{"id":283,"date":"2017-07-27T23:59:56","date_gmt":"2017-07-28T03:59:56","guid":{"rendered":"https:\/\/trademarks.harnessip.com\/?p=283"},"modified":"2017-08-03T00:19:48","modified_gmt":"2017-08-03T04:19:48","slug":"hutchinson-revisited-surname-merely-descriptive-term-may-or-may-not-be-registrable","status":"publish","type":"post","link":"https:\/\/trademarks.harnessip.com\/?p=283","title":{"rendered":"Hutchinson Revisited Surname + Merely Descriptive Term May or May Not Be Registrable"},"content":{"rendered":"

In Earnhardt v. Kerry Earhhardt, Inc.<\/a>, [2016-1939] (July 27, 2017), the Federal Circuit vacated and remanded a TTAB decision dismissing Earnhardt\u2019s\u00a0opposition because it found that there was no likelihood of
\nconfusion between EARNHARDT COLLECTION (by Dale Earnhardt’s sone) and\u00a0Teresa Earnhardt\u2019s marks (the widow of Dale Earnhardt), and that\u00a0EARNHARDT COLLECTION is not primarily merely a\u00a0surname.<\/p>\n

The Federal Circuit found that it was not clear that the TTAB conducted the appropriate analysis in determining that\u00a0EARNHARDT COLLECTION is not primarily merely a\u00a0surname. \u00a0To evaluate whether the commercial\u00a0impression of a mark that combines a surname\u00a0with a second term is still primarily merely the surname,
\nthe PTO must determine whether the primary significance\u00a0of the mark as a whole in connection with the\u00a0recited goods and services is that of the surname. A\u00a0key element in such an inquiry is determining the relative\u00a0distinctiveness of the second term in the mark.<\/p>\n

In Hutchinson<\/em>, the PTO concluded that the mark\u00a0HUTCHINSON TECHNOLOGY was primarily merely a\u00a0surname because Hutchinson was a surname and the\u00a0applicant conceded that \u201ctechnology\u201d described many\u00a0goods similar to those listed in the application (which
\nincluded electronic components and computer products). \u00a0The Federal Circuit\u00a0reversed because (1) the PTO did not properly\u00a0consider the mark as a whole, and (2) it incorrectly found\u00a0that \u201ctechnology\u201d was \u201cmerely descriptive\u201d of the recited\u00a0goods.<\/p>\n

Upon review of the Board\u2019s decision, in the current case, it was
\nunclear to the Federal Circuit whether the Board engaged in a merely descriptive\u00a0inquiry for the term \u201ccollection\u201d or if the Board improperly
\nconstricted its analysis to only a genericness\u00a0inquiry. \u00a0The Federal Circuit noted that\u00a0while the Board did state that\u00a0\u201ccollection\u201d is \u201cnot the common descriptive or generic\u00a0name\u201d for KEI\u2019s furniture and custom home construction\u00a0services, it is less than clear that the Board
\nintended its usage of \u201ccommon descriptive\u201d to represent a\u00a0finding that \u201ccollection\u201d is not merely descriptive.<\/p>\n

The Federal Circuit explained that while the Board relied heavily on Hutchinson for its analysis,\u00a0in Hutchinson it did not find that any mark
\nconsisting of a surname and a merely descriptive term is\u00a0registrable as a trademark as a matter of law, nor did it\u00a0find that such a mark is always primarily merely a surname\u00a0and not registrable as a matter of law.<\/p>\n

The Federal Circuit said that the Board has to determine whether the additional term — “collection” — is merely descriptive of the goods, and if so, whether the addition of the term to the Earnhardt surname “altered the primary\u00a0significance of the mark as a whole to the purchasing\u00a0public.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Earnhardt v. Kerry Earhhardt, Inc., [2016-1939] (July 27, 2017), the Federal Circuit vacated and remanded a TTAB decision dismissing Earnhardt\u2019s\u00a0opposition because it found that there was no likelihood of confusion between EARNHARDT COLLECTION (by Dale Earnhardt’s sone) and\u00a0Teresa Earnhardt\u2019s … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[20],"tags":[],"class_list":["post-283","post","type-post","status-publish","format-standard","hentry","category-surname"],"_links":{"self":[{"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/283","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=283"}],"version-history":[{"count":1,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/283\/revisions"}],"predecessor-version":[{"id":284,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/283\/revisions\/284"}],"wp:attachment":[{"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=283"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=283"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=283"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}