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
Alan E. Popkin - on behalf of Petitioner
John M. McCormack - on behalf of Respondent
Facts of the case
Media for Park N' Fly Inc. v. Dollar Park and Fly, Inc.
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: