INDIANA LAW REVIEW [Vol

The Illegitimacy of Trademark Incontestability Kenneth L. Port* Introduction The concept of incontestability in American trademark law has caused great confusion ever since its adoption as part of United States trademark law in 1946. Commentators as well as courts typically have been uncertain about not only what incontestability means, but also its effect in trademark litigation. 1 Incontestability in American trademark law refers to the notion that after five years of use, and the satisfaction of certain procedural elements, a trademark registration owner's right to a registered ' mark becomes 'incontestable." Incontestability is defined in the Lanham Act2 as conclusive evidence of the registration's validity, the mark's validity, and the registrant's ownership of the mark. 3 Since 1946, there has been only one United States Supreme Court decision that directly addressed and attempted to clarify incontestability: 4 Park 'N Fly, Inc. v. Dollar Park & Fly, Inc. The effect of incontestability is, in fact, best demonstrated by the Park W Fly case. The plaintiff in that case owned the federal registration to the service mark PARK *N FLY which it used in connection with long-term parking and shuttle services at several major American airports. 5 The defendant used the mark DOLLAR PARK AND FLY on identical services, but only in the Portland, Oregon region. The owner of the PARK 'N FLY trademark registration sued the user of DOLLAR PARK AND FLY for trademark infringement. The Ninth Circuit reversed the lower court's grant of an injunction protecting * Visiting Assistant Professor of Law, Chicago-Kent College of Law, Illinois Institute of Technology; B.A., 1982, Macalester College; J.D., 1989, University of Wis- consin. The author wishes to express his appreciation to Ronald Staudt and Dale Nance for reading and commenting on earlier drafts of this Article, to Patrick Flynn for his invaluable research and editing assistance, and to Paula Davis Port for her continuing support. 1. See Prudential Ins. Co. of Am. v. Gibraltar Fin. Corp. of Calif., 694 F.2d 1150, 1153 n.2 (9th Cir. 1982). See also infra notes 163-76 and accompanying text. 2. 15 U.S.C. §§ 1051-1072, 1091-1096, 1111-1121, & 1123-1127 (1988) (commonly referred to as the Lanham Act). 3. Id. § 1115(b). 4. 469 U.S. 189 (1985). 5. Specifically, St. Louis, Cleveland, Houston, Boston, Memphis, and San Fran- cisco. Park 'N Fly, 469 U.S. at 191. 520 INDIANA LAW REVIEW [Vol. 26:519 6 the plaintiff, ruling that its mark was merely descriptive. On appeal, the Supreme Court reversed and held that the defendant was statutorily barred from raising the descriptive nature of the plaintiffs trademark because the trademark registration had become "incontestable" pursuant to the Lanham Act. 7 If the trademark had not become incontestable, the defendant would have been allowed to challenge the validity of the mark and probably would have been successful in arguing that the mark only described the plaintiff's services and was, therefore, invalid. 8 This notion of incontestability is jurisprudentially insupportable and should be abolished. First, the Lanham Act's primary, express purpose was to codify the existing common law of trademarks and not to create any new trademark rights. The incontestability provisions of the Lanham Act, however, created new rights never before recognized at common law. To that extent, the incontestability provisions are contrary to the express purpose of the statute and therefore insupportable. Incontestability also attempts to make a trademark itself the subject of property ownership, another concept that the common law has rejected both before and after the passage of the Lanham Act. Trademark rights are traditionally defined at common law as the right to use a certain mark on certain goods and the right to exclude others from using similar marks on similar goods in a way that would be likely to confuse or 9 deceive the public. This is not the same as saying trademarks themselves are property. To the extent incontestability makes (or attempts to make) trademarks property, it is completely inconsistent with the common law of trademarks. Because of this conceptual illegitimacy at its core, incontestability is applied in inconsistent, irregular, and sometimes completely contra- dictory ways by each circuit and even within each circuit. This confusion is likely to continue as courts struggle to reconcile and apply both the express language of the statute and hundreds of years of trademark common law which are, on the subject of incontestability, irreconcilable. This Article is first a study of the rational basis for incontestability in American trademark law. The role of incontestability in the larger regime of American trademark law is established in order to understand incontestability as it fits within the history of the common law of 6. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 718 F.2d 327 (9th Cir. 1983), rev'd, 469 U.S. 189 (1985). 7. 469 U.S. at 205. 8. See Suman Naresh, Incontestability and Rights in Descriptive Trademarks, 53 U. Chi. L. Rev. 953 (1986), for the proposition that protecting descriptive but incontestable marks is ludicrous. 9. Donald S. Chisum & Michael A. Jacobs, Understanding Intellectual Property Law § 5 A (1992). — 1993] TRADEMARK INCONTESTABILITY 521 trademarks. This is fundamental in order to understand the significance of the thesis that incontestability is illegitimate. Next, acquisition of incontestability is presented in order to show how simple it is to attain incontestable status and to put in perspective the resulting advantages. This also demonstrates the fact that incontestability is a radical departure from the common law of trademarks. This Article concludes with an analysis of trademarks themselves as property. Because the concept of incontestability was adopted without reference to the common law, and because it attempts to create property rights in a trademark itself, this Article concludes that incontestability is jurisprudentially illegitimate and should be repealed. I. Incontestability and Trademarks Under the Lanham Act A. Trademark Primer 10 Before any meaningful discussion can occur regarding incontestability, a groundwork must be laid to explain where incontestability fits into the more generalized body of law known as trademarks. Trademark jurisprudence has developed over centuries of time. During this history, there has been nothing even remotely similar to the present day notion of incontestability. Therefore, where the legislative history of the Lanham Act portrays the Act as a mere registration statute 11 codifying the common law of trademarks, it is misleading if not just plain wrong. 10. See generally Louis Aitman, Callmann Unfair Competition Trademarks and Monopolies (4th ed. 1981); Jerome Gilson, Trademark Protection and Practice (1974 & Cum. Supp. 1992); John F. Coverdale, Trademarks and Generic Words: An Effect- on-Competition Test, 51 U. Chi. L. Rev. 868 (1984). 1 1 Any mark is registrable on the Principal Register of the Patent and Trademark Office pursuant to the Lanham Act, unless it (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to 522 INDIANA LAW REVIEW [Vol. 26:519 The use of a mark to identify the source of a product actually began at least 3500 years ago when potters made scratchings on the bottom of their creations to identify their source. 12 The first judicial 13 recognition of trademarks came, however, in 1618 in Southern v. How, when a Common Pleas Judge in England made an obscure reference to a mark used on cloth. There are various renditions of how the subject of trademarks arose in Southern v. How, because the reference is actually to a prior unreported case which denied trademark rights. 14 The notion cause mistake, or to deceive. (e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, or (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive or deceptively misdescriptive of them, except as indications of regional origin may be registerable under section 1054 of this title, or (3) is primarily merely a surname. (0 Except as expressly excluded in paragraphs [(a)-(d)J of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Commissioner may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim , of distinctiveness is made. 15 U.S.C. § 1052 (1988). 12. See generally William Henry Browne, A Treatise on the Law of Trade- Marks 1-14 (Boston, Little, Brown, and Company, 2d ed.

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