Park 'N Fly, Inc. v. Park & Fly, Inc.

• Decision Date: 16 October 1979
• Docket Number: Civ. A. No. 79-596-S.
• Citation: 489 F. Supp. 422
• Parties: PARK 'N FLY, INC., Plaintiff, v. PARK & FLY, INC., Defendant.
• Court: U.S. District Court — District of Massachusetts

489 F. Supp. 422

PARK 'N FLY, INC., Plaintiff, v. PARK & FLY, INC., Defendant.

Civ. A. No. 79-596-S.

United States District Court, D. Massachusetts.

October 16, 1979.

M. Frederick Pritzker, M. Robert Dushman, Brown, Rudnick, Freed & Gesmer, Boston, Mass., Paul L. Gardner, Bruce S. Alpert, Los Angeles, Cal., for plaintiff.

Michael A. D'Avolio, East Boston, Mass., Joseph Iandiorio, Waltham, Mass., for defendant.

MEMORANDUM AND ORDER ON MOTION FOR PRELIMINARY INJUNCTION

SKINNER, District Judge.

Park 'N Fly, Inc. has moved for a preliminary injunction against Park & Fly, Inc. for alleged trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1051 et seq. The plaintiff is a Missouri corporation which, since 1967, has been continuously engaged in the business of operating parking areas just outside major airports, and providing shuttle buses for its customers between the parking lots and the nearby airport. Plaintiff operates in St. Louis, Cleveland, San Francisco, New Orleans, Houston, and Montreal. It opened a lot in Boston in September 1979. Plaintiff conducts all of its business under the trade name "Park 'N Fly" which, together with its "logo", was registered in the United States patent office on August 31, 1971. Plaintiff has used this mark continuously for five consecutive years and has filed an affidavit setting forth these and other requisite facts with the Commissioner of Patents and Trademarks. Defendant is a Massachusetts corporation which, since October 1977, has operated an off-airport parking site with services similar to those of the plaintiff in East Boston, near Logan Airport. Defendant has advertised its business using the service mark "Park & Fly" on billboards and in various publications. The parties' businesses are immediately adjacent to each other.

Plaintiff seeks to enjoin defendant from using the mark "Park & Fly" on the ground that it is confusingly similar to plaintiff's registered service mark "Park 'N Fly", and thus infringes the latter mark in violation of 15 U.S.C. § 1114.¹

A preliminary injunction should issue only if the moving party has "demonstrated a danger of immediate irreparable harm absent such injunctive relief . . ." and has ". . . shown a probability that it would prevail on the merits . . .", Automatic Radio Mfg. Co., Inc. v. Ford Motor Co., 390 F.2d 113, 115 (1st Cir.), cert. denied, 391 U.S. 914, 88 S.Ct. 1807, 20 L.Ed.2d 653 (1968). In light of the obvious likelihood of confusion between the two virtually identical names, and the difficulty of ascertaining the possible continuing loss of sales, goodwill and reputation, I find that irreparable injury is likely. Omega Importing Corp. v. Petri-Kine Camera Co., Inc., 451 F.2d 1190, 1195 (2d Cir. 1971); Trak, Inc. v. Benner Ski KG, 475 F.Supp. 1076 (D.Mass., 1979).

The Lanham Act, 15 U.S.C. § 1051 et seq., provides uniform federal rights and remedies for the protection of trade and service marks. Any person who uses a colorable imitation or copy of a valid trademark in commerce in a manner which is "likely to cause confusion or to cause mistake, or to deceive," will be liable to the owner of the trademark. 15 U.S.C. § 1114(1). The likelihood of confusion between these two adjacent operations is conceded; at issue is the validity of plaintiff's trademark.

Any person who wishes to distinguish his goods from others used in commerce may register his trademark under 15 U.S.C. § 1051. The Patent and Trademark Office may not refuse registration except upon grounds enumerated in § 1052, the only relevant one of which is § 1052(e)(1), denying protection to a trademark that is "merely descriptive" of the goods. This restriction is modified, however, by § 1052(f), allowing registration for a mark "which has become distinctive of the applicant's goods," i. e., has acquired secondary meaning. Once a trademark has been registered, there arises a statutory rebuttable presumption of its validity and of the registrant's exclusive right to use the mark in commerce. 15 U.S.C. § 1057(b). Venetianaire Corp. of America v. A & P Import Co., 429 F.2d 1079, 1080 n.1 (2d Cir. 1970).

After five consecutive years of continuous use of the trademark, the right of the registrant to use such mark becomes incontestable, pursuant to § 1065, except that, under § 1065(4), "no incontestable right shall be acquired in a mark which is the common descriptive name of any article or substance." This provision complements § 1064, which provides for cancellation of a registration "at any time if the registered mark becomes the common descriptive name of an article or substance." 15 U.S.C. § 1064(c). A crucial distinction between "merely descriptive" and a "common descriptive name" thus becomes apparent, for under the former, a trademark may retain validity if it has acquired secondary meaning, whereas the latter may never retain statutory protection. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10 (2d Cir. 1976).

Once a registered mark has become incontestable, "the registration shall be conclusive evidence of the registrant's exclusive right to use the registered mark in commerce." 15 U.S.C. § 1115(b). An opposing party may, however, contest the trademark by establishing any of seven listed defenses or defects, of which only the following "fair use" defense is applicable to this case: "that the use of the name, term, or device charged to be an infringement is a use, otherwise than as a trade or service mark . . . of a term or device which is descriptive of and used fairly and in good faith only to describe to users the goods or services of such party." 15 U.S.C. § 1115(b)(4).

The threshold question in trade name infringement actions is whether the word or phrase was initially registerable or protectable. American Heritage Life Insurance Co. v. Heritage Life Insurance Co., 494 F.2d 3, 10 (5th Cir. 1974). To determine the "strength" of a particular trademark, federal courts have resorted to a rough classification scheme, whereby marks are categorized in ascending order of eligibility for protection, as either (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful. S. S. Kresge Co. v. United Factory Outlet, Inc., 598 F.2d 694, 696 (1st Cir. 1979); Abercrombie & Fitch v. Hunting World, Inc., 537 F.2d at 9. The Fifth Circuit has recently defined these terms:

A generic term is the name of a particular genus or class of which an individual article or service is but a member. Most courts hold that a generic term is incapable of achieving trade name protection. A descriptive term identifies a characteristic or quality of an article or service and, though ordinarily not protectable, may become a valid trade name if it acquires a secondary meaning. A suggestive term suggests, rather than describes, a characteristic of the goods or services and requires an effort of the imagination by the consumer in order to be understood as descriptive. General Shoe Corp. v. Rosen, 111 F.2d 95, 98, 45 USPQ 196, 198-199 (4th Cir. 1940). A suggestive term requires no proof of secondary meaning in order to receive trade name protection. An arbitrary or fanciful term bears no relationship to the product or service and is also protectable without proof of secondary meaning.

The Vision Center v. Opticks, Inc., 596 F.2d 111, 115-116, 202 USPQ 333, 338 (5th Cir. 1979). See also Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 79 (7th Cir. 1977). The basic policy underlying these fine distinctions is to reward the ingenious businessman while preventing governmental sanction of a monopoly gained when a competitor is not allowed to "describe his goods as what they are." CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11, 13 (2d Cir. 1975).

The final step in trademark law analysis is to relate these pigeonholes to the strictures of the Lanham Act. As generic trademarks have been held to be unprotectable through registration, S. S. Kresge Co. v. United Factory Outlet, 598 F.2d at 696; Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d at 79, they are considered synonymous with the term "common descriptive name", which is denied trademark protection under § 1064(c), and may not become incontestable under § 1065(4). The Vision Center v. Opticks, Inc., 596 F.2d at 117 n.17, 202 USPQ at 340 n.17; Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d at 10. "Descriptive" terms may be attacked as "merely descriptive" under § 1052(e)(1), unless they have acquired secondary meaning, as defined in § 1052(f). Much of the litigation centers around the characterization of a term as "descriptive" and thus not subject to exclusive appropriation, or "suggestive", where, because it requires "imagination, thought and perception to reach a conclusion as to the nature of the goods," the mark is protected. Stix Products, Inc. v. United Merchants & Mfrs. Inc., 295 F.Supp. 479, 488 (S.D.N.Y.1968). The intricate balancing involved in the determination of "merely descriptive" is avoided, however, once a term has become incontestable, as no such defense is listed in § 1115(b). Instead, the registrant need only hurdle the lower obstacle of showing his mark is not the generic or "common descriptive name" of the goods. § 1065(4).²

Few courts have dealt with the effect of incontestability in infringement cases, for until recently, this statutory protection has been construed to provide only a "shield", not a "sword". Beginning with an Assistant Patent Commissioner's opinion in Rand McNally & Co. v. Christmas Club, 105 USPQ 499 (Comm. of Pat. 1955), aff'd 242 F.2d 776, 44 CCPA 861 (1957), many federal courts indicated that incontestability could be used defensively, to prevent cancellation of registration, but not offensively, in an infringement action. Tillamook County Creamery Assoc. v. Tillamook Cheese and Dairy Assoc., 345 F.2d 158 (9th Cir.), cert. denied, 382 U.S. 903, 86 S.Ct. 239, 15 L.Ed.2d 157 (1965); John Morrell & Co. v....