Park N’ Fly Inc. v. Dollar Park and Fly, Inc.

PETITIONER:Park N’ Fly Inc.
RESPONDENT:Dollar Park and Fly, Inc.
LOCATION:Massachusetts Department of Education Bureau of Special Education Appeals

DOCKET NO.: 83-1132
DECIDED BY: Burger Court (1981-1986)
LOWER COURT: United States Court of Appeals for the Ninth Circuit

CITATION: 469 US 189 (1985)
ARGUED: Oct 09, 1984
DECIDED: Jan 08, 1985

ADVOCATES:
Alan E. Popkin – on behalf of Petitioner
John M. McCormack – on behalf of Respondent

Facts of the case

Question

Audio Transcription for Oral Argument – October 09, 1984 in Park N’ Fly Inc. v. Dollar Park and Fly, Inc.

Warren E. Burger:

We’ll hear arguments first this morning in 83-1132, Park ‘N Fly, Incorporated, against Dollar Park and Fly.

Mr. Popkin, you may proceed whenever you’re ready.

Alan E. Popkin:

Mr. Chief Justice, and may it please the Court:

This case is a case of statutory interpretation.

The statutes involved are Sections 1064, 1065, and 1115(b) of Title 15 of the United States Code, the so-called incontestability provisions of the Lanham Act.

The sole question before this honorable Court is whether this statute, whose constitutionality is unchallenged and the literal meaning of which has been conceded and which is clear, should be interpreted in a way other than as Congress uttered it.

The factual background of this case is that Park ‘N Fly, the Petitioner, was organized in 1967 and started its operations in St. Louis, Missouri.

The business of Park ‘N Fly was the so-called offsite airport parking, and that business consists, if Your Honor please, of the acquisition of and building of a parking facility in areas proximate to airports.

At those locations, customers or patrons come to park their cars, and then there is a shuttle or bus service that Park ‘N Fly provides, or that such offsite airport parking facilities provide, that moves the customer from that offsite facility to the airport, takes him right from his automobile to the gate area or to the area where his baggage will be off-loaded.

And then upon his return from his trip, buses are circulated at three to five minutes and those buses pick the patrons up, again very close to where they disembark, return them to the parking lot and return them right to their vehicles, from whence they then depart.

Park ‘N Fly, as I say, started in 1967 in St. Louis, and they have expanded now so that they are in Cleveland, Boston, New Orleans, Houston, Montreal, Memphis, San Francisco and Atlanta.

Their operation has truly become national in scope.

The history of the trademark that Park ‘N Fly obtained was that in 1969 Park’N Fly, shortly after it opened its second facility in Cleveland, decided to apply for registration under the Lanham Act, and they filed for registration originally in August of 1969.

Initially the registration that they sought for their mark, Park ‘N Fly, was denied by the examiner at the Patent and Trademark Office.

It was denied because he found that the mark was merely descriptive of the service that Park ‘N Fly was rendering.

Park ‘N Fly applied for re-examination of that mark, applied to that examiner within six months, as it had a right to do, and supplemented its presentation with a brief setting forth in detail why it felt that indeed this was not a merely descriptive mark.

Upon reexamination, the patent examiner, trademark examiner, found that the mark was not merely descriptive and so it was admitted to registration in August, August 31st of 1971, approximately two years after the date on which Park ‘N Fly had initially sought registration.

In May of 1977, Park ‘N Fly filed an affidavit pursuant to the provisions of Section 1065, an affidavit of incontestability, setting forth therein the statutory requirements, namely, that the mark Park ‘N Fly as registered had been in constant use for five years, at least five years, and that there was no successful challenge against its validity at that point in time.

Well, at that moment in May of ’77 the certificate, if you will, of incontestability was issued and the mark became incontestable within the meaning of Sections 1065 and 1115(b) of Title 15.

During the year 1977, Defendant Dollar Park and Fly was engaged in the identical business in the Portland, Oregon area.

In early 1977, the Plaintiff, the Petitioner here, Park ‘N Fly, became aware of the existence of Dollar Park and Fly in Portland, Oregon, and attempted, unsuccessfully, to extrajudicially discourage them from their continued use of the name Park ‘N Fly.

When those efforts, which were mainly letters, proved unsuccessful, suit was filed in the District Court for Oregon in June of 1978, and the trial judge, Judge Frye, found for the Petitioner and issued an injunction restraining and enjoining the Respondent from using the name Park and Fly because Park and Fly was confusingly similar with Park ‘N Fly.

The Petitioner spelled its name with an apostrophe N, instead of spelling out “and”, and the Respondent spelled out “and”.

On appeal, this case went to the United States Court of Appeals for the Ninth Circuit and that court, speaking through Judge Kennedy, reversed on October 13th, 1983, and in reversing held that incontestability was not available in a proceeding for injunction or for enforcement of a trademark, but that incontestability applied only in a defensive posture, that is, when somebody was attempting to cancel a mark.

And so the Ninth Circuit Court of Appeals held, the gist of their holding was, that the mark Park ‘N Fly cannot be cancelled because of the incontestability provision, but cannot be enforced, because the Ninth Circuit found on its own, without the benefit of holdings from the court below, that the mark was merely descriptive.

And so that–

William H. Rehnquist:

When you say can’t be enforced, Mr. Popkin, you mean that your client could not get an injunction–

Alan E. Popkin:

–That’s right, Your Honor.

William H. Rehnquist:

–to prevent the use by someone else?

Alan E. Popkin:

Exactly so.

Alan E. Popkin:

They cannot have their mark cancelled, but on the other hand they are not entitled to stop anybody from using it.

So that the gist of the holding was: You are free, Park ‘N Fly, Petitioner, to use that mark, but so is the rest of the world because you cannot stop them from using it.

The sole question, as I indicated earlier, involves the interpretation of the incontestability provision of the Lanham Act, specifically of 1115(b) of Title 15.

Yes, Your Honor.

John Paul Stevens:

You made a point of the fact that the Court of Appeals made the finding more or less on its own.

Alan E. Popkin:

Yes, sir.

John Paul Stevens:

Would it be a different case if the district court had made a finding and you agreed that the finding was correct?

Alan E. Popkin:

No, Your Honor, I don’t think it would be significantly different, because–

John Paul Stevens:

Can we assume for purposes of decision that the mark will be treated as though it is descriptive, as they say?

Alan E. Popkin:

–No, I don’t think we can assume that the mark is descriptive, Your Honor.

There’s only been one judicial holding or one holding as to whether or not this mark is descriptive, other than what the Ninth Circuit did, and that was what the patent examiner did, the patent and trademark examiner.

And he found that the mark was not descriptive.

John Paul Stevens:

Well, I understand.

Then I’m puzzled.

You’re saying the issue of whether it’s descriptive simply isn’t open, is that it?

Alan E. Popkin:

I’m saying that the issue of whether or not the mark is descriptive is ruled out by the incontestability provision.

That is not one of the seven defenses.

If it were one of the seven defenses, what the Ninth Circuit has done would be still wrong because there has been no… nothing… no clearly erroneous finding.

It should have remanded to the district court.

But it is not one of the seven defenses that Congress permits under the provisions of the Lanham Act.

John Paul Stevens:

Well, I understand.

But I guess what I’m asking is, if a court after hearing evidence thought it was merely descriptive, it just isn’t permitted to think that, is about what it amounts to?

I mean, it really would be legally irrelevant?

Alan E. Popkin:

That would be so, yes, Your Honor.

The plain meaning of the statute–

Sandra Day O’Connor:

Let me pursue this just a little further, because I’m confused by your answers to Justice Stevens.

Can we not approach this case under the assumption that the term is merely descriptive, but nonetheless determine what the effect is then of the statutory scheme under these circumstances?

Alan E. Popkin:

–Yes, Your Honor, you may approach it in that way.

We would not concede that the mark is merely descriptive, but our position is that it doesn’t matter, because our position is that under the clear language of 1115(b) mere descriptiveness is not a defense to incontestability.

And in looking at the statutory language there are, of course, many aids and guides that a court can have in unraveling arcane or ambiguous statutes.

Alan E. Popkin:

But there’s a threshold question and that threshold question is is the statute ambiguous, is it difficult to understand.

And if it isn’t then, as this Court observed in the Escondido case decided last term, statutory language must ordinarily be regarded as conclusive.

Let’s look at this language.

The language states that:

“The registration shall be conclusive evidence of the registrant’s exclusive right to use the registered mark, except when. “

–and then they list seven defenses, Congress did, except when one of those defenses or defects is appropriate.

The first phrase is “shall be conclusive evidence”.

It’s hard to imagine, at least for a person who is used to trying lawsuits, anything clearer than something that says “conclusive evidence”, because that means to us that it is, the issue is concluded.

There is no rebuttal available.

When the evidence becomes conclusive, that means that the issue is settled.

It is interesting to speculate also on what Congress did not say.

They didn’t say that this was conclusive evidence only in a cancellation proceeding, or exclusive or conclusive evidence only when a defensive use was being made.

They said that this was conclusive evidence, without limitation on the type of proceeding.

They also didn’t say that it was prima facie evidence or admissible in evidence, which they said in the immediately preceding section.

1115(a) of Title 15 deals with the effect of registration under former Trademark Acts, and there Congress said that this shall be admissible in evidence and shall be prima facie evidence.

But when they came to the effect of incontestability under the Lanham Act, Congress said it shall be conclusive evidence.

The next phrase,

“exclusive right to use the registered mark. “

Again, it is hard to imagine something that could be clearer.

“Exclusive right” means the right to use the mark to the exclusion of the world.

What else can it mean?

It is the right that the Petitioner, that the registrant, has to use the mark exclusively.

William H. Rehnquist:

Your opponent, of course, contends that, because the registration proceeding in the Trademark Officer is essentially administrative or ex parte, if your construction is adopted all sorts of marks that don’t really qualify under the Lanham Act will get registered and there will be never any adversary process for challenging them.

I suppose you say that’s what Congress intended?

Alan E. Popkin:

I say two things to that, Your Honor.

First of all, that is what… Congress intended the procedure that they put forth.

In order for my opponent’s position to make sense, we have to presume that an administrative agency, the Patent and Trademark Office, will not do its job properly.

Then the mark, after it has been passed upon and some mistake made by the Patent and Trademark Office, presumably, is published in the Trademark Gazette for 30 days so that the world has an opportunity to see it; and then five years of constant use, during which time anybody may step forward and say, I wish to challenge that mark, on any ground without limitation.

So that the opportunities for review are just extensive for five years, the period of limitations, if you will.

And what I believe, Your Honor, is that Congress balanced the needs.

Alan E. Popkin:

Yes, it is conceivable that the Patent and Trademark Office will make a mistake.

Yes, it is conceivable that somebody situated in Portland, Oregon, or in Poise, Idaho, or somewhere else will not come in contact with that mark during that five years of constant use, so that they won’t raise the question.

But Congress in its wisdom said, this is a scheme that we believe is appropriate, because the fact that somebody doesn’t get to challenge that mark during a period of five years, that doesn’t preclude them from having the opportunity to compete.

They’re free to compete.

Just don’t use that name.

Park ‘N Fly in this case has many competitors and they don’t identify themselves as Park ‘N Fly.

There are a multitude of names available.

So that the consumer doesn’t suffer, and the man who has invested for five years in developing his mark knows at that period of time that there is some stability, that he is not going to be confronted eternally with the same defense.

Now, in the final phrase of Section 1115(b) of the statute the Congress says

“except when one of the following defenses or defects is established. “

and they list seven.

Of course, one of those seven is not the defense of mere descriptiveness.

John Paul Stevens:

Is it your position, Mr. Popkin, that those are the only defenses that are ever available?

Alan E. Popkin:

Yes, Your Honor.

John Paul Stevens:

That’s an exhaustive list?

Alan E. Popkin:

Yes, Your Honor.

It’s precisely what Congress said it to be.

It’s an exhaustive list of the substantive trademark defenses.

1116 of the same Act points out that injunctions are issued according to principles of equity, so equitable defenses such as laches or unclean hands are still available.

But the substantive trademark defenses are set forth in 1115(b), Your Honor.

Now, it’s also interesting in helping to interpret this Act to look at the defenses section.

Defenses four, five and six of the Act set out, amongst other things, the nature of the defenses that can be urged.

And in using the language and in looking at the language, they talk about the defense being available when a mark is charged to be an infringement, or when the mark whose use by a party is charged to be an infringement, or that the mark whose use is charged as an infringement.

It is quite clear from the context that what Congress was anticipating was the use of incontestability in an infringement proceeding, and that has to be an offensive use.

The interpretation espoused by the Ninth Circuit and adopted by the Respondent here must fail for several reasons, that interpretation, i.e., that there is a dichotomy between offensive and defensive use of the mark.

First of all, there is nothing within the four corners of the statute that suggests that or even hints at it.

There is nothing, not a syllable, in the legislative history that points to this dichotomous interpretation.

And third, if one looks at Section 1064 of the Act, 1064 concerns itself only with cancellations.

1064(a) and (b) talk in terms of cancellation before five years and 1064(c) talks in terms of what the grounds are for cancellation after five years… precisely the same thing that 1115(b) deals with, the period after five years.

If both of those statutes are concerned only with cancellation, they are utter redundancies; one is not necessary.

Alan E. Popkin:

And we must presume that Congress had something in mind when they enacted both of these sections.

And finally, the logical situation.

The inherent value in a mark is the ability that it has to identify goods and services, and if the position of the Ninth Circuit is in fact true then Park ‘N Fly in each of the cities in which it chooses to operate may have four or five or any number of competitors all of whom will identify themselves as Park ‘N Fly, and there will be nothing that Park ‘N Fly can do to arrest that.

That cannot conceivably, I submit, be the scheme that Congress had in mind when it enacted the Lanham Act Act.

There is no basis, as I say, in the statute nor in the legislative history.

The position taken by the Respondent is that to interpret the statute as we contend would frustrate the purposes of the Lanham Act.

And we think and we submit, as our briefs have shown, that the contrary is true.

The very purposes of the Lanham Act will be fulfilled, rather than frustrated, by applying the plain meaning of this statute to its interpretation.

Byron R. White:

Is it true that a mark that has been issued or granted can become generic?

Alan E. Popkin:

Yes, sir.

Byron R. White:

Let’s suppose an incontestable mark becomes generic.

Alan E. Popkin:

Yes, sir.

Byron R. White:

What about your theory then?

Alan E. Popkin:

Genericness is one of the seven defenses that Congress has written, Your Honor.

Byron R. White:

Where does that fall?

Alan E. Popkin:

I think it’s 1115(b).

It’s incorporated under 1164(c).

But genericness is one of the defenses.

Byron R. White:

1164, but it’s not in–

Alan E. Popkin:

Commonly descriptive, Your Honor.

Byron R. White:

–But it’s not in 1115(b)?

Alan E. Popkin:

I believe it’s incorporated under the provisions of 1064 (c), which are incorporated into 1115(b).

And common descriptiveness is genericness, so that if the mark comes to mean the product or the service that is a defense to incontestability.

And in the instant case, there has been a specific finding by the district court and affirmed by the Ninth Circuit that there has been no proof that this mark has become generic.

But genericness is a defense, Your Honor.

Byron R. White:

Would it be open in a case like this for the Defendant in the action you brought to say, well, it was generic when it was issued?

Alan E. Popkin:

Yes, Your Honor.

Not only is it available, it was urged.

Byron R. White:

But you think that’s the only… because the essence of your opponent’s case, I guess, is that your mark should never have been issued, or that it certainly shouldn’t have been made incontestable.

Alan E. Popkin:

The essence is–

Byron R. White:

And that it was just merely descriptive.

Alan E. Popkin:

–That is part–

Byron R. White:

And you say that Congress itself has said that the mark could be cancelled if it was generic or becomes generic, but it didn’t say merely descriptiveness would be a ground?

Alan E. Popkin:

–It’s quite clear that mere descriptiveness is not a grounds for a defense to incontestability.

That’s clear.

Genericness is a defense to incontestability.

Byron R. White:

Expressly, you say?

Alan E. Popkin:

Expressly, yes, Your Honor.

Lewis F. Powell, Jr.:

Could it have been argued successfully that the mark had never acquired a secondary meaning?

Alan E. Popkin:

Your Honor, secondary meaning is not an issue.

Lewis F. Powell, Jr.:

I understand that, but could it have been injected as an issue if it had been alleged by your Respondent?

Alan E. Popkin:

No, Your Honor, not under the construction that we contend.

Under the plain meaning of this statute, there are seven defenses to incontestability, The fact that a mark has or has not acquired secondary meaning does not out across those seven defenses.

Even if the mark had not acquired secondary meaning, it is not a defense to incontestability that it has not acquired such a meaning.

The issue of secondary meaning arises when you have a merely descriptive mark.

A merely descriptive mark is susceptible of registration if that mark has acquired secondary meaning.

And it raises, of course, a very interesting problem for litigants, because in the trenches of litigation what happens is that, as counsel points out, in many of these cases there has been evidence that marks alleged to have been merely descriptive have in fact acquired secondary meaning.

What happens consistently is that counsel, as lawyers are wont to be sometimes, they are very cautious, so they will go out and they will conduct surveys.

Each side will have them.

They’ll conduct extensive discovery.

They will absorb huge slots of courts’ times presenting evidence concerning secondary meaning, when it’s utterly unnecessary under the literal meaning of 1115(b).

And we would urge and hope that, when the Court declares that 1115(b) means what Congress said it means, that there will be some judicial economy achieved in putting an end to this sort of useless proceeding.

John Paul Stevens:

Mr. Popkin, can you help me again?

I understood you to say that the seven paragraphs were the exhaustive list of defenses.

Alan E. Popkin:

Yes, Your Honor.

John Paul Stevens:

And I also understood you to say, in response to Justice White, that the defense of genericness is available, but you didn’t tell us which of the seven paragraphs it’s in.

Alan E. Popkin:

If Your Honor please, I think that 1064(c) is incorporated into the body of 1115(b).

It’s specifically incorporated.

John Paul Stevens:

But then that’s something in addition to the seven defenses.

Alan E. Popkin:

It’s part… it is incorporated into it.

Alan E. Popkin:

It is in addition to those defenses.

John Paul Stevens:

So then the seven defenses is not an exhaustive list?

Alan E. Popkin:

It is not an exhaustive list in the sense that there–

John Paul Stevens:

Are there others beside genericness in addition to the seven, other defenses?

Alan E. Popkin:

–Well, 1064(c) is duplicative in a number of aspects.

For example, fraud, abandonment are mentioned in 1064(c); fraud and abandonment are also defenses under 1115(b), so that there is some duplication.

But under 1064(c) there is,

“at any time if the registered mark becomes the common descriptive name of an article or substance. “

That is one of the defenses that is incorporated under the provisions of 1115(b).

John Paul Stevens:

But it’s not listed in the seven.

So the seven is really not… this is the heart of the case, because really one of your main arguments is that the language is perfectly clear on its face, there’s seven defenses, this is not one of them, therefore we win.

But now you’re telling us there are other defenses.

Alan E. Popkin:

There are other defenses which have specifically been incorporated.

They are there in black and white.

John Paul Stevens:

But not in 1115.

Alan E. Popkin:

They’re not listed in the body of the section, but they are specifically referred to by the section.

John Paul Stevens:

Where does the incorporation take place?

Where is the express?

Is that in–

Alan E. Popkin:

Let’s see if I can find it precisely for Your Honor.

0….

Byron R. White:

–1064 is the cancellation section, isn’t it?

Alan E. Popkin:

Yes.

And under 1065 it says,

“except on a ground for which application to cancel may be filed at any time under subsections (c) and (e) of Section 1064 of this title. “

So that 1065, which sets up what incontestability is, says that the defenses of 1064(c) and (e) will be incorporated into 1115(b).

That’s where it appears, Your Honor.

Byron R. White:

Okay.

Alan E. Popkin:

There is a… I wanted to speak briefly about the way in which this offensive-defensive dichotomy arose, and it has a long history that goes back to 1955, when the Patent and Trademark Office issued their Rand McNally decision, and in 1961 the United States Court of Appeals for the Seventh Circuit decided the John Morrell case, which adopted an offensive-defensive dichotomy, really on very little basis.

And there were several courts, including the Ninth Circuit, that adopted that offensive-defensive dichotomy without much thought to it, until 1976 when the Union Carbide case was decided by Judge Pell in the Seventh Circuit.

Alan E. Popkin:

And Judge Pell there overruled the Morrell decision, and since 1976 every circuit that has had an opportunity… and there are four or five of them now… to review this question has adopted the position taken by Judge Pell in Union Carbide.

And there is one other thing that I would like to point out before I sit down, and that is that one of the… it’s rather revealing in one of the footnotes that Respondent has in its brief that one of the exceptions, they say, that should be included, as they say in footnote 39 on page 36, one of the exceptions that should be included is of marks that are incapable of identifying and distinguishing goods and services.

I submit that this Court is not concerned with what should be an exception, but it is concerned with what is an exception and what Congress has said shall be the exceptions.

And as this Court observed in TVA versus Hill:

“Our individual appraisal of the wisdom or unwisdom of a particular course consciously selected by the Congress is to be put aside in the process of interpreting a statute. “

And I submit that that’s what should be done here.

This statute should be enforced as it is written, interpreted as it is written, and some respite put to the unnecessary travails in the court below.

This case should be reversed and remanded with instructions to affirm the decision of the district court.

Sandra Day O’Connor:

Well, Mr. Popkin, I suppose the Respondent has raised certain defenses and argues that the trial court ruling on the local use exception defense, for example, was erroneous.

So even if the Court were to agree with you on the points you made this morning, it would have to be remanded for review by CA-9 on this issues?

Alan E. Popkin:

No, Your Honor.

Judge Frye in the district court found that the 1115(b)(4) exception was not applicable for two reasons: there was no privity; and, in addition to being no privity, she did not reach the further point that this is not a local use.

The prior use was in Seattle and this use is in Portland, Oregon.

The Court of Appeals did not upset that finding.

Sandra Day O’Connor:

Well, it just didn’t address it, did it?

Alan E. Popkin:

It did not.

Sandra Day O’Connor:

So I suppose it would be open to the Ninth Circuit to at least review that finding on the remand, would it not?

Alan E. Popkin:

I think it would be open to review that to find if the judge was clearly erroneous.

Sandra Day O’Connor:

Yes.

Alan E. Popkin:

Whatever time remaining I have, I would like to have for rebuttal, if Your Honor please.

Warren E. Burger:

Mr. McCormack.

John M. McCormack:

Mr. Chief Justice, may it please the Court:

Respondent should prevail here because of three very fundamental, very basic reasons.

The first is, Park ‘N Fly was improperly registered.

It should never have been registered in the first place.

It was defective ab initio.

Harry A. Blackmun:

Under what section?

John M. McCormack:

Under Section 1052(e), Your Honor.

1052(e).

John M. McCormack:

Yes.

John M. McCormack:

Section 1052(e), Your Honor.

Harry A. Blackmun:

1052(e).

John M. McCormack:

Yes.

Section 1052(e) of the Lanham Act specifically proscribes registration of merely descriptive marks or terms, and unless–

Sandra Day O’Connor:

But subsection (f) says that if it has become distinctive of the applicant’s goods in commerce it can be.

John M. McCormack:

–That’s correct, Your Honor.

Sandra Day O’Connor:

And that was the determination of the Patent Office.

John M. McCormack:

No, Your Honor, it was not the determination.

The Patent Office, the examiner never received any evidence as to distinctiveness at all.

The examiner in the Patent Office… this is an ex parte proceeding.

The examiner in the Patent Office initially rejected this application for Park ‘N Fly.

It’s “Park ‘N Fly” plus a logo of an airplane over a runway.

The examiner said the mark is rejected because the words “Park ‘N Fly” merely describe the services that were rendered.

And then the Petitioner filed a response to that and the response was just merely a legal argument setting forth various cases.

There was no evidence of distinctiveness that was submitted at all.

The record is absolutely empty as to distinctiveness not only before the Patent and Trademark Office and the examiner, but also at the trial court level.

There is nothing in the record as to distinctiveness.

William H. Rehnquist:

Mr. McCormack, well, what do you concede or agree is concluded by the decision of the Trademark Office?

John M. McCormack:

I believe that the decision of the trademark examiner, especially in a case like this where it did not go to an appeal to the Trademark Trial and Appeal Board, it’s just the examiner’s decision.

I believe those decisions are always reviewable.

What Petitioner wants to have this Court do here is shackle courts from reviewing what the examiner decides.

William H. Rehnquist:

Well, I think Petitioners contend that Congress has shackled the courts from reviewing the case the way you want it reviewed.

John M. McCormack:

No, Your Honor.

William H. Rehnquist:

I’m saying Petitioner has contended that.

I’m not saying I agree.

John M. McCormack:

Yes, Your Honor, that is what Petitioner is saying.

Byron R. White:

Well, I take it you would say, then, that the mark should be cancelled?

John M. McCormack:

No, Your Honor.

Byron R. White:

You said it never should have been issued and it’s always open to challenge.

John M. McCormack:

That’s right.

Byron R. White:

Well, why shouldn’t it be cancelled, then?

John M. McCormack:

I’ll try to explain, Your Honor.

Under Section 1064 it says that a mark cannot be cancelled after five years, unless there are certain specific grounds.

And mere descriptiveness is not one of those grounds.

Now, this may sound inconsistent to you, but keeping in mind the Congressional scheme it is not, because what Congress wanted to do… the 1905 Act permitted marks to be cancelled at any time.

A party would have a mark registered for 20 years and then a prior user would come out and cancel that mark after 20 years.

And Congress saw this as an evil.

And this is all pointed out in Roberts’ book, “The New Trademark Manual”, which is very instructive on a lot of these points.

Congress wanted to prevent the cancellation of marks after a certain period of time.

And the reason that a merely descriptive mark should not be cancelled after five years is because possibly it can acquire secondary meaning after that five-year period or at an time, and once it acquires secondary meaning then there is an enforceable cause of action for trademark infringement.

But we have not reached that point in this case.

Thurgood Marshall:

Counsel, tell me the difference between a trademark being cancelled and this Court saying it can’t be enforced?

John M. McCormack:

Yes, Your Honor.

If the mark is not cancelled there are certain benefits that still attach to that mark being on the register.

Thurgood Marshall:

I’m listening.

John M. McCormack:

Okay.

The first one is that it will block somebody else trying to register the same or a confusingly similar mark.

It’s on the register, so if somebody else wanted to seek to register Park ‘N Fly that registration uncancelled would block that registration under Section 1052(d) of the Act, I believe.

The other thing that it would do is it would enable the registrant to acquire secondary meaning.

If secondary meaning was ever acquired, then the registrant could go into court, into federal court, armed with the federal registration and bring a lawsuit.

A third reason is, under Section 1126 of the Lanham Act… this is a section that refers to registering your mark in foreign countries.

If you have a home registration, a U.S. registration, you can register your mark in foreign countries based on that.

Thurgood Marshall:

But there’s nothing to stop anybody under the sun from using it?

John M. McCormack:

No, Your Honor, I don’t believe that that’s correct.

Park ‘N Fly with their registration can sue somebody else for, say, copying their trade dress.

Somebody else may use Park ‘N Fly and stylize the letters or the sign the same way.

Thurgood Marshall:

Well, why do you register a trademark?

Don’t you register it to stop other people from using it?

John M. McCormack:

Yes, Your Honor, you do.

Thurgood Marshall:

But now anybody can use this trademark.

John M. McCormack:

No, Your Honor, not necessarily.

Only a person–

Thurgood Marshall:

But your client can?

John M. McCormack:

–Yes, Your Honor, our client can, because it’s–

Thurgood Marshall:

And any other client you get can.

John M. McCormack:

–No.

Other parties could use the designation Park ‘N Fly.

When I said that they could sue another party for using Park ‘N Fly, it would be if that other party copied the trade dress, in other words the way the signs were painted.

Perhaps they used Park ‘N Fly.

They would be free to use Park ‘N Fly, but the trade dress, it’s a packaging concept.

If your package looks like somebody else’s, then you have a cause of action.

The other thing is, we don’t use the logo that the registration has.

The Park’N Fly registration has a logo that’s attached with it, the logo of an airplane.

So that’s another reason why the Petitioner’s registration–

Byron R. White:

Well, Mr. McCormack, how do you parse down this statute?

Your opponent took us through this 1115 and said that that listing of defenses to the exclusive rights are exhaustive, except for genericness that is incorporated under 1064 and 1065.

Now, where do you find mere descriptiveness being added as a defense?

John M. McCormack:

–Okay.

Mere descriptiveness is a fundamental defense, just like non-likelihood of confusion is a fundamental defense.

One can look under Section 1115–

Byron R. White:

Genericness… if it were so fundamental, you would think Congress would have mentioned it along with genericness.

John M. McCormack:

–Well, that’s part of the confusion of the statute, Your Honor.

It is confusing.

Byron R. White:

Well, it’s only… it isn’t very confusing if you read it the way it’s written.

John M. McCormack:

Yes, but cases have always held that non-likelihood of confusion can always be offered as a defense, though non-likelihood of confusion is not listed under Section 1115(b).

Now, there’s one other important point here, and that is that if a mark is initially not registrable because it violates Section 1052(e) of the Act.

Section 1052(e) is a substantive provision with respect to registration.

Now, Mr. Popkin has already conceded that–

Byron R. White:

Well, I know, but 1064 and 1065 get right back to 1052, and they only list, what, (b) and (c).

John M. McCormack:

–That’s correct.

Byron R. White:

Well, they didn’t reach (e).

John M. McCormack:

Well, we’re not saying that the mark should be cancelled, Your Honor.

Byron R. White:

Well, but you’re saying that it’s a defense.

John M. McCormack:

We’re saying that it’s not enforceable, and this is because of traditional trademark law principles.

One thing that we have to keep clear is that the right to register is not necessarily the right to use.

Now, according to traditional trademark law principles, going back to the case of Canal v. Clark, an 1871 case from this Court, merely descriptive marks have always been held not to be enforceable unless they have acquired secondary meaning.

William H. Rehnquist:

Well, but that’s a, you said, an 1871 case.

The Lanham Act, which was in what, 1946 or something?

John M. McCormack:

Yes.

William H. Rehnquist:

Clearly, that may have superseded some of our old cases.

John M. McCormack:

Not with respect to this basic fundamental provision, Your Honor.

As a matter of fact, Representative Lanham made a statement and he said… he was asked, what is the effect of the seven defenses listed under Section 1115(e) with respect to the substantive law of trademarks.

And Representative Lanham’s statement on this point is very instructive.

He said… and I will paraphrase.

He said that these seven defenses were not intended to enlarge, modify, restrict or amend the substantive law of trademarks as set out in other acts, the Lanham Act, or as interpreted by courts.

Now, a substantive provision of trademark law is that a mark is not registrable under Section 1052(e) of the Lanham Act unless it’s acquired secondary meaning under Section 1052(f).

That’s a substantive principle that’s over 100 years old.

Sandra Day O’Connor:

Well, don’t we have to assume that the Patent Office found a secondary meaning or the distinctive description application to have issued the mark in the first place?

John M. McCormack:

No, Your Honor.

Sandra Day O’Connor:

Well, it certainly seems to me we do, because under your view they would have had no right to issue the trademark otherwise.

John M. McCormack:

That’s correct.

It was an error by the Trademark Offices.

Sandra Day O’Connor:

And don’t we have to assume that the trial court felt the same way?

John M. McCormack:

No, Your Honor, we don’t.

The trial court could make the same mistake that the examiner did.

That issue–

Sandra Day O’Connor:

Well, certainly CA-10 and CA-2, the Court of Appeals in the Tenth and Second Circuits, say that an incontestable mark is conclusively presumed to be… to have secondary meaning.

John M. McCormack:

–That’s correct.

They’re following the Ever-Ready line of cases, and we submit that is in error.

That’s an easy way out, but the point of the Lanham Act is to–

Sandra Day O’Connor:

Well, it also tracks the language of the statute.

John M. McCormack:

–Yes, in one particular, but not in a fundamental particular.

And the fundamental particular is that a merely descriptive mark cannot be registered unless it is shown to have secondary meaning.

And that is a question of fact, Your Honor, and the burden is upon the party seeking to assert the mark to show that it’s acquired secondary meaning.

Now, for a court to say, just because it’s been accorded incontestable status, therefore it’s conclusively presumed that it has secondary meaning, is we submit in gross error.

Sandra Day O’Connor:

But it would be your position that the Patent Office could never issue the mark in the first place if it didn’t have secondary meaning?

John M. McCormack:

That’s correct, Your Honor; precisely the point.

Sandra Day O’Connor:

Well, but it did issue it and it wasn’t contested within the five years, and there we are.

So we have to assume, do we not, that it has secondary meaning?

John M. McCormack:

No, Your Honor, we don’t.

A Patent Office mistake can be reviewed.

Now, we set forth cases in our brief, the American Heritage case and the Vision Optics case.

The American Heritage case talks about a court going in and reviewing Patent and Trademark Office examiner’s mistakes.

William H. Rehnquist:

Well, Mr. McCormack, under your theory what benefit does a registrant get from registering his mark and having it approved by the Patent and Trademark Office?

John M. McCormack:

He gets a presumption, but that presumption can be attacked at a later time.

Courts should always have the power to review the examiner’s decision.

William H. Rehnquist:

Well, you say courts should always have the power to review.

What’s the source of that statement?

Is that just your idea of how the law ought to run?

John M. McCormack:

No, that’s from court decisions.

William H. Rehnquist:

Well, but court decisions interpreting the Lanham Act?

John M. McCormack:

Well, actually in the Lanham Act itself, under Section 1116, it says that the court should have… excuse me.

In 1116–

William H. Rehnquist:

Is that in the brief somewhere?

John M. McCormack:

–Excuse me, 1119.

I misspoke here, Your Honor.

1119 and I’ll just quote it.

It says:

“In any action involving a registered mark, the court may determine the right to registration or to the cancel of registrations in whole or in part, restore cancelled registrations, and otherwise rectify the register. “

Byron R. White:

So if there hadn’t been… if this mark hadn’t gone through the incontestability proceeding, it had just been issued, and then this suit was brought, you would have had any of the defenses that would go to the validity of the mark?

John M. McCormack:

Any legal one.

Harry A. Blackmun:

That would have prevented the issuance in the first place?

John M. McCormack:

I’m sorry, Your Honor, I didn’t quite follow that.

Byron R. White:

Well, suppose the mark hadn’t been made incontestable.

John M. McCormack:

Yes.

Byron R. White:

But this suit was brought against your client.

Your client would have had the right to claim that the Plaintiff’s mark should be cancelled.

John M. McCormack:

Yes.

Byron R. White:

On any of the grounds that should have prevented its issuance.

John M. McCormack:

Yes, Your Honor, that’s correct.

Byron R. White:

And so you say the incontestability thing just goes to cancellation?

John M. McCormack:

That’s correct.

We cannot cancel the mark at this point, that’s correct.

John Paul Stevens:

May I ask you a question about the proceedings in the Patent and Trademark Office in response to what Justice O’Connor was concerned about.

As I understand… and you correct me if I’m wrong on the record… the issue before the examiner was whether or not the mark was descriptive.

There was no issue as to whether there was secondary meaning; is that correct?

John M. McCormack:

That’s correct, Your Honor.

John Paul Stevens:

So there isn’t any finding one way or another on the question of secondary meaning?

John M. McCormack:

That’s precisely–

John Paul Stevens:

The initial rejection was because it was not descriptive… I mean, because it was descriptive, and then the examiner changed his mind.

John M. McCormack:

–That’s correct.

The examiner said it was merely descriptive, rejected the application.

No showing of secondary meaning was ever offered to the examiner.

Byron R. White:

And then what happened?

John M. McCormack:

And then, as so often happens in these ex parte prosecutions, the examiner just buys this legal argument and the case goes to registration.

Byron R. White:

What legal argument?

John M. McCormack:

There was a legal argument.

The Petitioner filed a response saying in essence, our mark is not merely descriptive, and then cited other–

Byron R. White:

Well, then the examiner must have at least implicitly found some basis for issuing the mark.

John M. McCormack:

–Presumably so, Your Honor, though it’s hard to tell, because in many of these Patent Office cases before the examiners–

Byron R. White:

You mean the examiner just says, well, I don’t care if there’s a legal ground for it or not; I’ll give you your mark?

John M. McCormack:

–I don’t think–

Byron R. White:

Stop badgering me?

John M. McCormack:

–I don’t think I’d say that.

Byron R. White:

Well, you must be saying one thing or the other.

Either he found something that would justify issuance of the mark or he didn’t.

John M. McCormack:

I think that the examiner made a mistake.

The line between suggesting–

Byron R. White:

You mean he made a mistake in the sense that he didn’t think he needed a ground to issue it?

John M. McCormack:

–No, he felt that he–

Byron R. White:

He mistakenly found a ground?

John M. McCormack:

–He mistakenly found–

Byron R. White:

What ground is that?

You don’t know?

John M. McCormack:

–He mistakenly found that the mark was suggestive, as opposed to merely descriptive.

Byron R. White:

All right, all right.

So he did find that, implicitly?

John M. McCormack:

Implicitly.

There’s nothing in the record that would show.

There’s no response from the examiner.

Byron R. White:

Well, isn’t that what Justice O’Connor was really inquiring about?

Precisely.

Well, I sure didn’t understand that… I thought there was a difference between merely descriptive and being descriptive with a secondary meaning.

They did address the descriptiveness issue, but they did not address the secondary meaning issue.

John M. McCormack:

They did not address the secondary meaning issue.

What we’re saying here is, the words of the mark itself, “Park ‘N Fly”, as used on an offsite airport parking lot merely describe the functions, the characteristics of that lot.

The examiner was correct.

His initial reaction was precisely correct by saying that the mark was merely descriptive.

Sandra Day O’Connor:

Well, but he changed his mind, you see, and there had to be a reason, unless he does it by just throwing the papers up in the air and seeing which one lands.

He had a reason for changing his mind, and the only reason legally that would have permitted him to would be to conclude that it had a secondary meaning, right?

John M. McCormack:

No, Your Honor.

I respectfully–

Sandra Day O’Connor:

Well, what other legal ground would he have had to issue the trademark?

John M. McCormack:

–He would contend that the mark was suggestive.

Suggestive marks supposedly are registrable.

But this mark is not suggestive.

Byron R. White:

Well, but you agree that he implicitly found that it was.

He must have.

John M. McCormack:

He must have, Your Honor.

Byron R. White:

Which is a valid ground for issuing it, if it were true.

John M. McCormack:

If it were true.

Thurgood Marshall:

Mr. McCormack, if that had been raised it would have been cancelled, wouldn’t it, under your argument?

John M. McCormack:

It would never have been registered in the first place, Your Honor.

Thurgood Marshall:

Well, after it was registered how could it be cancelled?

John M. McCormack:

Somebody in a court action, if they–

Thurgood Marshall:

You could have?

John M. McCormack:

–Yes.

Thurgood Marshall:

But you didn’t.

John M. McCormack:

Well, that’s because the lawsuit didn’t come until after the mark had become, according to–

Thurgood Marshall:

And so since you couldn’t take an action to cancel it, you took this action.

John M. McCormack:

–Well, we said that the mark cannot be enforced.

Thurgood Marshall:

You couldn’t have filed an action to cancel?

John M. McCormack:

No, Your Honor, we couldn’t.

Thurgood Marshall:

So you filed this one in lieu thereof.

John M. McCormack:

Yes.

William H. Rehnquist:

He defended it.

Couldn’t the provisions of Section 1119 that you quoted about judicial review be given full force and effect by saying, that’s what courts can do during the period of… during the period before it becomes incontestable, the five-year period?

John M. McCormack:

I think the courts can do that at any time, Your Honor.

William H. Rehnquist:

Now, what does incontestability mean?

John M. McCormack:

Incontestability means that if a mark has been accorded registration properly, in accordance with the substantive requirements of Section 1052(e), for example, then there are certain procedural advantages that will be given to that registration.

John M. McCormack:

But only then… if you have a procedural advantage under incontestability, we don’t see how that can override a substantive failure under proper registration.

William H. Rehnquist:

You say that’s always open, notwithstanding the five-year incontestability?

John M. McCormack:

Always, Your Honor, because it’s a fundamental defense.

If the mark should never have been registered in the first place and if we can show that, which we have… the evidence is exhaustive showing that Park ‘N Fly is merely descriptive, it’s not suggestive, it’s not arbitrary or fanciful.

If it does not comply with the initial registration requirements of Section 1052, the substantive requirements of trademark law, then it can never be enforced.

William H. Rehnquist:

Well, registration and incontestability then certainly don’t mean much in your book.

John M. McCormack:

I think that the way the statute… it’s not only my book, Your Honor.

The amici brief here says that there are 21 exceptions.

Mr. Popkin says that there are seven and he concedes, well, maybe 1116 allows him some others.

There’s all kinds of exceptions to this particular statute.

We feel that fundamental defenses such as non-likelihood of confusion, which are not listed as those seven defenses, are so key to implementation of the Lanham Act, if non-likelihood of confusion isn’t a defense, what does a Defendant against an incontestable registration?

Just sit there and say, well, I lose?

You know, obviously a Defendant can plead non-likelihood of confusion.

William H. Rehnquist:

But isn’t that a traditional defense to an injunction?

John M. McCormack:

Yes, and mere descriptiveness is a traditional defense, too.

It’s a fundamental defense.

William H. Rehnquist:

Well, I said defense to an injunction, not a defense on the merits of the copyright action.

Non-likelihood of confusion I would think could be analogized to unclean hands, the kind of equitable type defenses that really don’t go to the substantive law.

John M. McCormack:

I respectfully submit, Your Honor, that non-likelihood of confusion is a very substantive provision of trademark law, and I’ll attempt to explain why.

Marks can be registered for one class of goods or services.

For instance, Ford is registered for automobiles.

Now, if somebody else comes along and they use Ford for say a florist shop… now, I’m not attempting to impugn Ford, obviously.

I’m just using this as an example.

But if Ford attempted to sue the owner of the florist shop for trademark infringement, the florist would say: There is no likelihood of confusion here because we sell flowers under the Ford name… a very substantive defense going to non-related goods in issue.

It’s not an equitable defense per se, like laches or unclean hands or whatever.

So it is a substantive defense, non-likelihood of confusion is, just as if a mark is not registrable in the first place, substantively it’s not registrable under Section 1052(e), if it’s not registrable in the first place then to accord it protection under the incontestability provision seems to us to completely frustrate the purpose of the Lanham Act, which is to protect trademarks, and trademarks must identify and distinguish the goods or services of one manufacturer from the services of another.

Sandra Day O’Connor:

Mr. McCormack, the defensive/offensive distinction is really something developed by the judiciary.

What is there in the legislative history of the Lanham Act that would indicate support for that judicial gloss on the statute?

John M. McCormack:

The term “offensive/defensive dichotomy” is a shorthand way for the courts saying that they do not want to enforce a merely descriptive… merely descriptive mark.

That strikes the courts as being incorrect.

John M. McCormack:

There’s something substantively and basically wrong with that.

Sandra Day O’Connor:

So what is it in the legislative history of the Lanham Act that lends any support?

John M. McCormack:

The legislative history of the Lanham Act, it was set up to proscribe registration of merely descriptive terms under Section 1052(e).

Sandra Day O’Connor:

Well, can you point to anything other than the text of the statute?

John M. McCormack:

Your Honor, we did not research that specific point.

The Lanham Act I believe would have much trademark on saying that merely descriptive marks were not to be accorded registration, because that follows with traditional trademark law.

Sandra Day O’Connor:

Well, the inquiry was not as to merely descriptive, but whether there is a defensive/offensive distinction in the enforcement aspect.

John M. McCormack:

Yes, Your Honor.

I am unaware of any specific defensive/offensive… I think that’s fashioned by courts to prevent unjust and inequitable results.

Sandra Day O’Connor:

Regardless of what the Congress might have intended when the language was drafted?

John M. McCormack:

I believe that the courts have fashioned that shorthand way of interpreting the statute because they have felt that they would be interpreting the Lanham Act the way the Congress wanted it to be interpreted.

Sandra Day O’Connor:

Is that primarily for policy reasons of trying to discourage taking out of commonly used words from our–

John M. McCormack:

Yes, Your Honor.

Sandra Day O’Connor:

–useable language?

John M. McCormack:

Yes, Your Honor.

Sandra Day O’Connor:

Well, isn’t that the kind of a policy issue that Congress really should address, rather than the Court?

John M. McCormack:

I think that Congress has addressed that.

I can’t point to a specific provision.

But through traditional trademark law cases, one of the main reasons for not registering merely descriptive marks is that it would have an anti-competitive effect, and the trademark statute said that it was set up to provide protection to consumers and to trademark owners.

And protection… this is in the preamble to the Lanham Act.

And it said that one of the reasons for the Lanham Act was to foster fair competition, and by taking merely descriptive words out of the language and giving them to one party to their exclusive use so no other party could use it would harm competition.

And there’s another point that I would like–

William H. Rehnquist:

Do you feel that your Park ‘N Fly or Dollar Park and Fly can’t compete with the Petitioner because you can’t use the name Dollar Park and Fly?

John M. McCormack:

–We feel that Park and Fly is a very apt shorthand way of immediately informing prospective users of our parking lot what those services are.

If you can picture the words “Park and Fly” up on a sign; somebody is driving around near an airport, they see that sign, they know immediately, I can go there and park so I can fly on a plane.

They know it immediately.

So it is very valuable to us to be able to use “Park and Fly”.

Other companies may or may not choose to use “Park and Fly”.

Many others have chosen to use “Park and Fly”, and the record is replete with these instances.

These are others beside Petitioner, extending everywhere from… completely across the country.

John M. McCormack:

These are other parties that have used “Park and Fly”.

They’ve selected to use the name in Boston, New York, Philadelphia, Atlanta, in Indiana, in Denver, Los Angeles, Portland, Seattle, and over a very widespread period of time, from 1970 at least through the time of trial, 1981.

In the district court case, somebody else had just used “Park and Fly” in Portland, another party.

It’s a term that–

John Paul Stevens:

Mr. McCormack, can I ask you a question on your theory.

Assume we agreed with your view of the law.

Would you lose if they had proved secondary meaning?

John M. McCormack:

–I believe so, Your Honor.

John Paul Stevens:

And supposing they prove secondary meaning in the areas in which they operate, but not in the area in which your client operates.

Would you still lose?

John M. McCormack:

No, because they don’t operate in our area.

They would actually have to be in our market area or have a reputation.

John Paul Stevens:

In other words, they not only must prove secondary meaning in your view, but also secondary meaning in every market in which they seek to enforce the mark?

John M. McCormack:

They have to prove likelihood of confusion.

They would have to be in our market.

John Paul Stevens:

Well, at least to talk about the validity of the mark and the enforceability.

John M. McCormack:

They could attempt to enforce the mark.

It would be a valid mark if they showed that it had secondary meaning.

John Paul Stevens:

If it had secondary meaning in any market?

John M. McCormack:

Excuse me?

John Paul Stevens:

If it had secondary meaning in any market?

John M. McCormack:

No, they would… if they had secondary meaning in any market, then they would have a valid mark, but they would still have to show likelihood of confusion.

John Paul Stevens:

Let me put it a little differently.

Supposing before the patent examiner, instead of fighting about whether it was descriptive, they say: We agree it’s descriptive, but we can prove it has secondary meaning in Atlanta.

And they just prove it had secondary meaning in Atlanta and then went ahead and registered and filed an affidavit later.

Would you lose?

John M. McCormack:

No, and the reason for that is that they may not have… their reputation zone may not extend into the Portland-Seattle area.

Under the Dawn Donut rule, they actually have to have a reputation in our area.

They’d have to be in our area or have a reputation in our area.

But we also have a second, very fundamental defense here, and that is that Respondent here has a defense under subsection (5) of 1115(b), and that is the so-called innocent user defense.

John M. McCormack:

And Respondent had use… Respondent’s in privity with the party that had used.

John Paul Stevens:

Well, of course, that’s a different theory than the Ninth Circuit’s theory, though.

That’s a different theory than the Ninth Circuit’s theory?

John M. McCormack:

Than the Ninth Circuit’s theory, yes, the offensive-defensive dichotomy, yes, that’s correct.

Byron R. White:

Let me ask… let me make sure.

If an incontestable mark becomes generic, it can be cancelled?

John M. McCormack:

Yes, Your Honor.

Byron R. White:

So that you just wouldn’t lose your exclusive right; you would lose the mark.

John M. McCormack:

That’s correct, Your Honor.

We’re not asking for cancellation.

Byron R. White:

No, I understand.

Warren E. Burger:

Your time has expired, counsel.

John M. McCormack:

The Ninth Circuit Court of Appeals decision should be affirmed.

Thank you.

Warren E. Burger:

Do you have anything further?

You have two minutes remaining, Mr. Popkin.

Alan E. Popkin:

Thank you, Your Honor.

First of all, I think that counsel said that during that five-year period, when Mr. Justice Marshall was questioning him, that they couldn’t have done anything because the suit was brought later.

But any time up until that five years ran they could have themselves brought a cancellation proceeding to have this mark cancelled, and any defense would have applied.

Moreover, when they talk about the fundamental defense of non-likelihood of confusion, non-likelihood of confusion goes to infringement, not to validity of the mark.

And what 1115(b) addresses itself to is whether the defenses are available in an incontestability proceeding as to the mark’s validity.

Of course non-likelihood of confusion is available, because that’s… if Park’N Fly decided to sue somebody who was calling himself Joe’s Parking Service, they could not prevail, because the test would again be was there any likelihood of confusion.

Byron R. White:

Well, suppose one of the defenses is proved in 1115.

You say that goes to the validity of the mark?

Alan E. Popkin:

Yes, sir.

Byron R. White:

Not just whether you can prevent somebody else from using, not just to your exclusive right?

Alan E. Popkin:

In a trademark infringement action, Your Honor, there are two issues involved.

The first issue is whether the mark is valid.

It’s much like a title suit, a suit on a piece of property.

The second issue is whether the mark has been infringed, and 1115(b) and all of the incontestability provisions speak to that first portion: Is the mark valid?

Alan E. Popkin:

If it’s valid, then it’s susceptible of being enforced.

But the provisions and the exceptions speak to that.

With regard to Justice O’Connor’s question as to what happened in the Patent Office, on page 57 of the joint appendix there is the ruling of the Patent Office, and it says:

“The mark of the application above identified appears to be entitled to registration. “

Warren E. Burger:

Let me ask you a concrete question.

Alan E. Popkin:

Yes, sir.

Warren E. Burger:

Mr. Popkin, suppose they put up a sign in just large, bold-faced type: “Park/Fly”.

Now, those are two common words, just “Park/Fly”.

Alan E. Popkin:

What do I think of it?

I think that’s a question of fact for the court below to decide, whether or not that’s confusingly similar with “Park ‘N Fly”.

That’s something he can take evidence on and make a decision with respect to.

That’s a question of fact of whether it’s confusingly similar.

Warren E. Burger:

Yes.

Well, now presented you’re the judge.

You’re finding the facts.

Alan E. Popkin:

An enviable position, Your Honor.

[Laughter]

Warren E. Burger:

What would you do?

Is it confusing?

Alan E. Popkin:

I would find that confusingly similar.

I think it would be.

I wouldn’t have any trouble with it.

But I would be glad to hear evidence on both sides, and perhaps we would have consumer surveys and the like.

Warren E. Burger:

Very well.

Thank you, gentlemen–

John Paul Stevens:

Mr. Popkin, can I ask you–

0 [Briefinterruption.]

Alan E. Popkin:

Yes, Your Honor.

Mr. Popkin, I just wanted to complete one thought because it was lost in the dialogue.

You quoted the ruling of the examiner that the mark is entitled to registration.

Is it not perfectly clear from the affidavit that was filed on behalf of your client that the reason it was entitled to application was that he presumably accepted the argument that it was not a descriptive mark?

Alan E. Popkin:

In my opinion that is true, Your Honor.

I can’t–

John Paul Stevens:

You can’t be positive.

Alan E. Popkin:

–I can’t be positive.

John Paul Stevens:

But there was no effort in the Patent Office to try and establish secondary meaning?

Alan E. Popkin:

No, sir.

And if you want my opinion–

John Paul Stevens:

It’s not descriptive.

Alan E. Popkin:

–it’s because he found that it was not descriptive.

And that may mean not that it was just suggestive, but the brief suggested that it was arbitrary or fanciful, because Park ‘N Fly not only implied taking a plane, it implied parking and getting away with great haste so that you could meet your plane.

Thank you.

Warren E. Burger:

–Thank you, gentlemen.

The case is submitted.