Federal Circuit clarifies surname test for trademarks

May 01, 2018
Patterson Thuente IP

What’s in a name? The answer to that question might determine whether a mark that includes someone’s surname is eligible for trademark registration. The Federal Circuit Court of Appeals has shed some light on when a mark with a surname is—and isn’t—registrable as a trademark.


The race to the courthouse

Kerry Earnhardt is a son of race driver Dale Earnhardt and co-founder and CEO of Kerry Earnhardt, Inc. (KEI). Teresa Earnhardt is Dale’s widow and owns trademark registrations containing the mark “Dale Earnhardt.” Teresa opposed KEI’s trademark application for the mark “EARNHARDT COLLECTION.”

The Trademark Trial and Appeal Board (TTAB) dismissed her opposition. Teresa appealed to the Federal Circuit.

The Court of Appeals’ lap

The U.S. Patent and Trademark Office (USPTO) can deny registration for a mark that’s “primarily merely a surname.” The reasoning behind refusing to register a mark that is a surname is that a surname is shared by multiple people who may have an interest in using it in business. When determining whether a mark is primarily merely a surname, the primary significance of the mark must be considered as a whole.

When a mark combines two terms, the USPTO must consider the mark in its entirety, not as two separate parts. To evaluate the commercial impression of a mark that combines a surname and another term, the USPTO must determine whether the surname is the primary significance of the mark as a whole in connection with the designated goods and services.

A key element in this inquiry is determining the relative distinctiveness of the second term. If that term is “generic” (meaning it refers to a class of goods or services) or merely “descriptive” of the goods or services, it likely isn’t sufficiently distinctive to diminish the surname significance.

In the case at hand, Teresa argued that the TTAB had considered only whether “collection” was generic for KEI’s goods and services. The TTAB determined that “collection” wasn’t a generic term for the goods filed for in the application (furniture). Generic terms are a separate category from descriptive marks. The Federal Circuit ruled that the TTAB also should have considered whether “collection” was descriptive. It was unclear from the TTAB’s written opinion whether it had done so.

Back to the starting line

Because of this lack of clarity, the Federal Circuit returned the case to the TTAB for reconsideration. It specifically directed the board to determine 1) whether the term “collection” is merely descriptive of KEI’s furniture and construction services and 2) the primary significance of the mark as a whole to the purchasing public. 

Earnhardt v. Kerry Earnhardt, Inc., No. 16-1939, July 27, 2017, Fed. Cir.


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