Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc

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.

Facts. Park ‘N Fly, Inc. (Plaintiff) operated long-term parking lots near airports in several states and had established a service mark made up of the logo of an airplane with the words “Park ‘N Fly†with the United States Patent and Trademark Office.  Park ‘N Fly (Plaintiff) successfully sought an injunction against Dollar Park and Fly, Inc. (Defendant), which provided long-term parking services in Oregon.  Defendant counterclaimed and sought cancellation of Plaintiff’s mark on the grounds that it was a generic term.  Dollar (Defendant) also argued that the mark was not enforceable as it was only descriptive.  After a bench trial, the district court found that the mark was not generic and also found enough evidence to indicate a likelihood of confusion.  It permanently enjoined Defendant from using the words “Park and Fly.â€Â  The court of appeals reversed because it found that incontestability may not be used offensively to enjoin another’s use.  The court of appeals also found that the mark was descriptive and therefore Dollar (Defendant) could not be enjoined from using the name “Park and Fly.â€Â  The United States Supreme Court granted certeriori.

Issue. May an incontestable mark be challenged on the grounds that it is only descriptive?

Held. (O’Connor, J.)  No.  An incontestable mark cannot be challenged on the grounds that it is only descriptive.  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.  Congress expressly provided in §§ 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.  Reversed and remanded.

Dissent. (Stevens, J.)  The mark “Park ‘N Fly†is at best descriptive only in the context of airport parking.  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.  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.  They do not have any property rights such as the right to alienate.  A presumption of validity is entitled to registered trademarks.