# Incontestability Means Incontestable: Park 'N Fly v. Dollar Park and Fly

> The Supreme Court held that an incontestable trademark cannot be defended against on the ground that it is merely descriptive, giving registration real teeth after five years.

Topic: Trademarks  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/park-n-fly-v-dollar-park-and-fly-incontestability/


Some Supreme Court trademark cases turn on a single, deceptively simple word in the statute. *Park 'N Fly, Inc. v. Dollar Park and Fly, Inc.*, 469 U.S. 189 (1985), turned on what Congress meant by "incontestable." Park 'N Fly ran airport parking lots under a registered service mark that it had used long enough to file the affidavit making the registration incontestable. When a competitor in Portland operated under "Dollar Park and Fly," Park 'N Fly sued. The defendant's answer was that the mark was merely descriptive of airport parking and therefore unprotectable. The Court, in an opinion by Justice Sandra Day O'Connor, held that an incontestable mark cannot be defeated on that ground — a ruling that gave federal registration genuine, durable force.

## At a glance

- **Case:** *Park 'N Fly, Inc. v. Dollar Park and Fly, Inc.*, 469 U.S. 189 (1985), No. 83-1132.
- **Court:** Supreme Court of the United States; opinion by Justice O'Connor, with Justice Stevens dissenting.
- **Posture:** Review of a Ninth Circuit decision that had allowed a descriptiveness defense against an incontestable mark; reversed and remanded.
- **Holding:** An action to enjoin infringement of an incontestable mark may not be defended on the ground that the mark is merely descriptive.
- **Significance:** Confirmed that incontestability under the Lanham Act forecloses descriptiveness challenges, making five-year-old registrations far harder to attack.

## A descriptive-sounding mark turns incontestable

Park 'N Fly registered its service mark for airport parking in 1971 and, after roughly six years of continuous use, filed the affidavit under Section 15 of the Lanham Act, 15 U.S.C. § 1065, to obtain incontestable status. When it sought to enjoin Dollar Park and Fly's competing use, the district court granted the injunction. The Ninth Circuit reversed, holding that incontestability is available only as a "shield" to defend a registration against cancellation, not as a "sword" to enjoin infringement, and that a defendant could therefore still argue the mark was merely descriptive. That circuit split with others teed up the question for the Supreme Court: may the holder of an incontestable mark affirmatively enforce it, and can the defendant escape by attacking the mark's distinctiveness?

## Reading the statute: shield and sword

Justice O'Connor's opinion is a study in close statutory reading. Section 33(b), 15 U.S.C. § 1115(b), makes an incontestable registration "conclusive evidence" of the registrant's exclusive right to use the mark, "subject to" an enumerated list of defenses and defects. Mere descriptiveness does not appear on that list. Because Congress carefully catalogued the permissible challenges — fraud, abandonment, use to misrepresent source, fair use, prior use, and the like — the Court refused to read in an unlisted descriptiveness defense. The statutory text, Justice O'Connor wrote, "refutes any conclusion that an incontestable mark may be challenged as merely descriptive." The Court also rejected the shield-only theory: nothing in the Act limits incontestability to defensive use, and the function of the provisions "would be utterly frustrated" if a registrant could not actually enjoin infringers once a mark became incontestable.

## Purpose and the dissent

The majority grounded its reading in the purpose of incontestability: to reward registrants who use and maintain their marks by quieting title after five years, providing the certainty that encourages investment in a brand. Allowing a perpetual descriptiveness attack would defeat that repose, leaving even long-used marks vulnerable to relitigation of distinctiveness. Justice Stevens dissented, arguing that the legislative history and the policy against monopolizing descriptive language counseled allowing the defense; in his view, Congress had not clearly meant to let incontestability bootstrap an otherwise weak, descriptive term into an enforceable monopoly. The majority prevailed, and its bright-line rule has structured trademark prosecution strategy ever since: secure registration, use the mark continuously, and file the Section 15 affidavit to lock the door against descriptiveness challenges.

## Open questions

- **Where is the line for genericness?** The Court foreclosed descriptiveness attacks but not genericness; later disputes test when an incontestable mark has nonetheless become generic and unprotectable.
- **How strong is an incontestable but conceptually weak mark?** Incontestability settles validity, but the mark's strength for likelihood-of-confusion purposes remained a separate, contested inquiry.
- **What other defenses survive?** The opinion preserved the Section 33(b) defenses, leaving courts to police their scope case by case.

## Implications

- **File the Section 15 affidavit.** Continuous five-year use plus the incontestability affidavit converts a descriptive-leaning registration into one immune from descriptiveness attack.
- **Descriptive marks can become strong assets.** A mark that started as descriptive can be locked in, making early registration and diligent maintenance valuable even for borderline terms.
- **Litigate the right defenses.** Defendants facing an incontestable mark should pivot to genericness, abandonment, fraud, or fair use rather than descriptiveness.
- **Incontestability is enforcement power, not just defense.** Registrants can wield it offensively to enjoin infringers, not merely to resist cancellation.
- **Maintenance matters.** Because incontestability rewards continuous use and proper filings, lapses in use or maintenance can forfeit the protection the case confers.

## Frequently asked questions

**What does it mean for a trademark to be incontestable?**
Under Section 15 of the Lanham Act, a registered mark used continuously for five years can attain incontestable status. Incontestability provides conclusive evidence of the registrant's exclusive right to use the mark, subject to the specific defenses listed in Section 33(b). Mere descriptiveness is not on that list.

**What did *Park 'N Fly v. Dollar Park and Fly* hold?**
The Supreme Court held that an action to enjoin infringement of an incontestable mark may not be defended on the ground that the mark is merely descriptive. Once a mark becomes incontestable, a challenger cannot argue it should never have been registered because it lacks distinctiveness.

**Can an incontestable mark still be challenged at all?**
Yes. Incontestability is not absolute. The mark can still be attacked on the grounds enumerated in Section 33(b) and Section 14, such as fraud, abandonment, genericness, or functionality. What is foreclosed is the specific argument that the mark is merely descriptive.

## Authorities and sources

- *Park 'N Fly, Inc. v. Dollar Park and Fly, Inc.*, 469 U.S. 189 (1985) (Justia): https://supreme.justia.com/cases/federal/us/469/189/
- Opinion text (FindLaw): https://caselaw.findlaw.com/court/us-supreme-court/469/189.html
- ChanRobles full-text opinion: https://chanrobles.com/usa/us_supremecourt/469/189/
- Lanham Act § 33, 15 U.S.C. § 1115 (Cornell Legal Information Institute): https://www.law.cornell.edu/uscode/text/15/1115
- Lanham Act § 15, 15 U.S.C. § 1065 (Cornell Legal Information Institute): https://www.law.cornell.edu/uscode/text/15/1065