Brief Fact Summary. An incontestable service mark was alleged to be only descriptive and could not be used to enjoin the use of another infringing service mark.
Synopsis of Rule of Law. An incontestable mark cannot be challenged on the grounds that it is only descriptive.
Issue. May an incontestable mark be challenged on the grounds that it is only descriptive?
Held. (O’Connor, J.)Â No.Â An incontestable mark cannot be challenged on the grounds that it is only descriptive.Â The holder of a registered mark may rely on incontestability to enjoin infringement, and such an action may not be defended on the grounds that the mark is only descriptive.Â Congress expressly provided in Â§Â§ 33(b) and 15 of the Lanham Act that an incontestable mark could be challenged on specified grounds, and the grounds identified by Congress do not include only descriptiveness.Â Reversed and remanded.
Dissent. (Stevens, J.)Â The mark â€œPark â€˜N Flyâ€ is at best descriptive only in the context of airport parking.Â Section 2 of the Lanham Act clearly prohibits such a mark receiving registration unless the applicant proves that the mark has acquired a secondary meaning which renders the mark distinctive of the applicant’s goods in commerce.Â If no proof of secondary meaning is ever presented, there is simply no rational basis for leaping to the conclusion that the passage of time has transformed an inherently defective mark into an incontestable mark.
Discussion. Trademark holders have the right to exclude others from using the same specific trademark.Â They do not have any property rights such as the right to alienate.Â A presumption of validity is entitled to registered trademarks.