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.