Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc.
469 U.S. 189 (1985)
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Rule of Law:
An action to enjoin the infringement of an incontestable trademark registered under the Lanham Act cannot be defended on the ground that the mark is merely descriptive.
Facts:
- Park ’N Fly, Inc. began operating long-term airport parking lots in 1967.
- In 1969, Park 'N Fly applied to the U.S. Patent and Trademark Office to register a service mark consisting of an airplane logo and the words 'Park ’N Fly.'
- The registration was issued in August 1971.
- Approximately six years later, Park 'N Fly filed an affidavit with the Patent Office, successfully establishing the mark's 'incontestable' status under the Lanham Act.
- Dollar Park and Fly, Inc. operates a long-term airport parking service in Portland, Oregon, under the name 'Dollar Park and Fly.'
- Park 'N Fly's business operations were not located in the Pacific Northwest.
Procedural Posture:
- Park ’N Fly, Inc. sued Dollar Park and Fly, Inc. for trademark infringement in the United States District Court for the District of Oregon.
- Dollar Park and Fly, Inc. counterclaimed for cancellation of the mark, arguing it was a generic term, and also raised the defense that the mark was merely descriptive.
- The District Court, after a bench trial, found in favor of Park 'N Fly, Inc. and permanently enjoined Dollar Park and Fly, Inc. from using the phrase 'Park and Fly.'
- Dollar Park and Fly, Inc. (appellant) appealed to the United States Court of Appeals for the Ninth Circuit.
- The Court of Appeals reversed, holding that incontestability is a defensive shield against cancellation but cannot be used offensively to enjoin infringement if the mark is merely descriptive.
- Park ’N Fly, Inc. (petitioner) sought and was granted a writ of certiorari by the United States Supreme Court.
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Issue:
May an action to enjoin the infringement of an incontestable trade or service mark be defended on the grounds that the mark is merely descriptive?
Opinions:
Majority - Justice O’Connor
No. An infringement action brought by the holder of an incontestable mark may not be defended on the grounds that the mark is merely descriptive. The plain language of the Lanham Act in § 33(b) provides that registration of an incontestable mark is 'conclusive evidence of the registrant's exclusive right to use the registered mark,' subject only to seven specifically enumerated defenses. The defense that a mark is 'merely descriptive' is not included in this list. Congress explicitly distinguished between generic marks, which can be canceled at any time, and merely descriptive marks, demonstrating a deliberate choice to exclude descriptiveness as a defense against an incontestable mark. The Ninth Circuit's creation of an 'offensive/defensive' distinction, where incontestability could shield a mark from cancellation but not be used to enjoin infringement, finds no support in the statute and would render the 'exclusive right' granted by § 33(b) meaningless. The purpose of the incontestability provisions is to quiet title in a mark, and allowing a descriptiveness defense would frustrate this congressional intent.
Dissenting - Justice Stevens
Yes. An infringement action involving an incontestable mark should be defensible on the grounds that the mark is merely descriptive and lacks secondary meaning. The mark 'Park ’N Fly' is merely descriptive and was improperly registered because the petitioner never proved it had acquired secondary meaning, as required by the Lanham Act. The purpose of trademark law is to protect goodwill embodied in a distinctive mark, and granting a monopoly over a common descriptive phrase that lacks distinctiveness serves no legislative purpose. Incontestability is analogous to a decree quieting title; it settles ownership disputes but cannot create a valid property right out of unregistrable subject matter. The Act grants courts broad equitable powers and the authority to 'rectify the register' (§ 37), which should permit a court to deny an injunction for an improperly registered mark, thereby protecting the public's interest in the free use of descriptive language.
Analysis:
This decision significantly strengthens the power of federal trademark registration by cementing the value of incontestable status. It clarifies that once a mark is incontestable, its validity is secure from challenges of mere descriptiveness, effectively immunizing it from what is otherwise a common and potent defense in infringement litigation. The ruling prioritizes the certainty and 'quiet title' function of the Lanham Act's incontestability provisions over concerns that a descriptive term might be improperly monopolized. Consequently, this case incentivizes trademark owners to diligently maintain their registrations for the five-year period necessary to achieve incontestability, as it provides a powerful sword in enforcement actions.
