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Park 'n Fly v. Dollar Park & Fly - 469 U.S. 189, 105 S. Ct. 658 (1985)


The provisions of the Lanham Act, 15 U.S.C.S. § 1051 et seq., concerning registration and incontestability distinguish a mark that is the common descriptive name of an article or substance from a mark that is merely descriptive. §§ 2(e)14(c) of the Act, 15 U.S.C.S. §§ 1052(e)1064(c). Marks that constitute a common descriptive name are referred to as generic. A generic term is one that refers to the genus of which the particular product is a species. Generic terms are not registrable, and a registered mark may be canceled at any time on the grounds that it has become generic. §§ 214(c) of the Act, 15 U.S.C.S. §§ 10521064(c).  However, §§ 2(e)(f) of the Act, 15 U.S.C.S. §§ 1052(e)(f) provides that a "merely descriptive" mark, in contrast, describes the qualities or characteristics of a good or service, and this type of mark may be registered only if the registrant shows that it has acquired secondary meaning, i. e., it has become distinctive of the applicant's goods in commerce. 


Petitioner Park 'N Fly, Inc. (Park ‘N Fly) operates long-term parking lots near airports in St. Louis, Cleveland, Houston, Boston, Memphis, and San Francisco. In 1969, Park ‘N Fly applied to the United States Patent and Trademark Office to register a service mark consisting of the logo of an airplane and the words "Park 'N Fly." The registration issued in 1971, and nearly six years later Park ‘N Fly filed an affidavit with the Patent and Trademark Office to establish the incontestable status of the mark under § 33(b) of the Trademark Act of 1946 (Lanham Act), which provides that "registration shall be conclusive evidence of the registrant's exclusive right to use the registered mark," subject to the provisions of § 15 and § 33(b) itself.

Respondent Dollar Park & Fly, Inc. (Dollar Park & Fly) provides long-term airport parking services called "Dollar Park and Fly," but only operates in Portland, Ore. Park ‘N Fly filed an infringement action in Federal District Court seeking to enjoin respondent from using the words "Park and Fly" in connection with its business. The District Court granted the injunction, rejecting, inter alia, Dollar Park & Fly’s defense that Park ‘N Fly’s mark is unenforceable because it is merely descriptive. The Court of Appeals reversed, holding that incontestability provides a defense against the cancellation of a mark but may not be used offensively to enjoin another's use, that, under this analysis, Petitioner Park ‘N Fly could obtain an injunction only if its mark would be entitled to continued registration without regard to its incontestable status, and that therefore Respondent Dollar Park & Fly could defend by showing that the mark was merely descriptive. The appellate court then determined that Park ‘N Fly’s mark is merely descriptive and Dollar Park & Fly should not be enjoined from using the words "Park and Fly." Petitioner Park 'N Fly sought further review.


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?




The United States Supreme Court agreed held that incontestability not only barred cancellation of Petitioner Park 'N Fly's mark, but allowed Park 'N Fly to utilize that status to enjoin Respondent Dollar Park & Fly’s use of its mark. Nothing in the language of the Trademark Act of 1946 (Lanham), 15 U.S.C.S. § 1051 et seq., supported the offensive/defensive distinction adopted by the appeals court in upholding Dollar Park & Fly’s challenge. Moreover nothing in Lanham, or in its legislative history, allowed an incontestable mark to be challenged as merely descriptive and nothing supported a departure from Lanham's clear language on incontestability. That trademark registrations were issued without inquiry into the application's merits was no basis for supporting respondent's position as challenges were permitted following publication of the registration.

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