Surface Supplied, Inc. v. Kirby Morgan Dive Sys. - No. C-13-0575 MMC, 2013 U.S. Dist. LEXIS 143478 (N.D. Cal. Oct. 3, 2013)

Rule:

To the extent that the right to use the registered mark has become incontestable under 15 U.S.C.S. § 1065, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's right to use the registered mark in commerce. (Lanham Act)

Facts:

The defendant demanded that the plaintiff immediately cease and desist from using three images, including plaintiff’s logo, on the ground that the images infringed defendant's trademarks. Plaintiff filed a complaint for declaratory relief, claiming that its use of the images did not infringe the defendant's trademarks and asserted that the mark was merely descriptive. The defendant argued that "Descriptiveness" was not available to the plaintiff because the defendant's marks achieved incontestable status.

Issue:

Was the plaintiff’s complaint meritorious?

Answer:

No.

Conclusion:

15 U.S.C.S. § 1115(b) listed nine defenses or defects to which such registration shall be subject, the list did not include "descriptiveness," and an infringement action brought by the holder of an incontestable mark may not be defended on the grounds that the mark was merely descriptive.