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Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582, 53 USLW 4044, 224 U.S.P.Q. 327

Facts

Petitioner, the holder of a registered service mark consisting of the logo of an airplane and the words 'Park 'N Fly,' operates long-term parking lots near airports. After applying for the mark in 1969 and receiving registration in 1971, petitioner established the mark's incontestable status nearly six years later. Respondent, operating under the name 'Dollar Park and Fly' in Portland, Oregon, was sued by petitioner for infringement. The District Court granted an injunction against respondent, but the Court of Appeals reversed, ruling that the mark was merely descriptive and could not be enforced.

Issue

Whether an action to enjoin the infringement of an incontestable trade or service mark may be defended on the grounds that the mark is merely descriptive.

Whether an action to enjoin the infringement of an incontestable trade or service mark may be defended on the grounds that the mark is merely descriptive.

Rule

Under the Lanham Act, an incontestable mark may not be challenged as merely descriptive, and the holder of such a mark can rely on its incontestability to enjoin infringement. The Act does not distinguish between offensive and defensive uses of an incontestable mark, and the registrant has an exclusive right to use the mark, which can be enforced against infringers.

Analysis

The court analyzed the language of the Lanham Act, concluding that it does not support a distinction between offensive and defensive uses of an incontestable mark. The statutory provisions indicate that an incontestable mark is conclusive evidence of the registrant's exclusive right to use the mark. The court also noted that the legislative history does not support the idea that a merely descriptive mark can be used as a defense against infringement actions.

Conclusion

The Supreme Court reversed the Court of Appeals' decision, holding that the holder of a registered mark may rely on incontestability to enjoin infringement, and such an action cannot be defended on the grounds that the mark is merely descriptive.

Who won?

The petitioner, Park 'N Fly, prevailed in the Supreme Court, which ruled that the incontestable status of its mark allowed it to enjoin infringement by the respondent. The Court emphasized that the Lanham Act's provisions support the enforcement of an incontestable mark against claims of mere descriptiveness, thereby affirming the registrant's exclusive rights.

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 merely descriptive.

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