Hutchinson Revisited Surname + Merely Descriptive Term May or May Not Be Registrable

In Earnhardt v. Kerry Earhhardt, Inc., [2016-1939] (July 27, 2017), the Federal Circuit vacated and remanded a TTAB decision dismissing Earnhardt’s opposition because it found that there was no likelihood of
confusion between EARNHARDT COLLECTION (by Dale Earnhardt’s sone) and Teresa Earnhardt’s marks (the widow of Dale Earnhardt), and that EARNHARDT COLLECTION is not primarily merely a surname.

The Federal Circuit found that it was not clear that the TTAB conducted the appropriate analysis in determining that EARNHARDT COLLECTION is not primarily merely a surname.  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.

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).  The Federal Circuit 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.

Upon review of the Board’s decision, in the current case, it was
unclear to the Federal Circuit whether the Board engaged in a merely descriptive inquiry for the term “collection” or if the Board improperly
constricted its analysis to only a genericness inquiry.  The Federal Circuit noted that while the Board did state that “collection” is “not the common descriptive or generic name” for KEI’s furniture and custom home construction services, it is less than clear that the Board
intended its usage of “common descriptive” to represent a finding that “collection” is not merely descriptive.

The Federal Circuit explained that while the Board relied heavily on Hutchinson for its analysis, in Hutchinson it 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 it find that such a mark is always primarily merely a surname and not registrable as a matter of law.

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 significance of the mark as a whole to the purchasing public.


GottaWannaNeedaGettaHava Injunction

Bojangles International LLC originator of the Cajun Filet Biscuit that it promotes with the jingle “GottaWannaNeedaGettaHava” has sued Hardees for selling a Cajun Chicken Biscuit and using the phrase GottaWannaNeedaGettaHava to do so.
Hardees introduced its Cajun Fillet Biscuit via Twitter, and promptly received a cease and desist letter which prompted Hardess to rename its sandwich Cajun Chicken Biscuit.  This was not enough to appease Bojangles, which brought suit in North Carolina, alleging that Cajun Chicken Biscuit infringes its federally registered Cajun Fillet Biscuit trademark, and that Hardee’s introductory Tweet infringed its federally registered GottaWannaNeedaGettaHava  trademark.
It is a curious case because while Hardess indisputably used the phrase GottaWannaNeedaGettaHava in its tweet but not as a brand name, and arguably as a comparative reference to Bojangles’ arguing that its Cajun Fillet Biscuit is “better.” Would someone receiving this Tweet from Hardees really be confused?  Hardees started out using the Cajun Fillet Biscuit trademark, but quickly switched to Cajun Chicken Biscuit.  What would Bojangles expect Hardees to call a Cajun flavored chicken biscuit?
The case will test the limits of 15 U.S.C. § 1115(b)(4) defense for uses “otherwise than as a mark . . . which is descriptive of and used fairly and in good faith only to describe the goods or services.”  Hardees will likely argue its use “GottaWannaNeedaGettaHava” was a comparative reference to Bojangles, and its use of Cajun Chicken Biscuit is descriptive of its product.  It will be interesting to see if Bojangles can make Hardees dance.