Just because it is your name DOES NOT guarantee that you can secure a trademark registration for your name.

The popular race car driver known as Dale Earnhardt died in 2001. During his career, he clearly established trademark rights in his name for goods/services related to automobile racing. He also registered his name with the USPTO as a trademark for a variety of goods not necessarily related to racing (i.e., stickers, beverage holders, clothing, toy cars, among others).

The relevant trademark registrations featuring the DALE EARNHARDT mark, at the time of this dispute, were owned by Theresa H. Earnhardt (“Opposer”).

So….the years race by, and along comes the legend’s first grandson, Bobby Dale Earnhardt. With racing also in his blood, he quickly makes a name for himself in the same sport, and while doing so, I suspect he simply assumed that he had trademark rights in his name and could register that name with the USPTO. The Applicant, through his company, Bobby Dale Earnhardt LLC, applied for the BOBBY DALE EARNHARDT trademark for essentially the same goods as listed in his grandfather’s trademark registrations….and just like his grandfather, he applied for the standard word mark and for his signature.

As a side note, I have no idea why the Trademark Examiner did not refuse registration of BOBBY DALE EARNHARDT in light of the DALE EARNHARDT registrations. The opposed applications should never have been published for opposition. The Opposer even filed Letters of Protest which were entered into the file history record.

Anyway, the Opposer opposed and prevailed on summary judgment on the issue of likelihood of confusion. This alone makes this case noteworthy because it is quite rare for the TTAB to grant a summary judgment on the issue of likelihood of confusion.

The Practice Pointer from this case is that: just because you have a name, and maybe even a famous name, doesn’t mean you can get that name registered when someone else has already established prior rights in the same or similar name. Simply adding “Bobby” to “Dale Earnhardt” was insufficient to avoid a likelihood of confusion.

By Gary Nelson of Lewis Roca Rothgerber Christie