Park 'N Fly v. Dollar Park & Fly, 469 U.S. 189 (1985) p.509

SUBJECT

incontestability

ISSUE

Is incontestability just a defense? P says he is using incontestability offensively - no one else should be able to use the mark in the same field.

RATIONAL

Descriptiveness of a mark is not a valid contest to an incontestable mark (one that has been registered and in use for at least 5 years).

The holder of a registered mark may rely on incontestability to enjoin infringement and that such an action may NOT be defended on the ground that the mark is merely descriptive.

NOTES

Dissent says the name is descriptive and should not have been granted in the first place. However, since the mark became incontestable, that argument can no longer be made. People argue this is fair because there was plenty of time for contest. There are opposition proceedings and cancellation proceedings. But noone here came forward so only fair to allow it now.

Created on: Thursday, March 09, 2000 at 18:23:24 (PST)