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Earnhardt v. Kerry Earnhardt, Inc.

United States Court of Appeals, Federal Circuit

July 27, 2017

TERESA H. EARNHARDT, Appellant
v.
KERRY EARNHARDT, INC., Appellee

         Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in Nos. 85/383, 910, 85/391, 456, 91205331, 91205338.

          Uly Samuel Gunn, Alston & Bird LLP, Atlanta, GA, argued for appellant. Also represented by Larry Currell Jones, Charlotte, NC.

          David Blaine Sanders, Robinson Bradshaw & Hin-son, P.A., Charlotte, NC, argued for appellee. Also represented by Cary Baxter Davis, Matthew Felton Tilley.

          Before Wallach, Chen and Hughes, Circuit Judges.

          Chen, Circuit Judge.

          This case arises from Kerry Earnhardt, Inc.'s (KEI) trademark application with the U.S. Patent and Trademark Office (PTO) to register the mark EARNHARDT COLLECTION for "furniture" in class 20 and "custom construction of homes" in class 37. Teresa Earnhardt opposed registration based on an asserted likelihood of confusion with her registered marks in DALE EARNHARDT for goods and services in various classes and her common law rights in EARNHARDT and DALE EARNHARDT acquired by use with various goods and services. She also opposed registration because in her view EARNHARDT COLLECTION is "primarily merely a surname" under Section 2(e)(4) of the Lanham Act. 15 U.S.C. § 1052(e)(4) (2012). The Trademark Trial and Appeal Board (Board) dismissed Teresa Earnhardt's opposition because it found that there was no likelihood of confusion between EARNHARDT COLLECTION and Teresa Earnhardt's marks, and it found that EARNHARDT COLLECTION is not primarily merely a surname. J.A. 38. Teresa Earnhardt appeals the Board's finding that EARNHARDT COLLECTION is not primarily merely a surname. Because it is unclear whether the Board's analysis properly applied our decision in In re Hutchinson Technology Inc., 852 F.2d 552, 554 (Fed. Cir. 1988), we vacate and remand for reconsideration.

         Background

         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. J.A. 11. 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, which KEI acknowledges. J.A. 12. KEI further admits that Teresa Earnhardt has sold "licensed merchandise" totaling millions of dollars since 2001. J.A. 9. 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. J.A. 17-31 (citing In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973)). 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. J.A. 31-38. The Board found that "collection" is "not the common descriptive or generic name" for KEI's goods and services. J.A. 33-35, 37. It also explained that the issues in this case are similar to those raised in Hutchinson, 852 F.2d at 554-55, a case in which we found that the term "technology" was not "merely descriptive" of Hutchinson's goods. J.A. 37 n.32.

         Teresa Earnhardt appeals. 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. Appellant Br. 8, 10; Appellee Br. 15.

          We have jurisdiction under 28 U.S.C. § 1295(a)(4) (2012).

         Discussion

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