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.