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After CAFC’s Decision In Earnhardt, TTAB Must Take Greater Care In Surname Determinations

The United States Court of Appeals for the Federal Circuit vacated and remanded the Board’s findings in Teresa H. Earnhardt v. Kerry Earnhardt, Inc., Opposition Nos. 91205331 and 91205338 (February 26, 2016). The Applicant sought to register the mark EARNHARDT COLLECTION for furniture in class 20 and custom construction of homes in class 37. A third party opposed the registration on grounds of likelihood of confusion and priority and on the ground that the proposed mark EARNHARDT COLLECTION is primarily merely a surname. The Opposer’s mark is DALE EARNHARDT for a variety of goods and services. The Applicant and Opposer agreed that the term Earnhardt alone is primarily merely a surname. However, they disagree about whether adding the term “Collection” to “Earnhardt” changes the commercial impression and diminishes the surname impression.

The United States Patent & Trademark Office will refuse a trademark on the Principal Register if the primary significance of the mark as a whole is a surname. See our web page entitled, Can You Use Your Name As A Trademark?, to review the test to determine if a mark is primarily merely a surname. Since the subject mark has two terms, the trademark must be evaluated in its entirety and not as two separate parts.

In addition, the mark must be considered in relationship to the goods and services that are identified in the trademark application. One important part of the analysis is the relative distinctiveness of the second term of the mark. This can be evaluated by classifying the second term as, fanciful, arbitrary, suggestive, descriptive or generic. Where the mark falls on this continuum is a question of fact. One question to ask in this analysis is does the mark as a whole convey a distinctive source identifying impression rather than conveying information about some aspect of the goods or services.

The Appellant argued that the Board’s evaluation was incomplete because it assessed only whether the term “collection” was generic for the goods and services identified in the application and failed to evaluate whether the term “collection” was merely descriptive for the goods and services (furniture and custom home construction). The Appellant further argues that the term “collection” is merely descriptive and thus by adding the term to a surname, it does not diminish the meaning of the surname significance.

The parties both used the precedent of In re Hutchinson Technology, Inc., 7 USPQ2d 1490 (Fed. Cir. 1988). However, they had different interpretations of the case holding. In that case, the Board held that HUTCHINSON TECHNOLOGY was primarily merely a surname because Hutchinson was a surname and the applicant admitted that the term “technology” described many products similar to the ones listed in his trademark application. Some of the goods included electronic components, circuits, bands for disc drives, and other components for disc drives. The Federal Circuit reversed stating that the Board made two errors.

The fatal error was that it considered the mark in two separate parts and not in its entirety. The Board didn’t consider what the purchasing public would think when confronted with the mark as a whole. The second error was that it relied on the applicant’s concession that “technology” is used on many goods similar to those identified in the trademark application. This does not mean that the term is merely descriptive of the cited goods only that it may be a weak mark for those types of goods. It appears that the Board may have also contradicted its finding when it stated that the term “technology” was not the common descriptive name or generic name for the applicant’s goods. The Federal Circuit argued that “technology” is a broad term that would not immediately convey the thought of Applicant’s goods. The Court hearing In re Hutchinson Technology, Inc, reversed the refusal to register the mark.

In the case at bar, the Federal Circuit could not determine if the Board only reviewed the mark for a generic evaluation or whether the Board also conducted a merely descriptiveness review. Thus, the Board’s analysis is deficient. The Board must make two inquiries under the circumstances: (1) is the additional term, “collection” merely descriptive of the Applicant’s goods; and (2) does adding the additional term, “collection” alter the primary significance of the trademark as a whole to the purchasing public. The Federal Circuit vacated the decision and remanded it to the Board to conduct the two-step inquiry consistent with the holding In re Hutchinson Technology, Inc. If you have questions regarding whether a mark will be perceived as primarily merely a surname, please do not hesitate to contact our office for a courtesy consultation.