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SISUN LAW   ·   79 MADISON AVENUE, FLOOR 2, NEW YORK, NY 10016   ·    347-913-7800   ·   © 2017 SISUN LAW

June 10, 2017

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Last Name (Surname) Trademarks: USPTO Makes Policy Even Stricter on Surnames

The United States Patent and Trademark Office (“USPTO”) issued a new guideline to instruct Examiners how to review surname applications after Teresa Earnhardt, widow of Dale Earhnhardt, succeeds on appeal. 

 

Briefly, under Section 2(e)(4) of the Lanham Act, a mark that is primarily merely a surname - the significance of the mark is primarily a surname - is not registrable on the Principal Register, without a showing of acquired distinctiveness.  Moreover, prior to this new guideline, when merely descriptive wording was combined with a surname, the addition of the descriptive matter was considered to change the make-up of the surname mark and distinguish it as not primarily merely a surname under §2(e)(4).  Surname refusals are generally issued by the USPTO to protect fair competition and allow business owners to name their businesses by their surnames.  

 

With the new guidelines in place, the standard for examining marks that contain surnames combined with wording must now be considered in their entirety.  Specifically, in Earnhardt, Teresa Earnhardt, widower of Dale Earnhardt, the professional stock car driver, filed opposition to registration applications submitted by Kerry Earnhardt, her step-son and son of Dale Earnhardt, to register “Earnhardt Collection.” Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1376 (Fed. Cir. 2017).   Kerry, CEO of a home-construction company, filed with the USPTO intent-to-use applications in the categories of “furniture” and “custom construction of homes.” Teresa holds multiple federal registered marks that incorporate Dale Earnhardt’s name. Teresa grounded her opposition in the claim that the registration of “Earnhardt Collection” was primarily a surname, and the use of “Collection” in conjunction with “Earnhardt” does not make it registerable.  However, the TTAB still ruled against Teresa and found the mark to be registerable.

 

On appeal, the Federal Circuit overturned the TTAB finding and asserted that beyond the requirement that the term combined with the surname cannot be solely descriptive, the TTAB must have also determined that the additional term altered the mark in its entirety.  Moreover, the court asserted that the TTAB failed to consider how "adding the additional term to the surname altered the primary significance of the mark as a whole to the purchasing public.”

 

Therefore, Examiners have been instructed where additional matter is descriptive and has not acquired distinctiveness, refusal of the entire mark under §2(e)(4) would generally be appropriate. Id. 

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