Caseflicks

Supreme Court of the United States • 1985

Park 'N Fly, Inc. v. Dollar Park & Fly, Inc.

469 U.S. 189 | 105 S. Ct. 658 | 83 L. Ed. 2d 582 | 1985 U.S. LEXIS 33 | 53 U.S.L.W. 4044

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Takeaway

In short, incontestability can support an infringement injunction: mere descriptiveness alone cannot defeat it, though other statutory defenses and the requirement to prove infringement remain.

Background

Park 'N Fly registered an airplane-and-words service mark for its airport parking business. After five years of continuous use, it filed the affidavit required to make the registration incontestable. It later sued Dollar Park and Fly, a Portland airport parking operator, seeking to stop its use of “Park and Fly.”

The District Court found Park 'N Fly’s mark was not generic, rejected Dollar’s claimed prior-use defense, found a likelihood of confusion, and issued an injunction. The Ninth Circuit reversed. It held that incontestability could protect a mark from cancellation but could not help its owner obtain an injunction; it then concluded that the mark was merely descriptive and could not be enforced.

Issues

Issue #1

Whether a defendant in an infringement suit may defeat an incontestable mark by arguing that it is merely descriptive.

Holding

No. The owner may rely on incontestability to seek an injunction, and mere descriptiveness is not a defense to enforcement of an incontestable mark.

Reasoning

Under the Lanham Act, an ordinary registration is prima facie evidence of the owner’s exclusive right to use the mark and remains open to a descriptiveness challenge. Once the mark becomes incontestable, § 33(b) makes the registration conclusive evidence of that right, subject to specified conditions and defenses. Mere descriptiveness is not among them.

The Act treats descriptive and generic terms differently. A merely descriptive mark can be registered if it has acquired distinctiveness, while a generic mark cannot be protected and may be challenged even after registration becomes incontestable. Congress expressly preserved the generic-term challenge but did not preserve a mere-descriptiveness challenge.

Nothing in the statute confines incontestability to defending against cancellation. Its grant of an “exclusive right” would lose force if the owner could not invoke it against infringement, and several of § 33(b)’s defenses contemplate an infringement suit brought by the owner.

The legislative history supported giving owners a way to settle uncertainty over rights in their marks. Congress considered the concern that descriptive language might gain protection, but provided opportunities to oppose registration and challenge a mark before incontestability, along with continuing defenses such as genericness and fair, good-faith descriptive use.

The Court declined to use general statutory powers to grant equitable relief or correct the register as a way to restore a mere-descriptiveness defense that the specific incontestability provisions omit. It did not decide whether the mark was properly registered or resolve Dollar’s prior-use and likelihood-of-confusion arguments; the Ninth Circuit could consider those arguments on remand.

Dissents

Justice Stevens

Reasoning

In Justice Stevens’s view, incontestability could not cure the registration of a merely descriptive mark without proof of secondary meaning. He would require that proof before allowing an injunction, so that an administrative error could not give one business exclusive control over ordinary descriptive language.