Friday, July 28, 2017

CAFC Vacates TTAB's EARNHARDT COLLECTION Decision, Finding Surname Analysis Unclear

The CAFC reversed the Board's February 2016 decision in Teresa H. Earnhardt v. Kerry Earnhardt, Inc., Opposition Nos. 91205331 and 91205338 (February 26, 2016) [TTABlogged here], because it was unclear whether the Board, in dismissing opposer's claim that the mark EARNHARDT COLLECTION was primarily merely a surname, had properly applied the CAFC's decision in In re Hutchinson Technology Inc., 852 F.2d 552, 554 (Fed. Cir. 1988). Teresa H. Earnhardt v. Kerry Earnhardt, Inc., 123 USPQ2d 1411 (Fed. Cir. 2017) [precedential].


Teresa H. Earnhardt, widow of race car driver Dale Earnhardt, opposed the application of Kerry Earhardt, Inc. (KEI) to register the mark EARNHARDT COLLECTION for "furniture" and "custom construction of homes," claiming a likelihood of confusion with her registered mark DALE EARNHARDT for a variety of goods and services, and also alleging that the mark EARNHARDT COLLECTION is primarily merely a surname under Section 2(e)(4). The Board ruled in favor of KEI on both claims. Opposer appealed on only the Section 2(e)(4) ground.

In denying the Section 2(e)(4) claim, the Board explained that the addition of the term "collection" diminished the surname significance of "Earnhardt" in the mark as a whole, because "collection" is not the "common descriptive or generic name" for KEI's goods and services. The Board found the situation similar to that in Hutchinson, where the term "terminology" was deemed not "merely descriptive" of Hutchinson's goods.

The parties agreed that "Earnhardt" is primarily merely a surname but disagreed on whether the mark EARNHARDT COLLECTION, as a whole, is primarily merely a surname. A "key element" in the determination of that issue is the relative distinctiveness of the second term in the mark.

Appellant Theresa Earnhardt contended that the Board made an incomplete assessment of the term "collection" because it looked only at whether the term is generic for KEI's goods and services. Under a proper analysis, she maintained, the addition of the merely descriptive term "collection" does not alter the surname significance of EARNHARDT. KEI agreed that the Board had to determine both genericness and mere descriptiveness and, KEI maintained, it did so.

In Hutchinson, the CAFC reversed the USPTO's conclusion that the mark HUTCHINSON TECHNOLOGY (for electronic components and computer products) was primarily merely a surname because the USPTO incorrectly found that "technology" was merely descriptive of the involved goods and did not alter the surname significance of HUTCHINSON. The CAFC, however, determined that, because many other goods may be included within the broad term "technology," that term did not convey an "immediate idea" of the "ingredients, qualities or characteristics of the goods." Because the USPTO had failed to consider "the effect of the of the inclusion of 'technology' in the mark, as a whole," its findings in Hutchinson were clearly erroneous.

The CAFC agreed with the parties that the TTAB had to determine whether the addition of "collection" to the surname "Earnhardt" altered the primary significance of the mark as a whole. As part of that inquiry, the Board must consider whether "collection" is merely descriptive of KEI's goods and services.

The Board's decision, however, left the CAFC "uncertain" as to its findings on the issue of descriptiveness of "collection." It was "unclear" to the court whether the Board confined its analysis to only a genericness inquiry. Therefore the Board's analysis of the mark as a whole was deficient.

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.

Read comments and post your comment here.

TTABlog comment: The Board said that when the term that is combined with a surname is capable of distinctiveness (i.e., the term is not generic) then the mark as a whole is not primarily merely a surname. The CAFC pointed out that that is a misreading of Hutchinson

Text Copyright John L. Welch 2017.

1 Comments:

At 1:30 PM, Anonymous Anonymous said...

This is a good decision by the CAFC as it preserves the notion that surnames combined with terms that are not flatly generic may still be refused if the additional matter is still incapable or otherwise fails to alter the primary surname significance. The remand allows the possibility that "COLLECTION" could be so highly descriptive, for example, that consumers will still primarily perceive the surname significance. Other types of non-generic matter have been held not to alter such significance (domain info like ".COM", entity info like "CO.", family info like "& SONS", etc.). The CAFC simply found that the TTAB did not clearly perform such analysis.

The CACF also subtly suggests that the TTAB opinion featured logical fallacy if not outright legal error in failing to consider non-generic significance. The TTAB opinion discusses Miller v. Miller and the finding that if additional matter is generic, then the primary surname significance is not diminished. However, the TTAB here made the logical fallacy of denying the antecedent: "Conversely...since the term 'collection' is not generic, the addition of the term to the surname EARNHARDT does diminish the surname significance."

 

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