Earnhardt Dispute Goes Back to the Trademark Office

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Jeffrey Johnson is a legal writer with a focus on personal injury. He has worked on personal injury and sovereign immunity litigation in addition to experience in family, estate, and criminal law. He earned a J.D. from the University of Baltimore and has worked in legal offices and non-profits in Maryland, Texas, and North Carolina. He has also earned an MFA in screenwriting from Chapman Univer...

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UPDATED: Jul 16, 2021

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Auto Race TrackA family dispute involving the right to use the name “Earnhardt” has been sent back to the US Patent and Trademark Office (USPTO) for resolution.

Dale Earnhardt, who died in 2001 in a collision during the final lap of the Daytona 500, was a famous race driver and one of the first men inaugurated into the Nascar Hall of Fame.

Teresa Earnhardt is his widow and holds the rights to the trademark DALE EARNHARDT. The mark is used on merchandise that’s generated millions of dollars.

Kerry Earnhardt, a former racecar driver himself, is Dale Earnhardt’s son and Teresa Earnhardt’s step-son.  Kerry is the co-founder and CEO of a lifestyle brand company called KEI.

According to Sporting News, Kerry was fired from Dale Earnhardt Inc. in 2011 and “does not have a relationship with Teresa.”

Earnhardt Collection

KEI filed a trademark application with the USPTO seeking to register the mark EARNHARDT COLLECTION for “furniture” and “custom construction of homes.”

Teresa Earnhardt opposed the registration, on the grounds that the proposed mark EARNHARDT COLLECTION was “primarily merely a surname.”

The Trademark Trial and Appeal Board (TTAB) dismissed her opposition, finding that the mark wasn’t primarily a surname and that there was no likelihood of confusion between EARNHARDT COLLECTION and the DALE EARNHARDT mark.

Teresa Earnhardt appealed, and the case reached the Federal Circuit, which handles patent and trademark matters.


As the Federal Circuit court noted, a trademark 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.

One basis for denying a mark is that it 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.”

“Merely a Surname”

A mark is “primarily merely a surname” if the surname “is the primary significance of the mark as a whole to the purchasing public.”

Because EARNHARDT COLLECTION is a combination of a surname and another word, the USPTO must consider the mark as two separate parts.

As the court said,

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. A key element in such an inquiry is determining the relative distinctiveness of the second term in the mark.

The court found that the TTAB had failed to properly answer the following questions:

  • Whether “collection” was merely descriptive of KEI’s furniture and construction business; and
  • the primary significance of the mark as a whole to consumers.

As with many trademark cases, this one turns on the factual issue of how a mark is perceived by the public. That’s normally established through studies and expert testimony presented by the parties.

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