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

1985-01-08

Headline: Court allows owner of an incontestable airport-parking trademark to enjoin competitors from using 'Park and Fly,' blocking others despite arguments the name is merely descriptive.

Holding: The Court held that the owner of an incontestable federal trademark may obtain an injunction against infringement and that an accused infringer cannot defend by arguing the mark is merely descriptive.

Real World Impact:

Allows owners of incontestable marks to seek injunctions against infringers.
Limits accused infringers’ ability to use mere descriptiveness as a defense.
Preserves statutory prior-use and other listed defenses on remand.

Topics: trademark enforcement, registered trademark rights, descriptive names, business branding

Summary

Background

Petitioner operates long-term airport parking lots in several cities and registered a service mark, including the words “Park ’N Fly,” in 1971. After filing the required affidavit to make that registration incontestable, petitioner sued in 1978 to stop respondent, a Portland parking company using “Dollar Park and Fly,” from using the name. The District Court found the mark not generic, found likely consumer confusion, and issued a permanent injunction. The Ninth Circuit reversed, holding incontestable status could not be used offensively to enjoin others and finding the mark merely descriptive.

Reasoning

The Court asked whether an owner of an incontestable registration may seek an injunction and whether an accused infringer can defend by calling the mark merely descriptive. Looking to the Lanham Act’s language and history, the Court held registration that has become incontestable is conclusive evidence of the owner’s exclusive right except for the specific defenses Congress listed. Mere descriptiveness is not one of those defenses, so an incontestable mark may be enforced by injunction. The Court reversed the Ninth Circuit and remanded for consideration of other defenses the lower courts had not resolved, such as prior use and the issue of likelihood of confusion.

Real world impact

Owners of incontestable federal registrations gain stronger power to stop competing uses of the same or confusingly similar marks. Competing businesses may still raise listed statutory defenses (for example, prior continuous local use) and other equitable issues on remand. This decision does not finally decide whether this particular mark was properly registered or actually descriptive.

Dissents or concurrances

Justice Stevens dissented, arguing the record shows the mark is merely descriptive and that petitioner never proved the required "secondary meaning" to justify registration or an injunction.