Thursday, May 12, 2016

Trademark Office Ruled Earnhardt Is Not Famous Enough To Warrant Broad Protection

Dale Earnhardt, Sr.
The widow of the late NASCAR champion Dale Earnhardt, Sr. suffered a setback recently in her bid to prevent her stepson from using the family name in his business.

Teresa Earnhardt went before the United States Patent and Trademark Office to request that Kerry Earnhardt – eldest son of her late husband and his first wife – be barred from using the term “Earnhardt Collection” to market his line of homes and home furnishings
The USPTO ruled in favor of Kerry Earnhardt, saying that his use of the term “Earnhardt Collection” did not create undue confusion or imply any association with his late father. Teresa Earnhardt has appealed that decision, arguing that Kerry Earnhardt’s use of the “Earnhardt Collection” name caused confusion in the marketplace and damaged her late husband’s brand.
Teresa Earnhardt
Interestingly, one of the key factors in the USPTO’s initial ruling was Teresa Earnhardt’s failure to produce evidence that Dale Earnhardt was sufficiently famous to require broad trademark protection. Especially damaging was her admission that Earnhardt-branded merchandise sales have decreased since the seven-time Cup Series champion’s death on the final lap of the 2001 Daytona 500. Teresa Earnhardt testified that she believes her late husband deserves to be granted “famous” status, but the USPTO disagreed, saying her claims that "DALE EARNHARDT brand licensed merchandise totaled $50 million annually and reached $60 million after his death” were little more than “hearsay,” with their veracity “not corroborated or otherwise verified by (her) with additional evidence.”
In fact, the panel cited Teresa Earnhardt’s own testimony that “since 2001 (the year of Dale Earnhardt’s death), sales of Dale Earnhardt- licensed merchandise have declined” as evidence that the man known as The Intimidator is not, in fact, famous enough to be granted the type of wide-ranging protection enjoyed by the estates of Elvis Presley or Marilyn Monroe.
Because of the extreme deference that we accord a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, it is the duty of the party asserting that its mark is famous to clearly prove it,” wrote the panel in its decision. “In this case, while (Teresa Earnhardt) has established the renown of Dale Earnhardt, the former race car driver, there is no evidence that (she) has established the fame of the mark DALE EARNHARDT with respect to any goods. Moreover, even if we were to find that the mark DALE EARNHARDT is famous, such finding does not extend to (her) rights in the name EARNHARDT, by itself.
“Simply put,” wrote the panel, “Teresa Earnhardt) has not demonstrated fame, for purposes of likelihood of confusion, for either of its DALE EARNHARDT and EARNHARDT marks.”
Teresa Earnhardt’s appeal is scheduled to be heard by a three-member board. Experts in copyright and trademark law say that such boards rarely overturn the original decision of the UPSTO.

10 comments:

  1. Anonymous3:07 PM

    Oh happy days to come for Kerry and the "real" Earnhardts

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  2. Okay, now that she damaged the reputation brought by the ruling signifying that Dale Sr is no longer "famous" How else will she continue to drag down his Legacy? As for Famous the court hopefully meant by International appeal of Mr Earnhardt Sr. They certainly aren't talking about his fans and the longtime fans of Nascar who I believe wouldn't confuse the brands by Kerry and the estate of Dale Earnhardt Sr.

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  3. Anonymous3:21 PM

    Sadly these things never end well. There will always be animosity between the step-children and step-mother. Yes, Dale Sr is famous enough for us, the Nascar world, and maybe even the sports world. But let's face it, it's been over 15 years. Gone but not forgotten is all relative. Teresa needs to cut her losses and move on. Let the children live their lives, they're not asking you for a dime. Let your daughter see you as the bigger person and "Let it Go". Very sad.

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    1. Anonymous6:36 PM

      Well said.

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  4. My advice to Teresa is this: It's better to be quiet and thought a fool, then to open your mouth and prove it.

    Do you hate Dale's children that much that you want to deny them to use their birth given name?! Are you that poor that you need to reap benefits from them by using their birth given name? Not one of these adult children have asked you for a red cent, nor do they need it. They are very successful on their own! Leave them alone and get on with your life.

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  5. Oh poor Teresa, your setting yourself up to be shunned from the whole Earnhardt name and the world because of your greedy behaviour and non-sense and your outright hate towards the true folks that were born to the name. It's time to get over yourself.

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  6. Anonymous9:28 PM

    Greed, blind greed is all Theresa has. If she released Sr.'s name for wide use maybe his fame would return and her income wold soar. But the greedy are like Gollum, all they see is the ring. Mine all mine.

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  7. I think this will end up like a NASCAR 1st appeal

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  8. It's really a shame. I agree with the USPTO and I think it's rather sad for her to keep one of HIS kids from using his own name. It's like Dave Moody trying to sue the Moody Blues.

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    1. OR, the Moody Blues suing Dave for using the name "Moody!"

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