Park 'n Fly, Inc. v. Dollar Park and Fly, Inc.

• Decision Date: 20 February 1986
• Docket Number: No. 82-3220,82-3220
• Citation: 782 F.2d 1508
• Parties: , 228 U.S.P.Q. 853 PARK 'N FLY, INC., Plaintiff-Appellee, v. DOLLAR PARK AND FLY, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1508

782 F.2d 1508

54 USLW 2468, 228 U.S.P.Q. 853

PARK 'N FLY, INC., Plaintiff-Appellee, v. DOLLAR PARK AND FLY, INC., Defendant-Appellant.

No. 82-3220.

United States Court of Appeals Ninth Circuit.

Argued and Submitted March 8, 1983.

Decided Feb. 20, 1986.

Paul L. Gardner, Spensley, Horn, Jabas & Lubitz, Los Angeles, Cal., Alan E. Popkin, Timothy F. Noelker, Jeffrey N. Klar, Popkin, Stern, Heifetz, Lurie, Sheehan, Reby & Chervitz, St. Louis, Mo., for defendant-appellant.

J. Pierre Kolisch, Kolisch, Hartwell & Dickinson, Portland, Or., for plaintiff-appellee.

Appeal from the United States District Court for the District of Oregon.

Before KENNEDY, TANG and POOLE, Circuit Judges.

KENNEDY, Circuit Judge:

We consider this case on remand from the Supreme Court, --- U.S. ----, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985), which reversed our decision, 718 F.2d 327 (9th Cir.1983). The Supreme Court held that the holder of a registered mark may rely on incontestability, 15 U.S.C. Sec. 1115(b), to enjoin an infringement, and that an action to enjoin the infringement of an incontestable mark may not be defended on the ground that the mark is merely descriptive. 105 S.Ct. at 667. We now consider the remaining issues on appeal.

Dollar Park and Fly, Inc. (Dollar) raised two defenses in the infringement action brought by Park 'N Fly, Inc. (Park 'N Fly). First, Dollar argued that it was relieved of liability for infringement under the prior innocent use exception to incontestability. 15 U.S.C. Sec. 1115(b)(5) (1982). Second, Dollar argued that it had not infringed Park 'N Fly's mark because there was no likelihood of confusion. 15 U.S.C. Sec. 1114 (1982). The district court found that Dollar did not qualify for the prior innocent use exception, and that there was sufficient evidence of likelihood of confusion to justify relief. We affirm.

Under 15 U.S.C. Sec. 1115(b)(5), the Lanham Act creates a narrow exception to the conclusive presumption of a registrant's right to use its incontestable mark. The prior innocent use exception applies when the mark has been used by a party or those in privity with it since a date prior to registration of the mark. Dollar argues that it is in privity with a separate corporation in Seattle that has operated an airport parking lot called "Dollar Park-Fly" since a date prior to registration of the mark, and that that corporation shares common ownership with Dollar. Aside from common ownership, however, there is no connection between Dollar and the Seattle corporation. The cases relied upon by Dollar, In re Gottheiner, 703 F.2d 1136 (9th Cir.1983), and Wolff v. Du Puis, 233 Or. 317, 378 P.2d 707 (1963) (en banc), are inapposite as they involve collateral estoppel and res judicata principles. Even under the definition of privity in the collateral estoppel context, there is no privity between the two separate corporations. The prior innocent use exception is consequently not available to Dollar.

We also find that there is sufficient evidence of likelihood of confusion between the marks. Alpha Industries, Inc. v. Alpha Steel Tube & Shapes, Inc., 616 F.2d 440 (9th Cir.1980), set forth five factors for determining whether a likelihood of confusion exists:

1. The similarity of the marks.

2. Evidence of actual confusion.

3. Relationship between appellant's and appellee's goods and channels of trade.

4. The strength of [Park 'N Fly's] mark.

5. [Dollar's] intent in adopting its mark.

Id. at 444. We review the district court's finding of a likelihood of confusion under the clearly erroneous...