Earnhardt v. Kerry Earnhardt, Inc., No. 16-1939 (Fed. Cir. 2017)Annotate this Case
Kerry is the CEO of KEI, the son of Dale Earnhardt (a professional race car driver who died in 2001), and the stepson of Teresa. KEI's ventures include the EARNHARDT COLLECTION lifestyle brand. KEI licensed that mark to Schumacher for use in connection with custom home design and construction. Teresa, Dale's widow, owns trademark registrations and common law rights containing the mark DALE EARNHARDT in connection with various goods and services and has sold licensed merchandise totaling millions of dollars since 2001. Teresa filed notices of opposition to KEI's trademark application. The Trademark Board found that Teresa did not establish a likelihood of confusion and that EARNHARDT COLLECTION is not primarily merely a surname, 15 U.S.C. 1052(e)(4). The Board found that “collection” is “not the common descriptive or generic name” for KEI’s goods and services. The Federal Circuit vacated. The Board's decision could be understood as finding that “collection” is neither generic nor merely descriptive of KEI’s goods and services, and adding “collection” to “Earnhardt” alters the surname significance of Earnhardt in the mark as a whole; it could be understood as finding that a mark consisting of a surname and a merely descriptive term is registrable as a matter of law if the descriptive term is not generic.