Kerry Earnhardt, the late Dale Earnhardt’s eldest son, applied through his Kerry Earnhardt Inc. company in 2011 to register “Earnhardt Collection” for both furniture and custom home design. In 2012, Dale Earnhardt’s widow and third wife, Theresa Earnhardt, filed an opposition with the Trademark Trial and Appeal Board (TTAB) seeking to block Kerry’s application. Theresa is Kerry’s stepmother and owner of Dale Earnhardt Inc., and already own a number of “Earnhardt” registrations for a wide variety of goods.
In February of 2016, the TTAB dismissed her opposition, finding there was no likelihood of confusion between her marks and the Earnhardt Collection. The ruling found that “[t]he opposer [Theresa] did not offer any testimony or evidence that the goods and services in the registrations were related to [Kerry] applicant’s goods and services.” It also rejected her argument that her stepson’s “Earnhardt Collection” mark was primarily a surname.
Theresa Earnhardt appealed the TTAB’s decision, and an appeal took place March 10, 2017. In a statement from Theresa’s attorney, “[t]he naming of any project called ‘Earnhardt Collection’ causes confusion as being associated with Dale Earnhardt, as the Dale Earnhardt brands and marks are so diverse across multiple industries and philanthropic causes.” Although Theresa controls the name “Dale Earnhardt,” she does not control the name “Earnhardt” in and of itself.
On Thursday, July 27, 2017, the Federal Circuit revived the trademark dispute, and ruled that the TTAB must clarify its decision that allowed Kerry Earnhardt to use the term “Earnhardt Collection.” The ruling that forced the TTAB to reconsider its ruling was because “it is unclear whether the Board’s analysis properly applied” a past U.S. Court of Appeals decision that established the precedent for cases such as these.
Case law established that a TTAB must apply a two-step process to decide if it’s “primarily merely a surname” – a kind of subject that’s unregisterable on the grounds that many different people might share a surname. The TTAB did not include in its decision whether “collection” was “merely descriptive,” and thus it was unclear whether they carried out the first step.
Kerry had a bit of a rocky relationship with his late father, and went to live with his mother, Latane, when he was three years old. In addition, he took on the last name of Key. In testimony to the TTAB, Kerry said his father helped him get the Earnhardt name back after he had started a relationship with his father at age 16.
Theresa is estranged from Dale Earnhardt’s first three children, and had a fight that led to Dale Earnhardt Junior’s departure from Dale Earnhardt Inc. As evidenced by her most recent legal fight, she continues to battle her step-children in the legal arena, and has become fiercely protective of the Earnhardt name.