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

Decision Date05 March 1984
Docket NumberNo. 82-3220,82-3220
Citation718 F.2d 327
PartiesPARK 'N FLY, INC., Plaintiff-Appellee, v. DOLLAR PARK AND FLY, INC., Defendant-Appellant.
CourtU.S. Court of Appeals — Ninth Circuit

Paul L. Gardner, Beverly Hills, Cal., Spensley, Horn, Jubas & Lubitz, Los Angeles, Cal., for plaintiff-appellee.

J. Pierre Kolisch, Kolisch, Hartwell & Dickinson, Portland, Or., for defendant-appellant.

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

Before KENNEDY, TANG, and POOLE, Circuit Judges.

KENNEDY, Circuit Judge:

Dollar Park and Fly, Inc. (Dollar) appeals from a judgment of the district court upholding the validity of the service marks registered by Park 'N Fly, Inc. (Park 'N Fly) and enjoining Dollar's use of the name "Park and Fly." We conclude that although there is insufficient evidence to invalidate Park 'N Fly's service marks, Park 'N Fly is not entitled to the injunctive relief given by the district court.

Park 'N Fly and Dollar both operate long term parking lots near airports and provide shuttle bus service to and from the airport terminals. Park 'N Fly has been in business since 1967 and has operations in St. Louis, Cleveland, Boston, Atlanta, Houston, Memphis, and San Francisco. Dollar has been in business since 1973 and operates only in Portland, Oregon. 1

In 1969 Park 'N Fly filed with the U.S. Patent and Trademark Office an application for registration of a service mark consisting of an airplane logo and the words "Park 'N Fly." The registration issued as Registration No. 919,591 in 1971, and Park 'N Fly obtained incontestable status for the mark in 1977. Later in 1977 Park 'N Fly filed an application for registration of a service mark consisting solely of the words "Park 'N Fly." That registration issued as Registration No. 1,111,966 in 1979.

Since the registration of its first mark, Park 'N Fly has been confronted with the rise of over a dozen airport parking lots operating under names akin to "Park and Fly." Park 'N Fly has procured a cessation of the use of the name in most cases through letters. In some cases, however, it has resorted to litigation. See, e.g., Park 'N Fly, Inc. v. Park & Fly, Inc., 489 F.Supp. 422 (D.Mass.1979).

Park 'N Fly filed this suit, and Dollar subsequently counterclaimed. After the issues were reduced to Park 'N Fly's request for an injunction and Dollar's request for the cancellation of Park 'N Fly's marks, the trial court found that Park 'N Fly's registrations were valid and that Dollar had infringed. The district court entered judgment enjoining Dollar from using the words "Park and Fly," "Park & Fly," "Park (with an airplane depicted) Fly," "Fly and Park," or any other combination confusingly similar to "Park 'N Fly."

On the merits of the appeal, we begin by noting that the cases identify four categories of trademarks: (1) generic (or common descriptive), (2) merely descriptive, (3) suggestive, and (4) arbitrary or fanciful. See Surgicenters of America, Inc. v. Medical Dental Surgeries Co., 601 F.2d 1011, 1014-15 (9th Cir.1979) (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-11 (2d Cir.1976)). A generic (or common descriptive) mark is one that refers, or has come to be understood as referring, to the genus of which the particular product or service is a species; a merely descriptive mark specifically describes a characteristic or ingredient of an article or service; a suggestive mark suggests rather than describes an ingredient, quality, or characteristic requiring imagination, thought, and perception to determine the nature of the goods; and an arbitrary or fanciful mark is usually a word or words invented solely for use as a trademark. Surgicenters, supra, 601 F.2d at 1014-15. A generic mark cannot become a registrable trademark under any circumstances, a merely descriptive mark can become a registrable trademark by acquiring a secondary meaning (i.e., becoming distinctive of the applicant's goods), and suggestive and arbitrary or fanciful marks are registrable without regard to secondary meaning. Id.; see also 15 U.S.C. Sec. 1052(e), (f).

After a registered mark has been in continuous use for five years, the registrant may obtain incontestable status for the mark pursuant to 15 U.S.C. Sec. 1065. Once a mark has become incontestable, registration is conclusive evidence of the registrant's exclusive right to use the registered mark subject only to the cancellation provisions of 15 U.S.C. Sec. 1064 and the defenses enumerated in 15 U.S.C. Sec. 1115(b). If an incontestable mark becomes generic, it may be cancelled pursuant to 15 U.S.C. Sec. 1064(c), but an incontestable mark cannot be challenged for being "merely descriptive." See Abercrombie & Fitch Co., supra, 537 F.2d at 12-13; Park 'N Fly, Inc. v. Park & Fly, Inc., 489 F.Supp. 422, 424 (D.Mass.1979).

In challenging the validity of Park 'N Fly's Registration No. 919,591, Dollar's argument is that "Park 'N Fly" is a generic mark with respect to airport parking lots. This court has addressed the standard for determining genericness in several cases. In Surgicenters of America, Inc. v. Medical Dental Surgeries Co., 601 F.2d 1011 (9th Cir.1979), we said: "If buyers take the word to refer only to a particular producer's goods or services, it is not generic. But if the word is identified with all such goods or services, regardless of their suppliers, it is generic." Id. at 1016. In Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F.2d 296 (9th Cir.1979), we said: "[T]he [challenged] trademark is valid only if 'the primary significance of the term in the minds of the consuming public is not the product but the producer.' " Id. at 302 (quoting Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 59 S.Ct. 109, 113, 83 L.Ed. 73 (1938)); see also Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F.2d 1316, 1319 (9th Cir.1982), cert. denied, --- U.S. ----, 103 S.Ct. 1234, 75 L.Ed.2d 468 (1983).

Dollar's primary argument that "Park 'N Fly" is generic is based on the words themselves. 2 The words "park" and "fly" are both ordinary words, and at least the former, or some derivative, seems essential in describing the business. Further, the word "park" followed by a verb suggesting the activity to follow occurs frequently in commerce (e.g., "park and ride," "park and shop"). Dollar also presented some evidence, though not conclusive, that "park and fly" or some close variant has been used by a number of operators, and the business was referred to by participants at airport car rental agency conventions as the "park and fly" business.

The above strongly suggests that the validity of Park 'N Fly's mark is questionable. It cannot compensate, however, for Dollar's failure to provide any evidence with respect to consumer perceptions. We must decide the case on the record before us, not on our own set of assumptions. Without evidence that to the consuming public the primary significance of the term is to denote the service Park 'N Fly offers and not its source, we are without a sufficient evidentiary basis to find Park 'N Fly's mark generic.

This distinguishes the present case from our decision in Surgicenters. On its face, the term "surgicenter" is a compound not necessarily more generic than "park and fly," and it would seem the two cases could be decided the same way. But the party attacking the trademark in Surgicenters made a record substantially different from that made by Dollar in this case. In Surgicenters, the trial court had before it forty-five exhibits which showed that in the medical community and for the consumer public generally, "surgicenter" was used in a generic sense. 601 F.2d at 1017. We noted that the district court in Surgicenters based its analysis on a careful examination of both dictionary definitions and substantial evidence of generic use by the consuming public. 601 F.2d at 1020. Such evidence was absent here.

Given the incontestable status of Park 'N Fly's Registration No. 919,951 and Dollar's failure to show that the mark is generic, we conclude that on this record the district court did not err in refusing to invalidate that mark. 3

Turning to the question of injunctive relief, we first consider the effect for this purpose of a mark's incontestable status. Park 'N Fly's argument that the...

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