WASHINGTON (CN) — The Federal Circuit ordered the Patent and Trademark Office to reconsider its decision to give a trademark to Dale Earnhardt’s son, over his stepmother’s objections that the mark uses her late husband’s last name. 
 
 The dispute is whether Kerry Earnhardt, Earnhardt’s son who also raced professionally for more than a decade, can license a custom home design service under the name Earnhardt Collection. 
 
 His stepmother, Teresa Earnhardt, says the mark will cause confusion with merchandise she sells emblazoned with her late husband’s name. Dale Earnhardt Sr. was a legendary NASCAR driver who died at 49 in 2001, in a crash during the final lap of the Daytona 500. Kerry Earnhardt is his father’s elder son, and half brother of Dale Earnhardt Jr., also a racer. 
 
 The Trademark Trial and Appeal Board rejected Teresa Earnhardt’s objection to her step-son’s application to register the name, saying there would be no confusion between the marks. 
 
 Teresa Earnhardt also claimed that Earnhardt is not trademarkable because it is “primarily merely a surname,” but the board found that Kerry Earnhardt skirted that restriction by adding the word “collection” to the last name, according to the July 27 ruling. 
 
 The board cited Federal Circuit precedent in in re Hutchinson Technology Inc.: that a mark whose individual components might not be trademarked might still receive protection when considered as a whole. 
 
 Teresa Earnhardt argued on appeal that merely tacking on the word “collection” to her late husband’s surname does not change the primary focus of the trademark. 
 
 Writing for the unanimous three-judge panel, Federal Circuit Judge Raymond Chen vacated and remanded, finding that the board was not clear enough in explaining why it granted Kerry Earnhardt’s trademark. 
 
 Citing the board’s duties under Hutchinson, Chen wrote: “First, it had to determine whether the additional term was ‘merely descriptive’ of the applicant’s goods and services, and second, it had to determine whether adding the additional term to the surname altered the primary significance of the mark as a whole to the purchasing public. Because here, the board did not adequately explain whether ‘collection’ was merely descriptive of KEI’s goods and services, its analysis of the mark as a whole was likewise deficient.” 
 
 Chen concluded: “On remand, the Board should determine (1) whether the term ‘collection’ is merely descriptive of KEI’s furniture and custom home construction services, and (2) the primary significance of the mark as a whole to the purchasing public.” 
 
 Teresa was represented by Sam Gunn, with Alston & Bird in Atlanta, who did not immediately respond to a request for comment. 
 
 Kerry Earnhardt was represented by Blaine Sanders with Robinson Bradshaw & Hinson in Charlotte, N.C., who did not respond to a request for comment. 
 
 Like this: Like Loading... ||||| Teresa Earnhardt won a small victory Thursday as the U.S. Court of Appeals ruled that the U.S. Trademark Trial and Appeal Board must clarify its decision that allowed Kerry Earnhardt to use the term "Earnhardt Collection" for a collection of custom homes. 
 
 The trademark appeal board must reconsider its ruling because "it is unclear whether the Board's analysis properly applied" a past U.S. Court of Appeals decision that is being used as precedence in the Earnhardt case, the three-judge panel ruled. 
 
 Dale Earnhardt Jr. is 22nd in the standings with five races left to make the playoffs. Brian Spurlock-USA TODAY 
 
 The trademark board isn't required to change its decision; it needs to clarify its reasoning in ruling on the trademark battle between Dale Earnhardt Sr.'s widow and her stepson, Kerry. 
 
 Kerry Earnhardt Inc. licensed "Earnhardt Collection" in 2011 to Schumacher Homes, which Kerry and his wife, Rene, helped with the designs. 
 
 The battle over the trademark began in May 2012, the trademark board ruled in February 2016, and appeals court judges Raymond Chen, Todd Hughes and Evan Wallach heard arguments in the case March 10. 
 
 "This [trademark board] opinion is certainly not a model of clarity. ... This opinion could have been written much better," Chen said during the appeals court hearing. 
 
 Chen worked as an attorney in the U.S. Patent and Trademark Office from 1998 to 2013 before his appointment to the Court of Appeals for the Federal Circuit, a court with nationwide jurisdiction in areas such as international trade, government contracts, patents, trademarks and veteran benefits. 
 
 "Kerry Earnhardt Inc. believed the [trademark board's] judgment could have been affirmed as it was, but we understand the Federal Circuit's desire to have more clarity," Kerry Earnhardt attorney Blaine Sanders said in a statement. 
 
 "We are confident that, on remand, the [board] will again determine that 'Earnhardt Collection' is registrable." 
 
 Teresa Earnhardt has owned the trademark to "Dale Earnhardt" since the death of the seven-time NASCAR Cup champion in the 2001 Daytona 500. She had initially argued to the trademark board that people would believe that the homes were endorsed by her and also that for all intents and purposes, it was primarily an attempt to trademark a surname, which is not legal. 
 
 The trademark board rejected those arguments, and Teresa dropped the confusion claim and on appeal focused solely on the technicality of trademark law that Kerry could not pair his surname with a merely descriptive term, such as "collection." 
 
 For Kerry Earnhardt to use the term "Earnhardt Collection," the law requires that a customer must use imagination, thought and perception to reach a conclusion as to the nature of the homes and not just have an immediate idea of the qualities or characteristics of the homes. 
 
 "Because ... the [trademark board] did not adequately explain whether 'collection' was merely descriptive of KEI's goods and services, its analysis of the mark as a whole was likewise deficient," Chen wrote in the decision. 
 
 Teresa has a long history of attempting to protect Earnhardt's name and legacy. When Kelley Earnhardt Miller and Dale Earnhardt Jr., who is Kerry's half-brother, first formed their race team, they used the term "JR Motorsports." The JR was capitalized and pronounced "Jay Are" because Earnhardt Jr. didn't own the rights to his name. He eventually procured those rights in 2006. 
 
 Both Earnhardt Jr. and Earnhardt Miller have come out publicly in support of Kerry. 
 
 "I hate this for my brother," Earnhardt Jr. tweeted. "He's a good soul and my father would be proud of him and what he's accomplished."
– A messy legal battle over how the Earnhardt family name is used just got more complicated. According to Courthouse News, Kerry Earnhardt, the eldest child of racing legend Dale Earnhardt Sr., received a setback in court after his stepmother Teresa Earnhardt successfully challenged a trademark decision that allowed him to use the family name for his custom home design service. Partnering with Schumacher Homes, Kerry initially licensed the business as “Earnhardt Collection” in 2011, reports ESPN, and was eventually granted the right to use the name in 2016. But following an appeal by Teresa, who has owned the trademark to Dale Earnhardt’s name since his death in 2001 and uses it to market her own merchandise, the US Court of Appeals ruled that the use of the word “collection” must be clarified for Kerry to move forward. The judge who issued the ruling said that the trademark board’s “opinion is certainly not a model of clarity” and believed the board “did not adequately explain whether 'collection' was merely descriptive of KEI's goods and services.” But Kerry’s attorney expressed optimism despite the ruling. In a statement, he wrote that they understood the “Federal Circuit's desire to have more clarity” and said they’re “confident” the board will determine the name is registrable. Dale Earnhardt Jr., who has also been to court with Teresa over the use of the family name, has publicly come out in support of his half-brother. After the decision, he tweeted, “This s--- again? Damn I hate this for my brother. He's a good soul and my father would be proud of him and what he's accomplished.” Kerry has, like his brother and father, also raced professionally.