Earnhardt trademark case

In the outcome, the CAFC vacated a decision of the Trademark Board:


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.



An issue


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. “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.

(...)

Here, we agree with the parties that the Board had to
determine whether the addition of the term “collection” to
the mark EARNHARDT COLLECTION altered the
primary significance of the mark as a whole to the purchasing
public, and that, in view of Hutchinson, part of
this inquiry includes determining whether “collection” is
merely descriptive of KEI’s goods and services. But we
cannot address the parties’ arguments as to whether
“collection” is merely descriptive of KEI’s goods and
services because the Board’s opinion leaves us uncertain
as to its findings on this issue. See, e.g., Pers. Web Techs.,
LLC v. Apple, Inc., 848 F.3d 987, 992 (Fed. Cir. 2017)
(describing the “basic principles of administrative law”
governing the PTAB’s obligation to explain itself).