WASHINGTON (CN) — The Federal Circuit ordered the Patent and Trademark Office to reconsider its decision to give a trademark to Dale Earnhardt’s son, over his stepmother’s objections that the mark uses her late husband’s last name.
The dispute is whether Kerry Earnhardt, Earnhardt’s son who also raced professionally for more than a decade, can license a custom home design service under the name Earnhardt Collection.
His stepmother, Teresa Earnhardt, says the mark will cause confusion with merchandise she sells emblazoned with her late husband’s name. Dale Earnhardt Sr. was a legendary NASCAR driver who died at 49 in 2001, in a crash during the final lap of the Daytona 500. Kerry Earnhardt is his father’s elder son, and half brother of Dale Earnhardt Jr., also a racer.
The Trademark Trial and Appeal Board rejected Teresa Earnhardt’s objection to her step-son’s application to register the name, saying there would be no confusion between the marks.
Teresa Earnhardt also claimed that Earnhardt is not trademarkable because it is “primarily merely a surname,” but the board found that Kerry Earnhardt skirted that restriction by adding the word “collection” to the last name, according to the July 27 ruling.
The board cited Federal Circuit precedent in in re Hutchinson Technology Inc.: that a mark whose individual components might not be trademarked might still receive protection when considered as a whole.
Teresa Earnhardt argued on appeal that merely tacking on the word “collection” to her late husband’s surname does not change the primary focus of the trademark.
Writing for the unanimous three-judge panel, Federal Circuit Judge Raymond Chen vacated and remanded, finding that the board was not clear enough in explaining why it granted Kerry Earnhardt’s trademark.
Citing the board’s duties under Hutchinson, Chen wrote: “First, it had to determine whether the additional term was ‘merely descriptive’ of the applicant’s 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. Because here, the board did not adequately explain whether ‘collection’ was merely descriptive of KEI’s goods and services, its analysis of the mark as a whole was likewise deficient.”
Chen concluded: “On remand, the Board should determine (1) whether the term ‘collection’ is merely descriptive of KEI’s furniture and custom home construction services, and (2) the primary significance of the mark as a whole to the purchasing public.”
Teresa was represented by Sam Gunn, with Alston & Bird in Atlanta, who did not immediately respond to a request for comment.
Kerry Earnhardt was represented by Blaine Sanders with Robinson Bradshaw & Hinson in Charlotte, N.C., who did not respond to a request for comment.