TERESA H. EARNHARDT, Appellant
KERRY EARNHARDT, INC., Appellee
from the United States Patent and Trademark Office, Trademark
Trial and Appeal Board in Nos. 85/383, 910, 85/391, 456,
Samuel Gunn, Alston & Bird LLP, Atlanta, GA, argued for
appellant. Also represented by Larry Currell Jones,
Blaine Sanders, Robinson Bradshaw & Hin-son, P.A.,
Charlotte, NC, argued for appellee. Also represented by Cary
Baxter Davis, Matthew Felton Tilley.
Wallach, Chen and Hughes, Circuit Judges.
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.
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
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.
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.
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.
have jurisdiction under 28 U.S.C. § 1295(a)(4) (2012).