Teresa H. Earnhardt v. Kerry Earnhardt, Inc.

United States Court of Appeals
for the Federal Circuit
______________________
TERESA H. EARNHARDT,
Appellant
v.
KERRY EARNHARDT, INC.,
Appellee
______________________
2016-1939
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Nos.
85/383,910, 85/391,456, 91205331, 91205338.
______________________
Decided: July 27, 2017
______________________
U LY SAMUEL G UNN, Alston & Bird LLP, Atlanta, GA,
argued for appellant. Also represented by L ARRY CURRELL
J ONES , Charlotte, NC.
D AVID BLAINE SANDERS , Robinson Bradshaw & Hin-
son, P.A., Charlotte, NC, argued for appellee. Also repre-
sented by CARY BAXTER D AVIS , MATTHEW F ELTON T ILLEY .
______________________
Before WALLACH , CHEN and HUGHES , Circuit Judges.
CHEN, Circuit Judge.

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EARNHARDT v. KERRY EARNHARDT, INC. 2
This case arises from Kerry Earnhardt, Inc.’s (KEI)
trademark application with the U.S. Patent and Trade-
mark 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 primari-
ly 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.
BACKGROUND
Kerry Earnhardt is the co-founder and CEO of KEI,
the son of Dale Earnhardt (a professional race car driver
who passed away in 2001), and the stepson of Teresa
Earnhardt. J.A. 11. In addition to racing cars profes-
sionally from 1992–2006, Kerry Earnhardt has developed
other business ventures through KEI, including the
EARNHARDT COLLECTION lifestyle brand. KEI has
licensed the mark EARNHARDT COLLECTION to
Schumacher Homes, Inc. for use in connection with cus-
tom home design and construction services.

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EARNHARDT v. KERRY EARNHARDT, INC. 3
Teresa Earnhardt is the widow of Dale Earnhardt and
the owner of trademark registrations containing the mark
DALE EARNHARDT in typed and stylized form and
common law rights in the use of the mark DALE
EARNHARDT in connection with various goods and
services, which KEI acknowledges. J.A. 12. KEI further
admits that Teresa Earnhardt has sold “licensed mer-
chandise” totaling millions of dollars since 2001. J.A. 9.
While KEI’s trademark application was still pending at
the PTO, Teresa Earnhardt filed notices of opposition
seeking to prevent KEI from registering EARNHARDT
COLLECTION based on a likelihood of confusion with
Teresa Earnhardt’s marks and based on the position that
KEI’s mark is primarily merely a surname.
The Board found that Teresa Earnhardt did not estab-
lish a likelihood of confusion between her marks and
KEI’s proposed mark. J.A. 17–31 (citing In re E.I. DuPont
de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973)). It also
found that EARNHARDT COLLECTION is not primarily
merely a surname. The Board explained that although
the term “Earnhardt” by itself has the “look and feel” of a
surname, the addition of the term “collection” diminishes
the surname significance of “Earnhardt” in the mark as a
whole. J.A. 31–38. The Board found that “collection” is
“not the common descriptive or generic name” for KEI’s
goods and services. J.A. 33–35, 37. It also explained that
the issues in this case are similar to those raised in
Hutchinson, 852 F.2d at 554–55, a case in which we found
that the term “technology” was not “merely descriptive” of
Hutchinson’s goods. J.A. 37 n.32.
Teresa Earnhardt appeals. The parties agree that the
term “Earnhardt” by itself is primarily merely a surname,
but they disagree on whether the mark EARNHARDT
COLLECTION as a whole is primarily merely a surname.
Appellant Br. 8, 10; Appellee Br. 15.

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EARNHARDT v. KERRY EARNHARDT, INC. 4
We have jurisdiction under 28 U.S.C. § 1295(a)(4)
(2012).
D ISCUSSION
I.
“The basic goal of the [Lanham] Act . . . [i]s ‘the pro-
tection of trademarks, securing to the owner the good will
of his business and protecting the public against spurious
and falsely marked goods.’” DuPont de Nemours, 476
F.2d at 1360 (quoting S. Rep. No. 1333, 79th Cong., 2d
Sess. 1 (1946)). A mark 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.” Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 767–68 (1992) (internal quotation marks
omitted). “In order to be registered, a mark must be
capable of distinguishing the applicant’s goods from those
of others.” Id. (citing 15 U.S.C. § 1052). One ground for
denying registration of a mark is if the mark 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.” In re
Etablissements Darty et Fils, 759 F.2d 15, 17 (Fed. Cir.
1985); 15 U.S.C. § 1052(e)(4).
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. Be-
cause EARNHARDT COLLECTION is a combination of
two terms, the PTO must consider the mark “in its entire-
ty” rather than merely “consider[ing] the mark as two
separate parts.” Id. Thus, to evaluate whether the com-
mercial 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 signifi-
cance of the mark as a whole in connection with the

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EARNHARDT v. KERRY EARNHARDT, INC. 5
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 protec-
tion.” Id.
“In contrast, generic marks—those that refe[r] to the
genus of which the particular product is a species—are
not registrable as trademarks.” Id. (internal citations and
quotation marks omitted). “A generic term is the common
descriptive name of a class of goods or services.” H.
Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782
F.2d 987, 989 (Fed. Cir. 1986); accord In re Cordua Rests.,
Inc., 823 F.3d 594, 599 (Fed. Cir. 2016) (quoting Princeton
Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960,
965 (Fed. Cir. 2015)). “The critical issue in genericness
cases is whether members of the relevant public primarily
use or understand the term sought to be protected to refer
to the genus of goods or services in question.” H. Marvin
Ginn Corp., 782 F.2d at 989–90.
“Marks which are merely descriptive of a product are
not inherently distinctive,” and “a descriptive mark that
otherwise could not be registered under the [Lanham] Act
may be registered if it ‘has become distinctive of the
applicant’s goods in commerce.’” Two Pesos, 505 U.S. at
769 (quoting 15 U.S.C. § 1052(f)). To distinguish marks
that are merely descriptive from ones that are suggestive,
we have explained:
The line between a mark that is merely descrip-
tive and may not be registered absent secondary

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EARNHARDT v. KERRY EARNHARDT, INC. 6
meaning, and one that is suggestive and may be
registered, is that a suggestive mark requires im-
agination, thought and perception to reach a con-
clusion as to the nature of the goods, while a
merely descriptive mark forthwith conveys an
immediate idea of the ingredients, qualities or
characteristics of the goods.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd.,
695 F.3d 1247, 1251–52 (Fed. Cir. 2012) (internal cita-
tions and quotation marks omitted). For descriptiveness,
“[t]he question is not whether someone presented with
only the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what
the goods and services are will understand the mark to
convey information about them.” Id. at 1254 (quoting In
re Tower Tech, Inc., 64 U.S.P.Q.2d 1314, 1316–17
(T.T.A.B. 2002)).
“The [PTO’s] placement of a mark on the fanciful-
suggestive-descriptive-generic continuum is a question of
fact, which this court reviews for substantial evidence.”
In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173 (Fed.
Cir. 2004). “Substantial evidence means such relevant
evidence as a reasonable mind might accept as adequate
to support a conclusion.” In re Bayer Aktiengesellschaft,
488 F.3d 960, 964 (Fed. Cir. 2007) (quoting Consol. Edison
Co. v. N.L.R.B., 305 U.S. 197 (1938)) (internal quotation
marks omitted).
In addition, when determining whether a mark with
multiple components is registrable, “the Board may not
‘dissect’ the mark into isolated elements.” DuoProSS
Meditech Corp., 695 F.3d at 1252. “[T]he Board may
weigh the individual components of the mark to deter-
mine the overall impression or the descriptiveness of the
mark and its various components.” In re Oppedahl &
Larson, 373 F.3d at 1174. To perform its analysis, the
Board “must also determine whether the mark as a whole,

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EARNHARDT v. KERRY EARNHARDT, INC. 7
i.e., the combination of the individual parts, conveys any
distinctive source-identifying impression contrary to the
descriptiveness of the individual parts.” Id. at 1174–75.
II.
Teresa Earnhardt contends that the Board made an
incomplete assessment of the term “collection” in KEI’s
proposed mark, by looking only to whether that term is
generic for the goods and services recited in KEI’s applica-
tion, and failing to consider whether that term is merely
descriptive. And therefore, in Teresa Earnhardt’s view,
the Board erroneously concluded that the addition of
“collection” to the mark sufficiently diminished the sur-
name significance of “Earnhardt” simply because “collec-
tion” is not generic for KEI’s goods and services. She
concludes that, under the proper analysis, the addition of
the merely descriptive “collection” term does not alter the
primary significance of the mark as primarily merely a
surname, when the mark is used in connection with KEI’s
furniture or custom home construction services.
KEI agrees that the Board had to determine whether
“collection” is either generic or merely descriptive of KEI’s
goods and services. Appellee Br. 12–15. KEI responds,
however, that the PTO properly found that “collection” is
neither generic nor merely descriptive. Both parties focus
on Hutchinson, 852 F.2d at 554, as the precedent that
governs this case.
In Hutchinson, the PTO concluded that the mark
HUTCHINSON TECHNOLOGY was primarily merely a
surname because Hutchinson was a surname and the
applicant conceded that “technology” described many
goods similar to those listed in the application (which
included electronic components and computer products).
Id. The PTO found that the term “technology” was “not
the common descriptive or generic name” for Hutchinson’s
goods, but “technology” was merely descriptive of those
goods based on the “conceded common usage of ‘technolo-

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EARNHARDT v. KERRY EARNHARDT, INC. 8
gy’ in connection with goods of th[at] type.” Id. The PTO
thus found that “the inclusion of ‘technology’ in the mark
as a whole did not alter the surname significance of
‘Hutchinson’ or create the impression that
HUTCHINSON TECHNOLOGY was not primarily mere-
ly a surname.” Id.
We reversed because (1) the PTO did not properly
consider the mark as a whole, and (2) it incorrectly found
that “technology” was “merely descriptive” of the recited
goods. Id. We explained that “[m]any other goods possi-
bly may be included within the broad term ‘technology,’
but that does not make the term descriptive of all of those
goods.” Id. We determined that “technology” did not
convey an “immediate idea” of the “ingredients, qualities,
or characteristics of the goods” listed in the application,
and therefore “h[e]ld that the [PTO] clearly erred by
finding that the term ‘technology’ is merely descriptive of
Hutchinson’s goods.” Id. at 555. Thus, evaluating wheth-
er “technology” was merely descriptive was necessarily
part of our analysis in Hutchinson. Id. We further held
that “the [PTO’s] findings on the effect of the inclusion of
‘technology’ in the mark, as a whole, also [we]re clearly
erroneous” because “[t]he [PTO] never considered what
the purchasing public would think when confronted with
the mark as a whole.” Id. at 554–55.
That second holding from Hutchinson—the require-
ment of considering the mark as a whole—is an important
one, because it recognizes that even though the individual
components of a mark may not be separately registrable,
the combination of those components into a single mark
at times may still be registered. As one example, our
predecessor court held that the mark SUGAR & SPICE is
not merely descriptive of bakery products in a trademark
application. In re Colonial Stores, Inc., 394 F.2d 549, 549,
553 (C.C.P.A. 1968). The court explained that although
the two terms of the mark are each descriptive of bakery
products, the combination of the terms into the mark

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EARNHARDT v. KERRY EARNHARDT, INC. 9
SUGAR & SPICE evoked a “reminiscent, suggestive or
associative connotation” derived from the well-known
nursery rhyme “sugar and spice and everything nice.” Id.
at 551–53. The court reversed the PTO’s refusal to regis-
ter the mark because “when combined and used on bakery
goods, [‘sugar & spice’] . . . are not ‘merely descriptive’ of
such goods within the meaning of section [1052],” and the
“immediate impression evoked by the mark may well be
to stimulate an association of ‘sugar and spice’ with
‘everything nice.’” Id. at 552.
III.
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 pur-
chasing 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).
Specifically, upon review of the Board’s decision, it is
unclear whether the Board engaged in a merely descrip-
tive inquiry for the term “collection” or if the Board im-
properly constricted its analysis to only a genericness
inquiry. On one hand, 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, such
that the purchasing public would not consider the mark
as a whole to be primarily a merely surname. J.A. 37

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EARNHARDT v. KERRY EARNHARDT, INC. 10
(stating that the effect of “collection” on the mark in KEI’s
application was similar to the effect of “technology” on the
mark in Hutchinson); J.A. 37 (discounting evidence that
“collection” is “commonly used in connection with both
‘custom homes’ and ‘furniture’”). On the other hand, the
Board’s decision could be understood as finding that a
mark consisting of a surname and a merely descriptive
term is registrable as a trademark as a matter of law so
long as the descriptive term is not generic. E.g., J.A. 34–
35 (explaining that “[t]he word, ‘collection,’ does not refer
to any class or category of furniture, and therefore, while
it may be descriptive of the manner in which some furni-
ture is marketed or sold, namely by groupings of brands
or groupings of uses, it is not generic.”); J.A. 36 (finding
that “since the term ‘collection’ is not generic, the addition
of the term to the surname Earnhardt does diminish the
surname significance”). While the Board did state that
“collection” is “not the common descriptive or generic
name” for KEI’s furniture and custom home construction
services, J.A. 37, it is less than clear that the Board
intended its usage of “common descriptive” to represent a
finding that “collection” is not merely descriptive. See,
e.g., In re Merrill Lynch, Pierce, Fenner, & Smith, Inc.,
828 F.2d 1567, 1570 (Fed. Cir. 1987) (“The Board found
that the term CASH MANAGEMENT ACCOUNT is
generic or commonly descriptive, not ‘merely descrip-
tive.’”).
The Board relied heavily on Hutchinson for its analy-
sis, but in Hutchinson, we did not find that any mark
consisting of a surname and a merely descriptive term is
registrable as a trademark as a matter of law, nor did we
find that such a mark is always primarily merely a sur-
name and not registrable as a matter of law. 852 F.2d at
554–55. Instead, the PTO had to make two inquiries.
First, it had to determine whether the additional term
was “merely descriptive” of the applicant’s goods and
services, and second, it had to determine whether adding

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EARNHARDT v. KERRY EARNHARDT, INC. 11
the additional term to the surname altered the primary
significance of the mark as a whole to the purchasing
public. Id. Because here, the Board did not adequately
explain whether “collection” was merely descriptive of
KEI’s goods and services, J.A. 35–38, its analysis of the
mark as a whole was likewise deficient.
Under these circumstances, we vacate and remand
this case to the Board to clarify its findings and analysis,
consistent with our explanation of Hutchinson.
CONCLUSION
We vacate and remand the Board’s finding that KEI’s
mark EARNHARDT COLLECTION for furniture and
custom construction of homes is not primarily merely a
surname. 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.
VACATED AND REMANDED
COSTS
No costs.

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