Earnhardt v. Kerry Earnhardt, Inc.

• Decision Date: 27 July 2017
• Docket Number: 2016-1939
• Citation: 864 F.3d 1374
• Parties: Teresa H. EARNHARDT, Appellant v. KERRY EARNHARDT, INC., Appellee
• Court: U.S. Court of Appeals — Federal Circuit

864 F.3d 1374

Teresa H. EARNHARDT, Appellant

v.KERRY EARNHARDT, INC., Appellee

2016-1939

United States Court of Appeals, Federal Circuit.

Decided: July 27, 2017

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

David Blaine Sanders , Robinson Bradshaw & Hinson, 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 D eNemours & 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

I.

"The basic goal of the [Lanham] Act ... [i]s ‘the protection of trademarks, securing to the owner the good will of his business and protecting the public against spurious and falsely marked goods.’ " DuPont D eNemours , 476 F.2d at 1360 (quoting S. Rep. No. 1333, 79th Cong., 2d Sess. 1 (1946)). A mark is "any word, name, symbol, or device or any combination thereof used by any person to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." Two Pesos, Inc. v. Taco Cabana, Inc. , 505 U.S. 763, 767–68, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992) (internal quotation marks omitted). "In order to be registered, a mark must be capable of distinguishing the applicant's goods from those of others." Id. (citing 15 U.S.C. § 1052 ). One ground for denying registration of a mark is if the mark is "primarily merely a surname," under the notion that a surname is "shared by more than one individual, each of whom may have an interest in using his surname in business." In re Etablissements Darty et Fils , 759 F.2d 15, 17 (Fed. Cir. 1985) ; 15 U.S.C. § 1052(e)(4).

A mark is primarily merely a surname if the surname "is the primary significance of the mark as a whole to the purchasing public." Hutchinson , 852 F.2d at 554. Because EARNHARDT COLLECTION is a combination of two terms, the PTO must consider the mark "in its entirety" rather than merely "consider[ing] the mark as two separate parts." Id. Thus, to evaluate whether the commercial impression of a mark that combines a surname with a second term is still primarily merely the surname, the PTO must determine whether the primary significance of the mark as a whole in connection with the recited goods and services is that of the surname. Id. A key element in such an inquiry is determining the relative distinctiveness of the second term in the mark. Id. at 554–55.

"Marks are often classified in categories of generally increasing distinctiveness ... they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful." Two Pesos , 505 U.S. at 768, 112 S.Ct. 2753. "The latter three categories of marks, because their intrinsic nature serves to identify a particular source of a product, are deemed inherently distinctive and are entitled to protection." Id.

"In contrast, generic marks—those that refe[r] to the genus of which the particular product is a species—are not registrable as trademarks." Id. (internal citations and quotation marks omitted). "A generic term is the common descriptive name of a class of goods or services." H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc. , 782 F.2d 987, 989 (Fed. Cir. 1986) ; accord In re Cordua Rests., Inc. , 823 F.3d 594, 599 (Fed. Cir. 2016) (quoting Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc. , 786 F.3d 960, 965 (Fed. Cir. 2015) ). "The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." H. Marvin Ginn Corp. , 782 F.2d at 989–90.

"Marks which are merely descriptive of a product are not inherently distinctive," and "a descriptive mark that otherwise could not be registered under the [Lanham] Act may be registered if it ‘has become distinctive of the applicant's goods in commerce.’ " Two Pesos , 505 U.S. at 769, 112 S.Ct. 2753 (quoting 15 U.S.C. § 1052(f) ). To distinguish marks that are merely descriptive from ones that are suggestive, we have explained:

The line between a mark that is merely descriptive and may not be registered absent secondary meaning, and one that is suggestive and may be registered, is that a suggestive mark requires imagination, thought and perception to reach a conclusion as to the nature of the goods, while a merely descriptive mark forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.

DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd. , 695 F.3d 1247, 1251–52 (Fed. Cir. 2012) (internal citations and quotation marks omitted). For descriptiveness, "[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods and services are will understand the mark to convey information about them." Id. at 1254 (quoting In re Tower Tech, Inc. , 64 U.S.P.Q.2d 1314, 1316–17 (T.T.A.B. 2002) ).

"The [PTO's] placement of a mark on the fanciful-suggestive-descriptive-generic continuum is a question of fact, which this court reviews for substantial evidence." In re Oppedahl & Larson LLP , 373 F.3d 1171, 1173 (Fed. Cir. 2004). "Substantial evidence means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." In re Bayer Aktiengesellschaft , 488 F.3d 960, 964 (Fed. Cir. 2007) (quoting Consol. Edison Co. v. N.L.R.B. , 305 U.S. 197, 59 S.Ct. 206, 83 L.Ed. 126 (1938) ) (internal quotation marks omitted).

In addition, when determining whether a mark with multiple components is registrable, "the Board may not ‘dissect’ the mark into isolated elements." DuoProSS Meditech Corp. , 695 F.3d at 1252. "[T]he Board may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components." In re Oppedahl & Larson , 373 F.3d at 1174. To perform its analysis, the Board "must also determine whether the mark as a whole, i.e., the combination of the individual parts, conveys any distinctive source-identifying impression contrary to the descriptiveness of the individual parts." Id. at 1174–75.

II.

Teresa Earnhardt contends that the Board made an...