201d in KEI\u2019s proposed mark, by looking only to whether that term is generic for the goods and services recited in KEI\u2019s application, and failing to consider whether that term is merely descriptive. And therefore, in Teresa Earnhardt\u2019s view, the Board erroneously concluded that the addition of \u201ccollection\u201d to the mark sufficiently diminished the surname significance of \u201cEarnhardt\u201d simply because \u201ccollection\u201d is not generic for KEI\u2019s goods and services. She concluded that, under the proper analysis, the addition of the merely descriptive \u201ccollection\u201d term does not alter the primary significance of the mark as primarily merely a surname, when the mark is used in connection with KEI\u2019s furniture or custom home construction services.<\/span><\/p>\n

KEI agreed that the Board had to determine whether \u201ccollection\u201d is either generic or merely descriptive of KEI\u2019s goods and services. KEI responded, however, that the PTO properly found that \u201ccollection\u201d is neither generic nor merely descriptive. Both parties focused on Hutchinson, as the precedent that governs this case.<\/span><\/p>\n

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 \u201ctechnology\u201d described many goods similar to those listed in the application (which included electronic components and computer products). The PTO found that the term \u201ctechnology\u201d was \u201cnot the common descriptive or generic name\u201d for Hutchinson\u2019s goods, but \u201ctechnology\u201d was merely descriptive of those goods based on the \u201cconceded common usage of \u2018technology\u2019 in connection with goods of that type.\u201d The PTO thus found that \u201cthe inclusion of \u2018technology\u2019 in the mark as a whole did not alter the surname significance of \u2018Hutchinson\u2019 or create the impression that HUTCHINSON TECHNOLOGY was not primarily merely a surname.\u201d<\/span><\/p>\n

But the court reversed because (1) the PTO did not properly consider the mark as a whole, and (2) it incorrectly found that \u201ctechnology\u201d was \u201cmerely descriptive\u201d of the recited goods. The court determined that \u201ctechnology\u201d did not convey an \u201cimmediate idea\u201d of the \u201cingredients, qualities, or characteristics of the goods\u201d listed in the application, and therefore \u201cheld that the PTO clearly erred by finding that the term \u2018technology\u2019 is merely descriptive of Hutchinson\u2019s goods.\u201d The court further held that \u201cthe PTO\u2019s findings on the effect of the inclusion of \u2018technology\u2019 in the mark, as a whole, also were clearly erroneous\u201d because \u201cthe PTO never considered what the purchasing public would think when confronted with the mark as a whole.\u201d<\/span><\/p>\n

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.<\/span><\/p>\n

Instead, the PTO had to make two inquiries. First, it had to determine whether the additional term was \u201cmerely descriptive\u201d of the applicant\u2019s 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 \u201ccollection\u201d was merely descriptive of KEI\u2019s goods and services, its analysis of the mark as a whole was likewise deficient.<\/span><\/p>\n

Under these circumstances, the court vacated and remanded<\/a> this case to the Board to clarify its findings and analysis, consistent with court\u2019s explanation of Hutchinson. On remand, the Board should determine (1) whether the term \u201ccollection\u201d is merely descriptive of KEI\u2019s furniture and custom home construction services, and (2) the primary significance of the mark as a whole to the purchasing public.<\/span><\/p>\n","protected":false},"excerpt":{"rendered":"

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\u20132006, Kerry Earnhardt<\/p>\n

Continue readingSome issues with trademark when it consists of surname<\/span><\/a><\/div>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[14,6,17,15,1],"tags":[],"class_list":["post-1402","post","type-post","status-publish","format-standard","hentry","category-competition","category-intellectual-property","category-litigation","category-trademark","category-uncategorised","entry"],"_links":{"self":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/1402","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/comments?post=1402"}],"version-history":[{"count":0,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/1402\/revisions"}],"wp:attachment":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/media?parent=1402"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/categories?post=1402"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/tags?post=1402"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}