469 U.S. 189, 194 (1985)
Park'N Fly, Inc. began operating long-term parking lots near airports in St. Louis in 1967.1 It later expanded to facilities in Cleveland, Houston, Boston, Memphis, and San Francisco.2 In 1969 the company applied to the United States Patent and Trademark Office to register a service mark consisting of an airplane logo and the words "Park'N Fly."3 The registration issued in August 1971.4
Nearly six years later the company filed an affidavit under section 15 of the Lanham Act.5 The affidavit stated that the mark had been registered and in continuous use for five consecutive years with no final adverse decisions or pending proceedings.6 This established incontestable status.7
Dollar Park and Fly, Inc. provides long-term airport parking services only in Portland, Oregon.8 In 1978 Park'N Fly filed an infringement action in the United States District Court for the District of Oregon seeking a permanent injunction against Dollar Park and Fly's use of the words "Park and Fly."9 Dollar Park and Fly counterclaimed for cancellation of the mark on the ground that it is generic.10 It argued that the mark is unenforceable because it is merely descriptive.11 It asserted a prior-use defense based on privity with a Seattle corporation.12 It denied any likelihood of confusion.13
After a bench trial the District Court found that the mark is not generic.14 It observed that an incontestable mark cannot be challenged as merely descriptive.15 It found no evidence of privity with the Seattle corporation.16 It found sufficient evidence of likelihood of confusion.17 The court permanently enjoined Dollar Park and Fly from using the words "Park and Fly" or any confusingly similar mark.18
The Court of Appeals for the Ninth Circuit reversed.19 It held that incontestability provides only a defense against cancellation and may not be used offensively to enjoin another's use.20 The infringement action could proceed only if the mark would be entitled to registration without regard to its incontestable status.21 The Ninth Circuit then examined the record and determined that the mark is merely descriptive.22
The Ninth Circuit's decision conflicted with the Seventh Circuit's holding in Union Carbide Corp. v. Ever-Ready, Inc.23 The Supreme Court granted certiorari to resolve the conflict.24
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?25
Under sections 15 and 33(b) of the Lanham Act, 15 U.S.C. §§ 1065 and 1115(b), registration of an incontestable mark constitutes conclusive evidence of the registrant's exclusive right to use the mark, subject only to the conditions listed in section 15 and the seven enumerated defenses in section 33(b); mere descriptiveness is not among those defenses or conditions, and section 14(a) permits cancellation on descriptiveness grounds only within five years of registration.26
No. Park'N Fly established incontestable status through its section 15 affidavit after five years of continuous use.27 Dollar Park and Fly defended the infringement action by claiming the mark is merely descriptive.28 The statute limits challenges to the enumerated defenses in section 33(b) and the conditions in section 15, which exclude mere descriptiveness.29 The District Court correctly applied the statute by refusing to entertain the descriptiveness defense.30
The Ninth Circuit's offensive/defensive distinction lacks any basis in the statutory text and would nullify the conclusive-evidence provision of section 33(b).31
An action to enjoin the infringement of an incontestable trade or service mark may not be defended on the grounds that the mark is merely descriptive.32
Related opinions on this issue
Justice Stevens dissented on the ground that the mark was registered without any proof of secondary meaning as required by section 2(f) of the Lanham Act.33 He argued that the legislative history demonstrates Congress assumed secondary meaning would be established before a descriptive mark could achieve incontestable status.34 Section 37 grants courts broad authority to rectify the register in any action involving a registered mark.35
Stevens concluded that the registrant of a merely descriptive mark should not obtain an injunction without proving secondary meaning.36 No public purpose is served by protecting a mark that does not distinguish the source of goods or services.37