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

U.S. Supreme Court Park N' Fly Inc. v. Dollar Park and
Fly, Inc., 469
U.S. 189 (1985) Park N' Fly Inc. v. Dollar Park and
Fly, Inc., 469
U.S. 189 (1985) No. 83-1132 Argued October 9,
1984 Decided January 8,
1985 469
U.S. 189 CERTIORARI TO THE UNITED STATES
COURT OF APPEALS FOR THE NINTH
CIRCUIT Syllabus Petitioner operates long-term parking lots near airports in St.
Louis Cleveland, Houston, Boston, Memphis, and San Francisco. In
1969, petitioner 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 petitioner 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 provides long-term airport parking services called
"Dollar Park and Fly," but only operates in Portland, Ore.
Petitioner 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, respondent's defense
that petitioner'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 could obtain an injunction only if
its mark would be entitled to continued registration without regard
to its incontestable status, and that therefore respondent could
defend by showing that the mark was merely descriptive. The court
then determined that petitioner's mark is merely descriptive and
respondent should not be enjoined from using the words "Park and
Fly." Held: The holder of a registered mark may rely on
incontestability to enjoin infringement, and an infringement action
may not be defended on the grounds that the mark is merely
descriptive. Pp. 469 U. S.
193 -205.

															(a) The Lanham Act nowhere distinguishes between a registrant's
offensive and defensive use of an incontestable mark, but, on the
contrary, § 33(b)'s declaration that the registrant has an
"exclusive right" to use the mark indicates that incontestable
status may be used to enjoin infringement. The Act's language also
refutes any conclusion that an incontestable mark may be challenged
as merely descriptive. Pp. 469 U. S. 193 -197. Page 469 U. S. 190 (b) Nothing in the Lanham Act's legislative history supports a
departure from the plain language of the provisions concerning
incontestability. Indeed, a conclusion that incontestable status
may provide the basis for enforcement of the registrant's exclusive
right to use a mark promotes the Act's goals in providing national
protection of trademarks in order to secure to the mark's owner the
goodwill of his business and to protect the ability of consumers to
distinguish among competing producers. Pp. 469 U. S.
197 -202.

															(c) There is no merit to respondent's argument that the Court of
Appeals' decision should be upheld because trademark registrations
are issued after an ex parte proceeding and generally
without inquiry into the merits of an application. The facts of
this case belie the suggestion that registration is virtually
automatic, and respondent is simply wrong to suggest that third
parties do not have an opportunity to challenge applications for
trademark registration. The power of courts under § 34 of the
Lanham Act to grant injunctions "according to principles of equity"
does not encompass a substantive challenge to the validity of an
incontestable mark on the grounds that it lacks secondary meaning.
Otherwise, the meaning of "equity" would be expanded to the point
of vitiating the Act's more specific provisions. Similarly, the
power of courts to cancel registrations and "otherwise rectify the
register" under § 37 of the Act must be subject to the specific
provisions concerning incontestability. Pp. 469 U. S.
202 -203.

															(d) The Court of Appeals was not justified in relying on its
decision in Tillamook County Creamery v. Tillamook Cheese &
Dairy Assn., 345 F.2d 158, cert. denied, 382 U.S.
903, for the proposition that a registrant may not rely on
incontestability to enjoin the use of a mark. Pp. 469 U. S.
203 -205.

															718 F.2d 327, reversed and remanded.

															O'CONNOR, J., delivered the opinion of the Court, in which
BURGER, C.J., and BRENNAN, WHITE, MARSHALL, BLACKMUN, POWELL, and
REHNQUIST, JJ., joined. STEVENS, J., filed a dissenting opinion, post, p. 469 U. S.
206 . Page 469 U. S. 191 JUSTICE O'CONNOR delivered the opinion of the Court.

															In this case we consider 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. We
conclude that neither the language of the relevant statutes nor the
legislative history supports such a defense. I Petitioner operates long-term parking lots near airports. After
starting business in St. Louis in 1967, petitioner subsequently
opened facilities in Cleveland, Houston, Boston, Memphis, and San
Francisco. Petitioner applied in 1969 to the United States Patent
and Trademark Office (Patent Office) to register a service mark
consisting of the logo of an airplane and the words "Park 'N Fly."
[ Footnote 1 ] The registration
issued in August 1971. Nearly six years later, petitioner filed an
affidavit with the Patent Office to establish the incontestable
status of the mark. [ Footnote
2 ] As required by § 15 of the Trademark Act of 1946 (Lanham
Act), 60 Stat. 433, as amended, 15 U.S.C. § 1065, the affidavit
stated that the mark had been registered and in continuous use for
five consecutive years, that there had been no final adverse
decision to petitioner's claim of ownership or right to
registration, and Page 469 U. S. 192 that no proceedings involving such rights were pending.
Incontestable status provides, subject to the provisions of § 15
and § 33(b) of the Lanham Act, "conclusive evidence of the
registrant's exclusive right to use the registered mark. . . ." §
33(b), 15 U.S.C. § 1115(b).

															Respondent also provides long-term airport parking services, but
only has operations in Portland, Oregon. Respondent calls its
business "Dollar Park and Fly." Petitioner filed this infringement
action in 1978 in the United States District Court for the District
of Oregon and requested the court permanently to enjoin respondent
from using the words "Park and Fly" in connection with its
business. Respondent counterclaimed and sought cancellation of
petitioner's mark on the grounds that it is a generic term. See § 14(c), 15 U.S.C. § 1064(c). Respondent also argued
that petitioner's mark is unenforceable because it is merely
descriptive. See § 2(e), 15 U.S.C. § 1052(e). As two
additional defenses, respondent maintained that it is in privity
with a Seattle corporation that has used the expression "Park and
Fly" since a date prior to the registration of petitioner's mark, see § 33(b)(5), 15 U.S.C. § 1115(b)(5), and that it has
not infringed because there is no likelihood of confusion. See § 32(1), 15 U.S.C. § 1114(1).

															After a bench trial, the District Court found that petitioner's
mark is not generic and observed that an incontestable mark cannot
be challenged on the grounds that it is merely descriptive. App.
75. The District Court also concluded that there was no evidence of
privity between respondent and the Seattle corporation. App. 76.
Finally, the District Court found sufficient evidence of likelihood
of confusion. App. 76. The District Court permanently enjoined
respondent from using the words "Park and Fly" and any other mark
confusingly similar to "Park 'N Fly." App. 77.

															The Court of Appeals for the Ninth Circuit reversed. 718 F.2d
327 (1983). The District Court did not err, the Court of Appeals
held, in refusing to invalidate petitioner's mark. Id. at
331. The Court of Appeals noted, however, that it Page 469 U. S. 193 previously had held that incontestability provides a defense
against the cancellation of a mark, but it may not be used
offensively to enjoin another's use. Ibid. Petitioner,
under this analysis, could obtain an injunction only if its mark
would be entitled to continued registration without regard to its
incontestable status. Thus, respondent could defend the
infringement action by showing that the mark was merely
descriptive. Based on its own examination of the record, the Court
of Appeals then determined that petitioner's mark is in fact merely
descriptive, and therefore respondent should not be enjoined from
using the name "Park and Fly." Ibid. The decision below is in direct conflict with the decision of
the Court of Appeals for the Seventh Circuit in Union Carbide Corp.
v. Ever-Ready, Inc., 531 F.2d 366, cert. denied, 429 U.S.
830 (1976). We granted certiorari to resolve this conflict, 465
U.S. 1078 (1984), and we now reverse. II Congress enacted the Lanham Act in 1946 in order to provide
national protection for trademarks used in interstate and foreign
commerce. S.Rep. No. 1333, 79th Cong., 2d Sess., 5 (1946). Previous
federal legislation, such as the Federal Trademark Act of 1905, 33
Stat. 724, reflected the view that protection of trademarks was a
matter of state concern and that the right to a mark depended
solely on the common law. S.Rep. No. 1333, at 5. Consequently,
rights to trademarks were uncertain and subject to variation in
different parts of the country. Because trademarks desirably
promote competition and the maintenance of product quality,
Congress determined that "a sound public policy requires that
trademarks should receive nationally the greatest protection that
can be given them." Id. at 6. Among the new protections
created by the Lanham Act were the statutory provisions that allow
a federally registered mark to become incontestable. §§ 15, 33(b),
15 U.S.C. §§ 1065, 1115(b).

															The provisions of the Lanham Act concerning registration and
incontestability distinguish a mark that is "the common Page 469 U. S. 194 descriptive name of an article or substance" from a mark that is
"merely descriptive." §§ 2(e), 14(e), 15 U.S.C. §§ 1052(e),
1064(e). 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. Abercrombie
& Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (CA2
1976). Generic terms are not registrable, and a registered mark may
be canceled at any time on the grounds that it has become generic. See §§ 2, 14(e), 15 U.S.C. §§ 1052, 1064(e). 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." §§ 2(e), (f), 15 U.S.C. §§ 1052(e),
(f).

															This ease requires us to consider the effect of the
incontestability provisions of the Lanham Act in the context of an
infringement action defended on the grounds that the mark is merely
descriptive. Statutory construction must begin with the language
employed by Congress and the assumption that the ordinary meaning
of that language accurately expresses the legislative purpose. See American Tobacco Co. v. Patterson, 456 U. S.
63 , 456 U. S. 68 (1982). With respect to incontestable trade or service marks, §
33(b) of the Lanham Act states that "registration shall be
conclusive evidence of the registrant's exclusive right to use the
registered mark" subject to the conditions of § 15 and certain
enumerated defenses. [ Footnote
3 ] Page 469 U. S. 195 Section 15 incorporates by reference subsections (c) and (e) of
§ 14, 15 U.S.C. § 1064. An incontestable mark that becomes generic
may be canceled at any time pursuant to § 14(c). That section also
allows cancellation of an incontestable mark at any time if it has
been abandoned, if it is being used to misrepresent the source of
the goods or services in connection with which it is used, or if it
was obtained fraudulently or contrary to the provisions of § 4, 15
U.S.C. § 1054, or §§ 2(a)-(c), 15 U.S.C. §§ 1052(a)-(c). [ Footnote 4 ] Page 469 U. S. 196 One searches the language of the Lanham Act in vain to find any
support for the offensive/defensive distinction applied by the
Court of Appeals. The statute nowhere distinguishes between a
registrant's offensive and defensive use of an incontestable mark.
On the contrary, § 33(b)'s declaration that the registrant has an
"exclusive right" to use the mark indicates that incontestable
status may be used to enjoin infringement by others. A conclusion
that such infringement cannot be enjoined renders meaningless the
"exclusive right" recognized by the statute. Moreover, the language
in three of the defenses enumerated in § 33(b) clearly contemplates
the use of incontestability in infringement actions by plaintiffs. See §§ 33(b)(4)-(6), 15 U.S.C. §§ 1115(b)(4)-(6).

															The language of the Lanham Act also refutes any conclusion that
an incontestable mark may be challenged as merely descriptive. A
mark that is merely descriptive of an applicant's goods or services
is not registrable unless the mark has secondary meaning. Before a
mark achieves incontestable status, registration provides prima
facie evidence of the registrant's exclusive right to use the
mark in commerce. § 33(a), 15 U.S.C. § 1115(a). The Lanham Act
expressly provides that before a mark becomes incontestable an
opposing party may prove any legal or equitable defense which might
have been asserted if the mark had not been registered. Ibid. Thus, § 33(a) would have allowed respondent to
challenge petitioner's mark as merely descriptive if the mark had
not become incontestable. With respect to incontestable marks,
however, § 33(b) provides that registration is conclusive evidence of the registrant's exclusive right to use the mark,
subject to the conditions of § 15 and the seven defenses enumerated
in § 33(b) itself. Mere descriptiveness is not recognized by either
§ 15 or § 33(b) as a basis for challenging an incontestable
mark.

															The statutory provisions that prohibit registration of a merely
descriptive mark but do not allow an incontestable Page 469 U. S. 197 mark to be challenged on this ground cannot be attributed to
inadvertence by Congress. The Conference Committee rejected an
amendment that would have denied registration to any descriptive
mark, and instead retained the provisions allowing registration of
a merely descriptive mark that has acquired secondary meaning. See H.R.Conf.Rep. No. 2322, 79th Cong., 2d Sess., 4 (1946)
(explanatory statement of House managers). The Conference Committee
agreed to an amendment providing that no incontestable right can be
acquired in a mark that is a common descriptive, i.e., generic, term. Id. at 5. Congress could easily have denied
incontestability to merely descriptive marks as well as to generic
marks had that been its intention.

															The Court of Appeals in discussing the offensive/defensive
distinction observed that incontestability protects a registrant
against cancellation of his mark. 718 F.2d at 331. This observation
is incorrect with respect to marks that become generic or which
otherwise may be canceled at any time pursuant to §§ 14(c) and (e).
Moreover, as applied to marks that are merely descriptive, the
approach of the Court of Appeals makes incontestable status
superfluous. Without regard to its incontestable status, a mark
that has been registered five years is protected from cancellation
except on the grounds stated in §§ 14(c) and (e). Pursuant to § 14,
a mark may be canceled on the grounds that it is merely descriptive
only if the petition to cancel is filed within five years of the
date of registration. § 14(a), 15 U.S.C. § 1064(a). The approach
adopted by the Court of Appeals implies that incontestability adds
nothing to the protections against cancellation already provided in
§ 14. The decision below not only lacks support in the words of the
statute; it effectively emasculates § 33(b) under the circumstances
of this case. III Nothing in the legislative history of the Lanham Act supports a
departure from the plain language of the statutory Page 469 U. S. 198 provisions concerning incontestability. Indeed, a conclusion
that incontestable status can provide the basis for enforcement of
the registrant's exclusive right to use a trade or service mark
promotes the goals of the statute. The Lanham Act provides national
protection of trademarks in order to secure to the owner of the
mark the goodwill of his business and to protect the ability of
consumers to distinguish among competing producers. See S.Rep. No. 1333, at 3, 5. National protection of trademarks is
desirable, Congress concluded, because trademarks foster
competition and the maintenance of quality by securing to the
producer the benefits of good reputation. Id. at 4. The
incontestability provisions, as the proponents of the Lanham Act
emphasized, provide a means for the registrant to quiet title in
the ownership of his mark. See Hearings on H.R. 82 before
the Subcommittee of the Senate Committee on Patents, 78th Cong., 2d
Sess., 21 (1944) (remarks of Rep. Lanham); id. at 21, 113
(testimony of Daptane Robert, ABA Committee on Trade Mark
Legislation); Hearings on H.R. 102 et al. before the
Subcommittee on Trade-Marks of the House Committee on Patents, 77th
Cong., 1st Sess., 73 (1941) (remarks of Rep. Lanham). The
opportunity to obtain incontestable status by satisfying the
requirements of § 15 thus encourages producers to cultivate the
goodwill associated with a particular mark. This function of the
incontestability provisions would be utterly frustrated if the
holder of an incontestable mark could not enjoin infringement by
others so long as they established that the mark would not be
registrable but for its incontestable status.

															Respondent argues, however, that enforcing petitioner's mark
would conflict with the goals of the Lanham Act because the mark is
merely descriptive and should never have been registered in the
first place. [ Footnote 5 ]
Representative Lanham, Page 469 U. S. 199 respondent notes, explained that the defenses enumerated in §
33(b) were

															"not intended to enlarge, restrict, amend, or modify the
substantive law of trademarks either as set out in other sections
of the act or as heretofore applied by the courts under prior
laws."

															92 Cong.Rec. 7524 (1946). Respondent reasons that, because the
Lanham Act did not alter the substantive law of trademarks, the
incontestability provisions cannot protect petitioner's use of the
mark if it were not originally registrable. Moreover, inasmuch as
petitioner's mark is merely descriptive, respondent contends that
enjoining others from using the mark will not encourage competition
by assisting consumers in their ability to distinguish among
competing producers.

															These arguments are unpersuasive. Representative Lanham's
remarks, if read in context, clearly refer to the effect of the defenses enumerated in § 33(b). [ Footnote 6 ] There is no question that the Lanham Act
altered existing law concerning trademark rights in several
respects. For example, § 22, Page 469 U. S. 200 15 U.S.C. § 1072, provides for constructive notice of
registration and modifies the common law rule that allowed
acquisition of concurrent rights by users in distinct geographic
areas if the subsequent user adopted the mark without knowledge of
prior use. See Hanover Star Milling Co. v. Metcalf, 240 U. S. 403 , 240 U. S.
415 -416 (1916) (describing pre-Lanham Act law).
Similarly, § 14 cuts off certain grounds for cancellation five
years after registration and thereby modifies the previous rule
that the validity of a trademark could be attacked at any time. See White House Milk Products Co. v. Dwinell-Wright Co., 27 C. C. P. A. (Pat.) 1194, 111 F.2d 490 (1940). Most
significantly, Representative Lanham himself observed that
incontestability was one of "the valuable new rights created by the
act." 92 Cong.Rec. 7524 (1946).

															Respondent's argument that enforcing petitioner's mark will not
promote the goals of the Lanham Act is misdirected. Arguments
similar to those now urged by respondent were in fact considered by
Congress in hearings on the Lanham Act. For example, the United
States Department of Justice opposed the incontestability
provisions and expressly noted that a merely descriptive mark might
become incontestable. Hearings on H.R. 82, at 59-60 (statement of
the U.S. Dept. of Justice). This result, the Department of Justice
observed, would "go beyond existing law in conferring unprecedented
rights on trade-mark owners," and would undesirably create an
exclusive right to use language that is descriptive of a product. Id. at 60; see also Hearings on H.R. 102, at
106-107, 109-110 (testimony of Prof. Milton Handler); id. at 107, 175 (testimony of attorney Louis Robertson). These concerns
were answered by proponents of the Lanham Act, who noted that a
merely descriptive mark cannot be registered unless the
Commissioner finds that it has secondary meaning. Id. at
108, 113 (testimony of Karl Pohl, U.S. Trade Mark Assn.). Moreover,
a mark can be challenged for Page 469 U. S. 201 five years prior to its attaining incontestable status. Id. at 114 (remarks of Rep. Lanham). The supporters of the
incontestability provisions further observed that a generic mark
cannot become incontestable and that § 33(b)(4) allows the
non-trademark use of descriptive terms used in an incontestable
mark. Id. at 110-111 (testimony of Wallace Martin,
chairman, ABA Committee on Trade Mark Legislation).

															The alternative of refusing to provide incontestable status for
descriptive marks with secondary meaning was expressly noted in the
hearings on the Lanham Act. Id. at 64, 69 (testimony of
Robert Byerley, New York Patent Law Assn.); Hearings on S. 895
before the Subcommittee of the Senate Committee on Patents, 77th
Cong., 2d Sess., 42 (1942) (testimony of Elliot Moyer, Special
Assistant to the Attorney General). Also mentioned was the
possibility of including as a defense to infringement of an
incontestable mark the "fact that a mark is a descriptive, generic,
or geographical term or device." Id. at 45, 47. Congress,
however, did not adopt either of these alternatives. Instead,
Congress expressly provided in §§ 33(b) and 15 that an
incontestable mark could be challenged on specified grounds, and
the grounds identified by Congress do not include mere
descriptiveness.

															The dissent echoes arguments made by opponents of the Lanham Act
that the incontestable status of a descriptive mark might take from
the public domain language that is merely descriptive. Post at 469 U. S.
214 -216. As we have explained, Congress has already
addressed concerns to prevent the "commercial monopolization," post at 469 U. S. 214 ,
of descriptive language. The Lanham Act allows a mark to be
challenged at any time if it becomes generic, and, under certain
circumstances, permits the non-trademark use of descriptive terms
contained in an incontestable mark. Finally, if "monopolization" of
an incontestable mark threatens economic competition, § 33(b)(7),
15 U.S.C. § 1115(b)(7), provides a defense on the grounds that the
mark is being used to violate federal Page 469 U. S. 202 antitrust laws. At bottom, the dissent simply disagrees with the
balance struck by Congress in determining the protection to be
given to incontestable marks. IV Respondent argues that the decision by the Court of Appeals
should be upheld because trademark registrations are issued by the
Patent Office after an ex parte proceeding and generally
without inquiry into the merits of an application. This argument
also unravels upon close examination. The facts of this case belie
the suggestion that registration is virtually automatic. The Patent
Office initially denied petitioner's application because the
examiner considered the mark to be merely descriptive. Petitioner
sought reconsideration and successfully persuaded the Patent Office
that its mark was registrable.

															More generally, respondent is simply wrong to suggest that third
parties do not have an opportunity to challenge applications for
trademark registration. If the Patent Office examiner determines
that an applicant appears to be entitled to registration, the mark
is published in the Official Gazette. § 12(a), 15 U.S.C. § 1062(a).
Within 30 days of publication, any person who believes that he
would be damaged by registration of the mark may file an
opposition. § 13, 15 U.S.C. § 1063. Registration of a mark provides
constructive notice throughout the United States of the
registrant's claim to ownership. § 22, 15 U.S.C. § 1072. Within
five years of registration, any person who believes that he is or
will be damaged by registration may seek to cancel a mark. § 14(a),
15 U.S.C. § 1064(a). A mark may be canceled at any time for certain
specified grounds, including that it was obtained fraudulently or
has become generic. § 14(c), 15 U.S.C. § 1064(c).

															The Lanham Act, as the dissent notes, post at 469 U. S. 217 ,
authorizes courts to grant injunctions "according to principles of
equity." § 34, 15 U.S.C. § 1116. Neither respondent nor the opinion
of the Court of Appeals relies on this provision Page 469 U. S. 203 to support the holding below. Whatever the precise boundaries of
the courts' equitable power, we do not believe that it encompasses
a substantive challenge to the validity of an incontestable mark on
the grounds that it lacks secondary meaning. To conclude otherwise
would expand the meaning of "equity" to the point of vitiating the
more specific provisions of the Lanham Act. [ Footnote 7 ] Similarly, the power of the courts to
cancel registrations and "to otherwise rectify the register," § 37,
15 U.S.C. § 1119, must be subject to the specific provisions
concerning incontestability. In effect, both respondent and the
dissent argue that these provisions offer insufficient protection
against improper registration of a merely descriptive mark, and
therefore the validity of petitioner's mark may be challenged
notwithstanding its incontestable status. Our responsibility,
however, is not to evaluate the wisdom of the legislative
determinations reflected in the statute, but instead to construe
and apply the provisions that Congress enacted. V The Court of Appeals did not attempt to justify its decision by
reference to the language or legislative history of the Lanham Act.
Instead, the court relied on its previous decision in Tillamook
County Creamery v. Tillamook Cheese & Dairy Assn., 345
F.2d 158, 163 (CA9), cert. denied, 382 U.S. 903 (1965),
for the proposition that a registrant may not rely on
incontestability to enjoin the use of the mark by others.
Examination of Tillamook, however, reveals that there is
no persuasive justification for the judicially created distinction
between offensive and defensive use of an incontestable mark. Page 469 U. S. 204 Tillamook discussed in dicta the offensive/defensive
distinction and observed that incontestability protects a
registrant against cancellation but cannot be used to obtain relief
from an infringing use. Tillamook 's authority for this
proposition was John Morrell & Co. v. Reliable Packing
Co., 295 F.2d 314, 316 (CA7 1961), which did reverse a finding
of infringement on the grounds that incontestable status confers
only defensive rights. The Court of Appeals for the Seventh Circuit
based its holding in John Morrell on Rand McNally
& Co. v. Christmas Club, 105 U.S.P.Q. 499 (1955), aff'd, 44 C. C. P. A. 861 (Pat.), 242 F.2d 776 (1957), but
the latter case did not in fact involve the use of an incontestable
mark in an enforcement action.

															The Patent Office in Rand McNally denied a petition to
cancel a mark challenged as merely descriptive. The petitioner
feared that, if the mark became incontestable, use of the same mark
in connection with a service different from the one specified in
the registration could be enjoined. 105 U.S.P.Q., at 500. The
Assistant Commissioner of Patents answered this concern by
observing that an incontestable mark does not provide the
registrant "with an offensive weapon' of any greater magnitude
than that which it has had since the registration issued. . . ." Id. at 501. These comments do not suggest that
incontestability may never provide the basis for injunctive relief,
but instead indicate that a mark may not be expanded beyond the
good or service for which it was originally designated. John Morrell, the judicial authority providing the most
direct support for the decision below, was subsequently overruled
in Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366
(CA7), cert. denied, 429 U.S. 830 (1976). In Union
Carbide the Court of Appeals for the Seventh Circuit
acknowledged that its earlier decision in John Morrell was
unsupported by the language or legislative history of the Lanham
Act and had been based on a misreading of Rand McNally. 531 F.2d at 373, 377. A registrant may rely on Page 469 U. S. 205 the incontestable status of the mark in an infringement action, Union Carbide concluded, and a " [d]efendant faced with
an incontestable registered mark cannot defend by claiming that the
mark is invalid because it is descriptive.'" Id. at 377
(quoting 1 J. McCarthy, Trademarks and Unfair Competition § 11.16,
p. 377 (1st ed.1973)). Other courts have subsequently followed Union Carbide and concluded that a plaintiff may rely on the incontestable status
of a trade or service mark in an infringement action. See,
e.g., United States Jaycees v. Philadelphia Jaycees, 639 F.2d
134, 137 (CA3 1981); Soweco, Inc. v. Shell Oil Co., 617
F.2d 1178, 1184-1185 (CA5 1980), cert. denied, 450 U.S.
981 (1981). The Patent Office has also rejected any
offensive/defensive distinction with respect to the use of an
incontestable mark. See Ansull Co. v. Malter International
Corp., 199 U.S.P.Q. 596, 599-600 (TTAB 1978). Thus, the
doctrine relied on by the Court of Appeals in this case is best
described as flawed in its origin and subsequently discredited by
its progenitors. VI We conclude that the holder of a registered mark may rely on
incontestability to enjoin infringement and that such an action may
not be defended on the grounds that the mark is merely descriptive.
Respondent urges that we nevertheless affirm the decision below
based on the "prior use" defense recognized by § 33(b)(5) of the
Lanham Act. Alternatively, respondent argues that there is no
likelihood of confusion and therefore no infringement justifying
injunctive relief. The District Court rejected each of these
arguments, but they were not addressed by the Court of Appeals. 718
F.2d at 331-332, n. 4. That court may consider them on remand. The
judgment of the Court of Appeals is reversed, and the case is
remanded for further proceedings consistent with this opinion. It is so ordered. Page 469 U. S. 206 [ Footnote 1 ]

															The Trademark Act of 1946 (Lanham Act), 60 Stat. 427, as
amended, 15 U.S.C. 1051 et seq., generally applies the
same principles concerning registration and protection to both
trade and service marks. See § 3, 15 U.S.C. § 1053. The
Lanham Act defines a trademark to include

															"any word, name, symbol, or device or any combination thereof
adopted and used by a manufacturer or merchant to identify his
goods and distinguish them from those manufactured or sold by
others."

															§ 15, 15 U.S.C. § 1127. A service mark is "a mark used in the
sale or advertising of services to identify the services of one
person and distinguish them from the services of others." Ibid. [ Footnote 2 ]

															Petitioner also applied in 1977 to register a mark consisting
only of the words "Park 'N Fly." That mark issued in 1979, but has
not become incontestable. The existence of this mark does not
affect our resolution of the issues in this case.

															[ Footnote 3 ]

															Section 33(b) of the Lanham Act, as set forth in 15 U.S.C. §
1115(b), provides:

															"If the right to use the registered mark has become
incontestable under section 1065 of this title, the registration
shall be conclusive evidence of the registrant's exclusive right to
use the registered mark in commerce or in connection with the goods
or services specified in the affidavit filed under the provisions
of said section 1065 subject to any conditions or limitations
stated therein except when one of the following defenses or defects
is established:"

															"(1) That the registration or the incontestable right to use the
mark was obtained fraudulently; or"

															"(2) That the mark has been abandoned by the registrant: or"

															"(3) That the registered mark is being used, by or with the
permission of the registrant or a person in privity with the
registrant, so as to misrepresent the source of the goods or
services in connection with which the mark is used; or"

															"(4) That the use of the name, term, or device charged to be an
infringement is a use, otherwise than as a trade or service mark,
of the party's individual name in his own business, or of the
individual name of anyone in privity with such party, or of a term
or device which is descriptive of and used fairly and in good faith
only to describe to users the goods or services of such party, or
their geographic origin; or"

															"(5) That the mark whose use by a party is charged as an
infringement was adopted without knowledge of the registrant's
prior use and has been continuously used by such party or those in
privity with him from a date prior to registration of the mark
under this chapter or publication of the registered mark under
subsection (c) of section 1062 of this title: Provided,
however, That this defense or defect shall apply only for the
area in which such continuous prior use is proved; or"

															"(6) That the mark whose use is charged as an infringement was
registered and used prior to the registration under this chapter or
publication under subsection (c) of section 1062 of this title of
the registered mark of the registrant, and not abandoned: Provided, however, That this defense or defect shall apply
only for the area in which the mark was used prior to such
registration or such publication of the registrant's mark; or"

															"(7) That the mark has been or is being used to violate the
antitrust laws of the United States."

															[ Footnote 4 ]

															Sections 2(a)-(c) prohibit registration of marks containing
specified subject matter, e.g., the flag of the United
States. Sections 4 and 14(e) concern certification marks and are
inapplicable to this case.

															[ Footnote 5 ]

															The dissent similarly takes the position that the mark as
improperly issued because it as descriptive and petitioner failed
to prove that it had secondary meaning. Post at 469 U. S.
206 -207. Neither the District Court nor the Court of
Appeals made any finding whether the mark was properly issued in
1971. After the Patent Office denied the initial application for
registration in 1970, petitioner filed a request for
reconsideration arguing that the mark was not descriptive. App.
54-56. The Patent Office subsequently granted registration without
specifying whether the mark had secondary meaning or instead was
not descriptive. Id. at 57-59. Unlike the dissent, we
decline to determine in the first instance whether the mark
improperly issued. Our holding is not affected by the possibility
that the mark was or has become merely descriptive.

															[ Footnote 6 ]

															Representative Lanham made his remarks to clarify that the seven
defenses enumerated in § 33(b) are not substantive rules of law
which go to the validity or enforceability of an incontestable
mark. 92 Cong.Rec. 7524 (1946). Instead, the defenses affect the
evidentiary status of registration where the owner claims the
benefit of a mark's incontestable status. If one of the defenses is
established, registration constitutes only prima facie and not
conclusive evidence of the owner's right to exclusive use of the
mark. Ibid. See also H.R.Conf.Rep. No. 2322, 79th
Cong., 2d Sess., 6 (1946) (explanatory statement of House
managers).

															[ Footnote 7 ]

															We note, however, that we need not address in this case whether
traditional equitable defenses such as estoppel or laches are
available in an action to enforce an incontestable mark. See generally Comment, Incontestable Trademark Rights and
Equitable Defenses in Infringement Litigation, 66 Minn. I,. Rev.
1067 (1982).

															JUSTICE STEVENS, dissenting.

															In trademark law, the term "incontestable" is itself somewhat
confusing and misleading because the Lanham Act expressly
identifies over 20 situations in which infringement of an allegedly
incontestable mark is permitted. [ Footnote 2/1 ] Moreover, in § 37 of the Act, Congress
unambiguously authorized judicial review of the validity of the
registration "in any action involving a registered mark." [ Footnote 2/2 ] The problem in this case
arises because of petitioner's attempt to enforce as
"incontestable" a mark that Congress has plainly stated is
inherently unregisterable.

															The mark "Park 'N Fly" is at best merely descriptive in the
context of airport parking. [ Footnote
2/3 ] Section 2 of the Lanham Act Page 469 U. S. 207 plainly prohibits the registration of such a mark unless the
applicant proves to the Commissioner of the Patent and Trademark
Office that the mark "has become distinctive of the applicant's
goods in commerce," or to use the accepted shorthand, that it has
acquired a "secondary meaning." See 15 U.S.C. §§ 1052(e),
(f). Petitioner never submitted any such proof to the Commissioner,
or indeed to the District Court in this case. Thus, the
registration plainly violated the Act.

															The violation of the literal wording of the Act also contravened
the central purpose of the entire legislative scheme. Statutory
protection for trademarks was granted in order to safeguard the
goodwill that is associated with particular enterprises. [ Footnote 2/4 ] A mark must perform the
function of distinguishing the producer or provider of a good or
service in order to have any legitimate claim to protection. A
merely descriptive mark that has not acquired secondary meaning
does not perform that function because it simply "describes the
qualities or characteristics of a good or service." Ante at 469 U. S. 194 .
No legislative purpose is served by granting anyone a monopoly in
the use of such a mark.

															Instead of confronting the question whether an inherently
unregistrable mark can provide the basis for an injunction against
alleged infringement, the Court treats the case as though it
presented the same question as Union Carbide Corp. v.
Ever-Ready, Inc., 531 F.2d 366 (CA7), cert. denied, 429 U.S. 830 (1976), a case in which the merely descriptive mark
had an obvious and well-established secondary meaning. In such a
case, I would agree with the Court that the descriptive character
of the mark does not provide an infringer with a defense. In this
case, however, the provisions Page 469 U. S. 208 of the Act dealing with incontestable marks do not support the
result the Court has reached. I shall first explain why I agree
with the conclusion that the Court of Appeals reached; I shall then
comment on each of the three arguments that the Court advances in
support of its contrary conclusion. I The word "incontestable" is not defined in the Act. Nor,
surprisingly, is the concept explained in the Committee Reports on
the bill that was enacted in 1946. [ Footnote 2/5 ] The word itself implies that it was
intended to resolve potential contests between rival claimants to a
particular mark. And, indeed, the testimony of the proponents of
the concept in the Committee hearings that occurred from time to
time during the period when this legislation was being considered
reveals that they were primarily concerned with the problem that
potential contests over the ownership of registrable marks might
present. [ Footnote 2/6 ] No one ever
suggested that any public purpose would be served by granting
incontestable status to a mark that should never have been accepted
for registration in the first instance.

															In those hearings the witnesses frequently referred to
incontestability as comparable to a decree quieting title to real
property. [ Footnote 2/7 ] Such a
decree forecloses any further contest over ownership of the
property, but it cannot create the property itself. Similarly the
incontestability of a trademark Page 469 U. S. 209 precludes any competitor from contesting the registrant's
ownership, but cannot convert unregistrable subject matter into a
valid mark. Such a claim would be clearly unenforceable. [ Footnote 2/8 ]

															The case that petitioner principally urges in support of
reversal, Union Carbide Corp., v. Ever-Ready, Inc., supra, does not conflict with this simple proposition. The court there was
dealing with a contest between two companies over the name
"Eveready." There was no question that the name had acquired a
well-established secondary meaning, although it was not originally
registered under § 1052(f). [ Footnote
2/9 ] The problem presented in such a case is properly resolved
by Page 469 U. S. 210 giving effect to the incontestable language of the Act, but a
wholly different question is presented when the record establishes
that a mark should not have been registered at all.

															The legislative history of the incontestability provisions
indicates that Congress did not intend to prevent the use of mere
descriptiveness as a substantive defense to a claim of infringement
if the mark has not acquired secondary meaning. The testimony in
the Committee hearings concerning the public interest in preventing
the grant of monopoly privileges in the use of merely descriptive
phrases expressly relied on the administrative practice that was
incorporated into § 2(f), 15 U.S.C. § 1052(f), [ Footnote 2/10 ] as a protection against the
improper registration of merely descriptive marks. Thus, Dr. Karl
Pohl testified:

															"On the question of so-called nontechnical trademarks, Professor
Handler assumes that they have been improperly registered."

															"Now, where does that idea originate?"

															"They have very carefully circumscribed procedure for getting
these marks on the register. It will by no means be easy, Mr.
Chairman and gentlemen of the committee, it will be exceedingly
difficult to get these descriptive words on the register. The
Patent Office will, in the first place, reject them, and you will
have Page 469 U. S. 211 to submit a substantial body of evidence that these words by
long-continued usage, have acquired a secondary meaning, and by
that long-continued usage have acquired that special status which
entitles them to be protected in their secondary meaning
sense."

															"Therefore, to call these marks improperly registered
trade-marks is, I believe, a misnomer."

															"Now, if you look at the problem from that point of view, you
will see that the apprehensions of Mr. Handler are more or less
obviated. I believe personally that they are completely obviated,
but as to nontechnical trademarks and only a very carefully
circumscribed number of trade-marks will be entitled to that
protection. [ Footnote 2/11 ]"

															The record in this case demonstrates that Professor Handler's
concern was justified, and that Dr. Pohl's assurance to the
Committee was somewhat misleading; for the "Park 'N Fly" mark
issued without any evidence of secondary meaning having been
presented to the Patent and Trademark Office. In light of this
legislative history, it is apparent that Congress could not have
intended that incontestability should preserve a merely descriptive
trademark from challenge when the statutory procedure for
establishing secondary meaning was not followed and when the record
still contains no evidence that the mark has ever acquired a
secondary meaning.

															If the registrant of a merely descriptive mark complies with the
statutory requirement that prima facie evidence of
secondary meaning must be submitted to the Patent and Trademark
Office, it is entirely consistent with the policy of the Act to
accord the mark incontestable status after an additional Page 469 U. S. 212 five years of continued use. For if no rival contests the
registration in that period, it is reasonable to presume that the
initial prima facie showing of distinctiveness could not
be rebutted. But if no proof of secondary meaning is ever
presented, either to the Patent and Trademark Office or to a court,
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.

															No matter how dedicated and how competent administrators may be,
the possibility of error is always present, [ Footnote 2/12 ] especially in nonadversary proceedings.
[ Footnote 2/13 ] For that
reason, Page 469 U. S. 213 the Court normally assumes that Congress intended agency action
to be subject to judicial review unless the contrary intent is
expressed in clear and unambiguous language. [ Footnote 2/14 ] In this statute Congress has
expressed no such intent. On the contrary, it has given the courts
the broadest possible authority to determine the validity of
trademark registrations "in any action involving a registered
mark." [ Footnote 2/15 ] The
exercise of that broad power of judicial review should be informed
by the legislative purposes that motivated the enactment of the
Lanham Act. [ Footnote 2/16 ]

															Congress enacted the Lanham Act "to secure trade-mark owners in
the goodwill which they have built up." [ Footnote 2/17 ] But without a showing of secondary
meaning, there is no basis upon which to conclude that petitioner
has built up any goodwill that is secured by the mark "Park 'N
Fly." In fact, without a showing of secondary meaning, we should
presume Page 469 U. S. 214 that petitioner's business appears to the consuming public to be
just another anonymous, indistinguishable parking lot. When
enacting the Lanham Act, Congress also wanted to "protect the
public from imposition by the use of counterfeit and imitated marks
and false trade descriptions." [ Footnote 2/18 ] Upon this record there appears no danger
of this occurrence, and as a practical matter, without any showing
that the public can specifically identify petitioner's service, it
seems difficult to believe that anyone would imitate petitioner's
marks, or that such imitation, even if it occurred, would be likely
to confuse anybody. [ Footnote
2/19 ]

															On the basis of the record in this case, it is reasonable to
infer that the operators of parking lots in the vicinity of
airports may make use of the words "park and fly" simply because
those words provide a ready description of their businesses, rather
than because of any desire to exploit petitioner's goodwill.
[ Footnote 2/20 ] There is a
well-recognized public interest in prohibiting the commercial
monopolization of Page 469 U. S. 215 phrases such as "park and fly." When a business claims the
exclusive right to use words or phrases that are a part of our
common vocabulary, this Court should not depart from the
statutorily mandated authority to "rectify the register," 15 U.S.C.
§ 1119, absent a clear congressional mandate. Language, even in a
commercial context, properly belongs to the public unless Congress
instructs otherwise. [ Footnote
2/21 ] In this case we have no such instruction; in fact, the
opposite command guides our actions: Congress' clear insistence
that a merely descriptive mark, such as "Park 'N Fly" in the
context of airport parking, remain in the public domain unless
secondary meaning is proved.

															The basic purposes of the Act, the unambiguous congressional
command that no merely descriptive mark should be registered
without prior proof that it acquired secondary meaning, and the
broad power of judicial review granted by § 37 combine to persuade
me that the registrant of a merely descriptive mark should not be
granted an injunction against Page 469 U. S. 216 infringement without ever proving that the mark acquired
secondary meaning. II The Court relies on three different, though not unrelated,
arguments to support its negative answer to the question "whether
an action to enjoin the infringement of an incontestable mark may
be defended on the grounds that the mark is merely descriptive," ante at 469 U. S. 191 :
(1) the language of § 33(b) is too plain to prevent any other
conclusion; (2) the legislative history indicates that Congress
decided not to deny incontestable status to merely descriptive
marks; and (3) the practical value of incontestable status would be
nullified if the defense were recognized. Each of these arguments
is unpersuasive. The Plain Language After the right to use a registered mark has become
incontestable, § 33(b) provides that "the registration shall be
conclusive evidence of the registrant's exclusive right to use the
registered mark." 15 U.S.C. § 1115(b). Read in isolation, this
provision surely does lend support to the Court's holding. Indeed,
an isolated and literal reading of this language would seem to
foreclose any non-statutory defense to an action to enjoin the
infringement of an incontestable mark. The Court, however,
wisely-refuses to adopt any such rigid interpretation of § 33(b).
[ Footnote 2/22 ] Page 469 U. S. 217 An examination of other provisions of the Act plainly
demonstrates that no right to injunctive relief against
infringement automatically follows from the achievement of
incontestable status. Thus, § 34 states that courts with proper
jurisdiction "shall have power to grant injunctions, according to
the principles of equity and upon such terms as the court may deem
reasonable." 15 U.S.C. § 1116. If a registrant establishes the
violation of any right, § 35 additionally emphasizes that any
recovery shall be "subject to the principles of equity." 15 U.S.C.
§ 1117. These sections are in addition to the broad power that § 37
grants to courts in "any action involving a registered mark" to

															"determine the right to registration, order the cancelation of
registrations, in whole or in part, restore canceled registrations,
and otherwise rectify the register with respect to the
registrations of any party to the action."

															15 U.S.C. § 1119. Moreover, it is well established that
injunctions do not issue as a matter of course, [ Footnote 2/23 ] and that "the essence of equity
jurisdiction has been the power of the Chancellor to do equity,"
[ Footnote 2/24 ] particularly when
an important public interest is involved. [ Footnote 2/25 ] Page 469 U. S. 218 In exercising its broad power to do equity, the federal courts
certainly can take into account the tension between the apparent
meaning of § 33(b) and the plain command in §§ 2(e), (f) of the Act
prohibiting the registration of a merely descriptive mark without
any proof of secondary meaning. Because it would be "demonstrably
at odds with the intent of [Congress]" [ Footnote 2/26 ] to grant incontestable status to a mark
that was not eligible for registration in the first place, the
Court is surely authorized to require compliance with § 2(f) before
granting relief on the basis of § 33(b). [ Footnote 2/27 ] The Legislative History The language of §§ 2(e), (f) expressly demonstrates Congress'
concern over granting monopoly privileges in merely descriptive
marks. However, its failure to include mere descriptiveness in its
laundry list of grounds on which incontestability could be
challenged is interpreted by the Court today as evidence of
congressional approval of incontestable status for all merely
descriptive marks.

															This history is unpersuasive because it is perfectly clear that
the failure to include mere descriptiveness among the grounds for
challenging incontestability was based on the understanding that
such a mark would not be registered without a showing of secondary
meaning. See supra, at 469 U. S.
210 -211. To read Congress' failure as equivalent to an
endorsement of incontestable status for merely descriptive Page 469 U. S. 219 marks without secondary meaning can only be described as
perverse. The Practical Argument The Court suggests that my reading of the Act "effectively
emasculates § 33(b) under the circumstances of this case." Ante at 469 U. S. 197 .
But my reading would simply require the owner of a merely
descriptive mark to prove secondary meaning before obtaining any
benefit from incontestability. If a mark is in fact "distinctive of
the applicant's goods in commerce" as § 2(f) requires, that burden
should not be onerous. If the mark does not have any such secondary
meaning, the burden of course could not be met. But if that be the
case, the purposes of the Act are served, not frustrated, by
requiring adherence to the statutory procedure mandated by
Congress. [ Footnote 2/28 ] Page 469 U. S. 220 In sum, if petitioner had complied with § 2(f) at the time of
its initial registration, or if it had been able to prove secondary
meaning in this case, I would agree with the Court's disposition. I
cannot, however, subscribe to its conclusion that the holder of a
mark which was registered in violation of an unambiguous statutory
command "may rely on incontestability to enjoin infringement." Ante at 469 U. S. 205 ; see also ante at 469 U. S. 196 .
Accordingly, I respectfully dissent.

															[ Footnote 2/1 ]

															Section 33(b) enumerates seven categories of defenses to an
action to enforce an incontestable mark. See 15 U.S.C. §
1115(b), quoted ante at 469 U. S. 194 ,
n. 3. In addition, a defendant is free to argue that a mark should
never have become incontestable for any of the four reasons
enumerated in § 15. 15 U.S.C. § 1065. Moreover, § 15 expressly
provides that an incontestable mark may be challenged on any of the
grounds set forth in subsections (c) and (e) of § 14, 15 U.S.C. §
1064, and those sections, in turn, incorporate the objections to
registrability that are defined in §§ 2(a), 2(b), and 2(c) of the
Act. 15 U.S.C. §§ 1052(a), (b), and (c).

															[ Footnote 2/2 ]

															Section 37, in pertinent part, provides:

															"In any action involving a registered mark the court may
determine the right to registration, order the cancelation of
registrations in whole or in part, restore canceled registrations,
and otherwise rectify the register with respect to the
registrations of any party to the action."

															15 U.S.C. § 1119.

															[ Footnote 2/3 ]

															In the Court of Appeals petitioner argued that its mark was
suggestive with respect to airport parking lots. The Court of
Appeals responded:

															"We are unpersuaded. Given the clarity of its first word, Park
'N Fly's mark seen in context can be understood readily by
consumers as an offering of airport parking -- imagination,
thought, or perception is not needed. Simply understood, 'park and
fly' is a clear and concise description of a characteristic or
ingredient of the service offered -- the customer parks his car and
flies from the airport. We conclude that Park 'N Fly's mark used in
the context of airport parking is, at best, a merely descriptive
mark."

															718 F.2d 327, 331 (CA9 1983).

															Although the Court appears to speculate that even though the
mark is now merely descriptive it might not have been merely
descriptive in 1971 when it as first registered, see ante at 469 U. S.
198 -199, n. 5, I find such speculation totally
unpersuasive. But even if the Court's speculation were valid, the
entire rationale of its opinion is based on the assumption that the
mark is in the "merely descriptive" category. See, for
example, the statement of the question presented, ante, at
191.

															[ Footnote 2/4 ]

															Rep. No. 1333, 79th Cong., 2d Sess., 5 (1946).

															[ Footnote 2/5 ] See S.Rep. No. 1333, 79th Cong., 2d Sess. (1946),
H.R.Conf.Rep. No. 2322, 79th Cong., 2d Sess. (1946).

															[ Footnote 2/6 ]

															Hearing on H.R. 102, H.R. 5461, and S. 895 before the
Subcommittee on Trade-Marks of the House Committee on Patents, 77th
Cong., 1st Sess., 48 (1941) (statement of Charles Kramer, Chairman,
House Committee on Patents); id. at 51, 193-194.

															[ Footnote 2/7 ]

															Hearings on H.R. 82 before the Subcommittee of the Senate
Committee on Patents, 78th Cong., 2d Sess., 21 (1944) (statements
of Rep. Lanham); id. at 21, 112 (testimony of Daptane
Robert, ABA Committee on Trade Mark Legislation); Hearings on H.R.
102, H.R. 5461, and S. 895, supra, at 73 (statements of
Rep. Lanham).

															[ Footnote 2/8 ]

															This distinction is not new. In 1875 and 1883 Great Britain
enacted statutes which provided, in essence, that registration was
conclusive evidence of the registrant's right to the exclusive use
of the mark after the expiration of five years following
registration. See An Act to Establish a Register of Trade
Marks, 38 & 39 Vict., ch. 91, § 3 (1875); An Act to Amend and
Consolidate the Law Relating to Patents for Inventions,
Registration of Designs, and of Trade Marks, 46 & 47 Vict., ch.
57, § 76 (1883). Those statutes did not use the word
"incontestable," but in other respects there is a striking
similarity between the language of those Acts and the relevant
provision of the Lanham Act that we construe today. It is
noteworthy that the English judges refused to give the statutory
language its plain meaning if a showing was made that the mark had
not been properly registered in the beginning. See Edwards v.
Dennis, 30 Ch.D. 454 (1885); Jackson & Co. v. Napper
(Re Schmidt's Trade-Mark), 4 Rep.Pat.Cas. 45 (1886); cf.
In re J. B. Palmer's Trade-Mark, 24 Ch. D. 504 (1883).

															[ Footnote 2/9 ]

															Although its conclusion regarding secondary meaning was
contained in an alternative holding, it seems clear that the
distinctiveness of the mark heavily influenced the Court of
Appeals' disposition regarding incontestability. The court
wrote:

															"[W]e find it difficult to believe that anyone living in our
society, which has daily familiarity with hundreds of
battery-operated products, can be other than thoroughly acquainted
with the EVEREADY mark. While perhaps not many know that Carbide is
the manufacturer of EVEREADY products, few would have any doubt
that the term was being utilized other than to indicate the single,
though anonymous, source. A court should not play the ostrich with
regard to such general public knowledge."

															531 F.2d at 381.

															[ Footnote 2/10 ]

															As I have already noted, § 2(e), 15 U.S.C. § 1052(e), expressly
prohibits the registration of a merely descriptive mark. The
exception from that prohibition, which petitioner did not satisfy
in processing its application, reads as follows:

															"Except as expressly excluded in paragraphs (a), (b), (c), and
(d) of this section, nothing in this chapter shall prevent the
registration of a mark used by the applicant which has become
distinctive of the applicant's goods in commerce. The Commissioner
may accept as prima facie evidence that the mark has
become distinctive, as applied to the applicant's goods in
commerce, proof of substantially exclusive and continuous use
thereof as a mark by the applicant in commerce for the five years
next preceding the date of the filing of the application for its
registration. "

															15 U.S.C. § 1052(f) (emphasis added).

															[ Footnote 2/11 ]

															Hearings on H.R. 102, H.R. 5461, and S. 895 before the
Subcommittee on Trade-Marks of the House Committee on Patents, supra n. 469
U.S. 189 fn2/6|>6, at 113. Dr. Pohl appealed in the hearings
on behalf of the New York Merchants' Association Trade-mark
Committee and as a member of the Coordination Committee. Id. at 136.

															[ Footnote 2/12 ]

															Recently, Gerald J. Mossinghoff, Assistant Secretary and
Commissioner of Patents and Trademarks, gave the following
testimony before Congress:

															"[O]ne of the biggest problems we have had is that, at any one
time, about 7 percent of our 25 million documents are either
missing or misfiled. The paper system was set up in 1836 and has
remained virtually unchanged since then. During that time it simply
has deteriorated to the point where 7 percent of the documents are
missing."

															Hearing before the Subcommittee on Patents, Copyrights and
Trademarks of the Senate Committee on the Judiciary, 98th Cong.,
1st Sess., 5 (1983).

															[ Footnote 2/13 ]

															One treatise gives the following "advice" regarding
registration:

															"Registration on the Principal Register should be attempted if
it is at all possible. As a matter of strategy, an applicant should
not in the application concede that the term falls within any of
the statutory bars of § 2(e) which require proof of secondary
meaning under § 2(f). The applicant should let the Trademark
Examiner prove that the term falls within one of the categories of
§ 2(e). Since an ex parte application is like a contested
proceeding between the applicant and the Federal Government, the
applicant can merely await the Examiner's response and possible
contention that the mark requires proof of secondary meaning. If
the Examiner never makes this contention, or if the applicant
convinces the Examiner or Trademark Board that the mark does not
fall within § 2(e), then the whole problem of § 2(f) proof of
secondary meaning is avoided. If the Examiner is adamant in his or
her argument that the mark falls within a § 2(e) category, then the
applicant has several choices: He may appeal the determination: he
may agree to have the mark registered on the Supplemental Register;
or he may submit proof under § 2(f) of secondary meaning. If the
applicant qualifies for registration on the Supplemental Register,
he may thereafter apply to register the mark on the Principal
Register, and perhaps rely on the five-year presumption on
secondary meaning. After the examiner's initial response that the
mark is barred by a § 2(e) ground, as being not inherently
distinctive, there is no doubt that applicant may respond in the
alternative. That is, applicant may argue that (1) the mark is
inherently distinctive ( e.g., is not 'merely descriptive')
and/or (2) that even if barred by a § 2(e) ground as not inherently
distinctive, the mark has become distinctive through the
acquisition of secondary meaning. The point is that the
applicant's attorney should not concede any more weakness in the
mark than is absolutely necessary. The object is to get the mark on
the Principal Register as soon as possible, one way or
another. "

															1 J. McCarthy, Trademarks and Unfair Competition § 19:7 (1984)
(emphasis added).

															[ Footnote 2/14 ] United States v. Erika, 456 U.
S. 201 , 456 U. S. 208 (1982); Dunlop v. Bachowski, 421 U.
S. 560 , 421 U. S. 567 (1975); Johnson v. Robison, 415 U.
S. 361 , 451 U. S.
373 -374 (1974); Barlow v. Collins, 397 U.
S. 159 , 397 U. S. 166 (1970); Abbott Laboratories v. Gardner, 387 U.
S. 136 , 387 U. S.
140 -141 (1967).

															[ Footnote 2/15 ]

															§ 37, 15 U.S.C. § 1119.

															[ Footnote 2/16 ] Cf. Stafford v. Briggs, 444 U.
S. 527 , 444 U. S. 536 (1980) (the Court should look to the statutory language, and the
objects and policy of the law, so that the Court's construction of
the statute will execute Congress' true intent).

															[ Footnote 2/17 ]

															S.Rep. No. 1333, supra, n. 469
U.S. 189 fn2/4|>4, at 5.

															[ Footnote 2/18 ] Ibid. [ Footnote 2/19 ]

															Respondent did raise the issue of

															"no likelihood of confusion justifying an injunction insofar as
[petitioner] has no present intention of expanding into the Pacific
Northwest."

															Because of its disposition, the Court of Appeals did not reach
this issue. 718 F.2d at 331-332, n. 4.

															[ Footnote 2/20 ]

															The Patent and Trademark Office's own handbook explains this
point in general terms:

															"Matter which merely describes the goods or services to which it
is applied is prohibited from being registered on the Principal
Register. First, to permit one person to appropriate exclusively a
mark which is merely the ordinary language to describe the goods or
services involved would obviously be detrimental to others who deal
in the same goods or services by hindering their use of normal
language in association with their goods or services. Second, there
would be no assurance that a mark which merely describes would in
fact be a mark indicating origin, since the purchasing public would
be likely to recognize only the descriptive meaning of the matter
as it would be to accord to it any significance as indicating a
single source of origin of the goods or services."

															U.S. Department of Commerce, Patent and Trademark Office,
Trademark Manual of Examining Procedure 144 (1983).

															[ Footnote 2/21 ] See Otto Roth & Co. v. Universal Foods Corp., 640
F.2d 1317, 1320 (CCPA 1981)(recognizing the importance of the "free
use of the language" in the trademark context); Bada Co. v.
Montgomer Ward & Co., 426 F.2d 8, 11 (CA9) ("[O]ne
competitor will not be permitted to impoverish the language of
commerce by preventing his fellows from fairly describing their own
goods"), cert. denied, 400 U.S. 916 (1970). Additionally,
before the Lanham Act was enacted, this Court, in Canal Co.
v. Clark , 13 Wall. 311, 80 U. S.
323 -324 (1872), wrote words that are still applicable
today:

															"'[T]he owner of an original trade-mark has an undoubted right
to be protected in the exclusive use of all the marks, forms, or
symbols, that were appropriated as designating the true origin or
ownership of the article or fabric to which they were affixed; but
he has no right to the exclusive use of any words, letters,
figures, or symbols, which have no relation to the origin or
ownership of the goods, but are only meant to indicate their name
or quality. He has no right to appropriate a sign or symbol which,
from the nature of the fact it is used to signify, others may
employ with equal truth, and therefore have an equal right to
employ for the same purpose.'"

															( Quoting Amoskeag Manufacturing Co. v. Spear, 2 Sand.
599, 606-607 (N.Y. Super. 1849).)

															[ Footnote 2/22 ]

															The Court emphasizes that it does not address whether
traditional equitable defenses are available in an action to
enforce an incontestable mark. Ante at 469 U. S. 203 ,
n. 7. Thus, the Court chooses not to rule on whether the language
of § 33(b) can be ignored when a defense such as laches or estoppel
is asserted. Several courts have indicated that such defenses are
allowed. See, e.g., Prudential Ins. Co. v. Gibraltar Financial
Corp. 694 F.2d 1150, 1153 (CA9 1982), cert. denied, 463 U.S. 1208 (1983), Cuban Cigar Brands N.V. v. Upmann
International, Inc., 457 F . Supp. 1090, 1092, n. 5 (SDNY
1978), aff'd, without opinion, 607 F.2d 995 (CA2 1979); Carl Zeiss Stiftung v. V.E.B. Carl Zeiss,
Jena, 298 F.
Supp. 1309 (SDNY 1969), modified, 433 F.2d 686 (CA2
1970), cert. denied, 403 U.S. 905 (1971); Haviland
& Co. v. Johann Haviland China Corp., 269 F.
Supp. 928 , 955 (SDNY 1967). Several commentators have also
written on the subject. 2 J. McCarthy, Trademarks and Unfair
Competition 761 (1984). One early article noted:

															"The fact that Section 33(b) limits the defenses against an
incontestable mark to seven specific issues is possibly not
conclusive. It is difficult to imagine an equity court granting
injunctive relief to a registrant who comes into court with unclean
hands, even though the defendant is unable to establish one of the
seven specific defenses listed in Section 33(b). Other equitable
doctrines such as laches and estoppel would probably also preclude
injunction and damages in the case of an incontestable mark.
However, there is always the possibility that the courts might give
the Act a strict and technical construction, precluding any defense
except those specifically enumerated."

															Diggins, The Lanham Trade-Mark Act, 35 Geo.L.J. 147, 195
(1947).

															[ Footnote 2/23 ] Weinberger v. Romero-Barcelo, 456 U.
S. 305 , 456 U. S. 311 (1982).

															[ Footnote 2/24 ] Hecht Co. v. Bowles, 321 U. S. 321 , 321 U. S. 329 (1944).

															[ Footnote 2/25 ] Porter v. Warner Holding Co., 328 U.
S. 395 , 328 U. S. 400 (1946); Morton Salt Co. v. G. S. Suppiger Co., 314 U. S. 488 , 314 U. S. 492 (1942) ("[C]ourts of equity may appropriately withhold their aid
where the plaintiff is using the right asserted contrary to the
public interest"); Virginian R. Co. v. Railway Employees, 300 U. S. 515 , 300 U. S. 552 (1937).

															[ Footnote 2/26 ] Griffin v. Oceanic Contractors, Inc., 458 U.
S. 564 , 458 U. S. 571 (1982); see also Garcia v. United States, ante at 469 U. S. 80 (STEVENS, J., dissenting).

															[ Footnote 2/27 ] Fidelity Federal Savings & Loan Assn. v. De la
Cuesta, 458 U. S. 141 , 458 U. S. 163 (1982) (all parts of a statute should be given effect if possible); American Textile Manufacturers Institute, Inc. v. Donovan, 452 U. S. 490 , 452 U. S. 513 (1981) (same); Reiter v. Sonotone Corp., 442 U.
S. 330 , 442 U. S. 339 (1979) ("In construing a statute we are obliged to give effect, if
possible, to every word that Congress used").

															[ Footnote 2/28 ]

															Moreover, even if the owner of a registered mark may not enjoin
infringement, it is not true that the registration has become
"meaningless." See ante, at 469 U. S. 196 .
A registration may be used to prevent the importation of goods
bearing infringing marks into this country. See 15 U.S.C.
§ 1124, 19 U.S.C. § 1526, and 19 U.S.C. § 1337(a). Additionally,
registration in this country is a prerequisite to registration in
some foreign countries. A. Seidel, What the General Practitioner
Should Know About Trademarks and Copyrights 26 (4th ed.1979); E.
Vandenburgh, Trademark La and Procedure 58 (2d ed.1968). Further,
the United States Court of Customs and Patent Appeals, in an
opinion recognizing that Congress had expressed its desire that
scandalous matter not be registered, wrote the following regarding
the benefits of registration:

															"Once a registration is granted, the responsibilities of the
government with respect to a mark are not ended. The benefits of
registration, in part with government assistance, include public
notice of the mark in an official government publication and in
official records which are distributed throughout the world,
maintenance of permanent public records concerning the mark,
availability of Customs Service for blocking importation of
infringing goods, access to federal courts where there is a
presumption of validity of the registration . . ., notices to the
registrant concerning maintenance of the registration, and, to some
extent direct government protection of the mark in that the PTO
searches its records and refuses registration to others of
conflicting marks. Apart from nominal fees, these costs are
underwritten by public funds." In re Robert L. McGinley, 660 F.2d 481, 486 (1981).

Summary:
Here is a summary of the Supreme Court case Park N' Fly Inc. v. Dollar Park and Fly, Inc.:

Park N' Fly Inc. v. Dollar Park and Fly, Inc. (1985) concerned a trademark dispute between two companies offering long-term airport parking services. Park N' Fly Inc. (petitioner) sought to injunctively prevent Dollar Park and Fly, Inc. (respondent) from using the words "Park and Fly" in its business name. The case turned on the interpretation of the Trademark Act of 1946 (Lanham Act), specifically the effect of incontestable status on a registered mark's enforceability.

The Supreme Court held that the holder of a registered mark with incontestable status could rely on that status to enjoin infringement by another party. The Court rejected the respondent's argument that the petitioner's mark was merely descriptive and, therefore, unenforceable. The Lanham Act's legislative history and case law supported the conclusion that incontestable status provided a strong right to the registrant, allowing them to take offensive action against infringers.

This case established that incontestable status under the Lanham Act gives trademark holders a powerful tool to protect their marks from infringement and reinforces the importance of registering trademarks to secure exclusive rights.