fly dollar park fly argued october decided january petitioner operates parking lots near airports louis cleveland houston boston memphis san francisco petitioner applied patent trademark office register service mark consisting logo airplane words fly registration issued nearly six years later petitioner filed affidavit patent trademark office establish incontestable status mark trademark act lanham act provides registration shall conclusive evidence registrant exclusive right use registered mark subject provisions respondent provides airport parking services called dollar park fly operates portland petitioner filed infringement action federal district seeking enjoin respondent using words park fly connection business district granted injunction rejecting inter alia respondent defense petitioner mark unenforceable merely descriptive appeals reversed holding incontestability provides defense cancellation mark may used offensively enjoin another use analysis petitioner obtain injunction mark entitled continued registration without regard incontestable status therefore respondent defend showing mark merely descriptive determined petitioner mark merely descriptive respondent enjoined using words park fly held holder registered mark may rely incontestability enjoin infringement infringement action may defended grounds mark merely descriptive pp lanham act nowhere distinguishes registrant offensive defensive use incontestable mark contrary declaration registrant exclusive right use mark indicates incontestable status may used enjoin infringement act language also refutes conclusion incontestable mark may challenged merely descriptive pp nothing lanham act legislative history supports departure plain language provisions concerning incontestability indeed conclusion incontestable status may provide basis enforcement registrant exclusive right use mark promotes act goals providing national protection trademarks order secure mark owner goodwill business protect ability consumers distinguish among competing producers pp merit respondent argument appeals decision upheld trademark registrations issued ex parte proceeding generally without inquiry merits application facts case belie suggestion registration virtually automatic respondent simply wrong suggest third parties opportunity challenge applications trademark registration power courts lanham act grant injunctions according principles equity encompass substantive challenge validity incontestable mark grounds lacks secondary meaning otherwise meaning equity expanded point vitiating act specific provisions similarly power courts cancel registrations otherwise rectify register act must subject specific provisions concerning incontestability pp appeals justified relying decision tillamook county creamery tillamook cheese dairy cert denied proposition registrant may rely incontestability enjoin use mark pp delivered opinion burger brennan white marshall blackmun powell rehnquist joined stevens filed dissenting opinion post alan popkin argued cause petitioner briefs timothy noelker john mccormack argued cause respondent brief pierre kolisch thomas mccarthy filed brief american intellectual property law association et al amici curiae urging reversal justice delivered opinion case consider whether action enjoin infringement incontestable trade service mark may defended grounds mark merely descriptive conclude neither language relevant statutes legislative history supports defense petitioner operates parking lots near airports starting business louis petitioner subsequently opened facilities cleveland houston boston memphis san francisco petitioner applied patent trademark office patent office register service mark consisting logo airplane words fly registration issued august nearly six years later petitioner filed affidavit patent office establish incontestable status mark required trademark act lanham act stat amended affidavit stated mark registered continuous use five consecutive years final adverse decision petitioner claim ownership right registration proceedings involving rights pending incontestable status provides subject provisions lanham act conclusive evidence registrant exclusive right use registered mark respondent also provides airport parking services operations portland oregon respondent calls business dollar park fly petitioner filed infringement action district district oregon requested permanently enjoin respondent using words park fly connection business respondent counterclaimed sought cancellation petitioner mark grounds generic term see respondent also argued petitioner mark unenforceable merely descriptive see two additional defenses respondent maintained privity seattle corporation used expression park fly since date prior registration petitioner mark see infringed likelihood confusion see bench trial district found petitioner mark generic observed incontestable mark challenged grounds merely descriptive app district also concluded evidence privity respondent seattle corporation app finally district found sufficient evidence likelihood confusion app district permanently enjoined respondent using words park fly mark confusingly similar fly app appeals ninth circuit reversed district err appeals held refusing invalidate petitioner mark appeals noted however previously held incontestability provides defense cancellation mark may used offensively enjoin another use ibid petitioner analysis obtain injunction mark entitled continued registration without regard incontestable status thus respondent defend infringement action showing mark merely descriptive based examination record appeals determined petitioner mark fact merely descriptive therefore respondent enjoined using name park fly ibid decision direct conflict decision appeals seventh circuit union carbide cert denied granted certiorari resolve conflict reverse ii congress enacted lanham act order provide national protection trademarks used interstate foreign commerce previous federal legislation federal trademark act stat reflected view protection trademarks matter state concern right mark depended solely common law consequently rights trademarks uncertain subject variation different parts country trademarks desirably promote competition maintenance product quality congress determined sound public policy requires trademarks receive nationally greatest protection given among new protections created lanham act statutory provisions allow federally registered mark become incontestable provisions lanham act concerning registration incontestability distinguish mark common descriptive name article substance mark merely descriptive marks constitute common descriptive name referred generic generic term one refers genus particular product species abercrombie fitch hunting world generic terms registrable registered mark may canceled time grounds become generic see merely descriptive mark contrast describes qualities characteristics good service type mark may registered registrant shows acquired secondary meaning become distinctive applicant goods commerce case requires us consider effect incontestability provisions lanham act context infringement action defended grounds mark merely descriptive statutory construction must begin language employed congress assumption ordinary meaning language accurately expresses legislative purpose see american tobacco patterson respect incontestable trade service marks lanham act registration shall conclusive evidence registrant exclusive right use registered mark subject conditions certain enumerated defenses section incorporates reference subsections incontestable mark becomes generic may canceled time pursuant section also allows cancellation incontestable mark time abandoned used misrepresent source goods services connection used obtained fraudulently contrary provisions one searches language lanham act vain find support distinction applied appeals statute nowhere distinguishes registrant offensive defensive use incontestable mark contrary declaration registrant exclusive right use mark indicates incontestable status may used enjoin infringement others conclusion infringement enjoined renders meaningless exclusive right recognized statute moreover language three defenses enumerated clearly contemplates use incontestability infringement actions plaintiffs see language lanham act also refutes conclusion incontestable mark may challenged merely descriptive mark merely descriptive applicant goods services registrable unless mark secondary meaning mark achieves incontestable status registration provides prima facie evidence registrant exclusive right use mark commerce lanham act expressly provides mark becomes incontestable opposing party may prove legal equitable defense might asserted mark registered ibid thus allowed respondent challenge petitioner mark merely descriptive mark become incontestable respect incontestable marks however provides registration conclusive evidence registrant exclusive right use mark subject conditions seven defenses enumerated mere descriptiveness recognized either basis challenging incontestable mark statutory provisions prohibit registration merely descriptive mark allow incontestable mark challenged ground attributed inadvertence congress conference committee rejected amendment denied registration descriptive mark instead retained provisions allowing registration merely descriptive mark acquired secondary meaning see conf explanatory statement house managers conference committee agreed amendment providing incontestable right acquired mark common descriptive generic term congress easily denied incontestability merely descriptive marks well generic marks intention appeals discussing distinction observed incontestability protects registrant cancellation mark observation incorrect respect marks become generic otherwise may canceled time pursuant moreover applied marks merely descriptive approach appeals makes incontestable status superfluous without regard incontestable status mark registered five years protected cancellation except grounds stated pursuant mark may canceled grounds merely descriptive petition cancel filed within five years date registration approach adopted appeals implies incontestability adds nothing protections cancellation already provided decision lacks support words statute effectively emasculates circumstances case iii nothing legislative history lanham act supports departure plain language statutory provisions concerning incontestability indeed conclusion incontestable status provide basis enforcement registrant exclusive right use trade service mark promotes goals statute lanham act provides national protection trademarks order secure owner mark goodwill business protect ability consumers distinguish among competing producers see national protection trademarks desirable congress concluded trademarks foster competition maintenance quality securing producer benefits good reputation incontestability provisions proponents lanham act emphasized provide means registrant quiet title ownership mark see hearings subcommittee senate committee patents remarks lanham testimony daphne robert aba committee trade mark legislation hearings et al subcommittee house committee patents remarks lanham opportunity obtain incontestable status satisfying requirements thus encourages producers cultivate goodwill associated particular mark function incontestability provisions utterly frustrated holder incontestable mark enjoin infringement others long established mark registrable incontestable status respondent argues however enforcing petitioner mark conflict goals lanham act mark merely descriptive never registered first place representative lanham respondent notes explained defenses enumerated intended enlarge restrict amend modify substantive law trademarks either set sections act heretofore applied courts prior laws cong rec respondent reasons lanham act alter substantive law trademarks incontestability provisions protect petitioner use mark originally registrable moreover inasmuch petitioner mark merely descriptive respondent contends enjoining others using mark encourage competition assisting consumers ability distinguish among competing producers arguments unpersuasive representative lanham remarks read context clearly refer effect defenses enumerated question lanham act altered existing law concerning trademark rights several respects example provides constructive notice registration modifies rule allowed acquisition concurrent rights users distinct geographic areas subsequent user adopted mark without knowledge prior use see hanover star milling metcalf describing act law similarly cuts certain grounds cancellation five years registration thereby modifies previous rule validity trademark attacked time see white house milk products pat significantly representative lanham observed incontestability one valuable new rights created act cong rec respondent argument enforcing petitioner mark promote goals lanham act misdirected arguments similar urged respondent fact considered congress hearings lanham act example department justice opposed incontestability provisions expressly noted merely descriptive mark might become incontestable hearings statement dept justice result department justice observed go beyond existing law conferring unprecedented rights owners undesirably create exclusive right use language descriptive product see also hearings testimony milton handler testimony attorney louis robertson concerns answered proponents lanham act noted merely descriptive mark registered unless commissioner finds secondary meaning testimony karl pohl trade mark moreover mark challenged five years prior attaining incontestable status remarks lanham supporters incontestability provisions observed generic mark become incontestable allows nontrademark use descriptive terms used incontestable mark testimony wallace martin chairman aba committee trade mark legislation alternative refusing provide incontestable status descriptive marks secondary meaning expressly noted hearings lanham act testimony robert byerley new york patent law assn hearings subcommittee senate committee patents testimony elliot moyer special assistant attorney general also mentioned possibility including defense infringement incontestable mark fact mark descriptive generic geographical term device congress however adopt either alternatives instead congress expressly provided incontestable mark challenged specified grounds grounds identified congress include mere descriptiveness dissent echoes arguments made opponents lanham act incontestable status descriptive mark might take public domain language merely descriptive post explained congress already addressed concerns prevent commercial monopolization post descriptive language lanham act allows mark challenged time becomes generic certain circumstances permits nontrademark use descriptive terms contained incontestable mark finally monopolization incontestable mark threatens economic competition provides defense grounds mark used violate federal antitrust laws bottom dissent simply disagrees balance struck congress determining protection given incontestable marks iv respondent argues decision appeals upheld trademark registrations issued patent office ex parte proceeding generally without inquiry merits application argument also unravels upon close examination facts case belie suggestion registration virtually automatic patent office initially denied petitioner application examiner considered mark merely descriptive petitioner sought reconsideration successfully persuaded patent office mark registrable generally respondent simply wrong suggest third parties opportunity challenge applications trademark registration patent office examiner determines applicant appears entitled registration mark published official gazette within days publication person believes damaged registration mark may file opposition registration mark provides constructive notice throughout registrant claim ownership within five years registration person believes damaged registration may seek cancel mark mark may canceled time certain specified grounds including obtained fraudulently become generic lanham act dissent notes post authorizes courts grant injunctions according principles equity neither respondent opinion appeals relies provision support holding whatever precise boundaries courts equitable power believe encompasses substantive challenge validity incontestable mark grounds lacks secondary meaning conclude otherwise expand meaning equity point vitiating specific provisions lanham act similarly power courts cancel registrations otherwise rectify register must subject specific provisions concerning incontestability effect respondent dissent argue provisions offer insufficient protection improper registration merely descriptive mark therefore validity petitioner mark may challenged notwithstanding incontestable status responsibility however evaluate wisdom legislative determinations reflected statute instead construe apply provisions congress enacted appeals attempt justify decision reference language legislative history lanham act instead relied previous decision tillamook county creamery tillamook cheese dairy cert denied proposition registrant may rely incontestability enjoin use mark others examination tillamook however reveals persuasive justification judicially created distinction offensive defensive use incontestable mark tillamook discussed dicta distinction observed incontestability protects registrant cancellation used obtain relief infringing use tillamook authority proposition john morrell reliable packing reverse finding infringement grounds incontestable status confers defensive rights appeals seventh circuit based holding john morrell rand mcnally christmas club aff pat latter case fact involve use incontestable mark enforcement action patent office rand mcnally denied petition cancel mark challenged merely descriptive petitioner feared mark became incontestable use mark connection service different one specified registration enjoined assistant commissioner patents answered concern observing incontestable mark provide registrant offensive weapon greater magnitude since registration issued comments suggest incontestability may never provide basis injunctive relief instead indicate mark may expanded beyond good service originally designated john morrell judicial authority providing direct support decision subsequently overruled union carbide cert denied union carbide appeals seventh circuit acknowledged earlier decision john morrell unsupported language legislative history lanham act based misreading rand mcnally registrant may rely incontestable status mark infringement action union carbide concluded efendant faced incontestable registered mark defend claiming mark invalid descriptive quoting mccarthy trademarks unfair competition ed courts subsequently followed union carbide concluded plaintiff may rely incontestable status trade service mark infringement action see jaycees philadelphia jaycees soweco shell oil cert denied patent office also rejected distinction respect use incontestable mark see ansul malter international ttab thus doctrine relied appeals case best described flawed origin subsequently discredited progenitors vi conclude holder registered mark may rely incontestability enjoin infringement action may defended grounds mark merely descriptive respondent urges nevertheless affirm decision based prior use defense recognized lanham act alternatively respondent argues likelihood confusion therefore infringement justifying injunctive relief district rejected arguments addressed appeals may consider remand judgment appeals reversed case remanded proceedings consistent opinion ordered footnotes petitioner also applied register mark consisting words fly mark issued become incontestable existence mark affect resolution issues case section lanham act set forth provides right use registered mark become incontestable section title registration shall conclusive evidence registrant exclusive right use registered mark commerce connection goods services specified affidavit filed provisions said section subject conditions limitations stated therein except one following defenses defects established registration incontestable right use mark obtained fraudulently mark abandoned registrant registered mark used permission registrant person privity registrant misrepresent source goods services connection mark used use name term device charged infringement use otherwise trade service mark party individual name business individual name anyone privity party term device descriptive used fairly good faith describe users goods services party geographic origin mark whose use party charged infringement adopted without knowledge registrant prior use continuously used party privity date prior registration mark chapter publication registered mark subsection section title provided however defense defect shall apply area continuous prior use proved mark whose use charged infringement registered used prior registration chapter publication subsection section title registered mark registrant abandoned provided however defense defect shall apply area mark used prior registration publication registrant mark mark used violate antitrust laws sections prohibit registration marks containing specified subject matter flag sections concern certification marks inapplicable case dissent similarly takes position mark improperly issued descriptive petitioner failed prove secondary meaning post neither district appeals made finding whether mark properly issued patent office denied initial application registration petitioner filed request reconsideration arguing mark descriptive app patent office subsequently granted registration without specifying whether mark secondary meaning instead descriptive unlike dissent decline determine first instance whether mark improperly issued holding affected possibility mark become merely descriptive representative lanham made remarks clarify seven defenses enumerated substantive rules law go validity enforceability incontestable mark cong rec instead defenses affect evidentiary status registration owner claims benefit mark incontestable status one defenses established registration constitutes prima facie conclusive evidence owner right exclusive use mark ibid see also conf explanatory statement house managers note however need address case whether traditional equitable defenses estoppel laches available action enforce incontestable mark see generally comment incontestable trademark rights equitable defenses infringement litigation rev justice stevens dissenting trademark law term incontestable somewhat confusing misleading lanham act expressly identifies situations infringement allegedly incontestable mark permitted moreover act congress unambiguously authorized judicial review validity registration action involving registered mark problem case arises petitioner attempt enforce incontestable mark congress plainly stated inherently unregistrable mark fly best merely descriptive context airport parking section lanham act plainly prohibits registration mark unless applicant proves commissioner patent trademark office mark become distinctive applicant goods commerce use accepted shorthand acquired secondary meaning see petitioner never submitted proof commissioner indeed district case thus registration plainly violated act violation literal wording act also contravened central purpose entire legislative scheme statutory protection trademarks granted order safeguard goodwill associated particular enterprises mark must perform function distinguishing producer provider good service order legitimate claim protection merely descriptive mark acquired secondary meaning perform function simply describes qualities characteristics good service ante legislative purpose served granting anyone monopoly use mark instead confronting question whether inherently unregistrable mark provide basis injunction alleged infringement treats case though presented question union carbide cert denied case merely descriptive mark obvious secondary meaning case agree descriptive character mark provide infringer defense case however provisions act dealing incontestable marks support result reached shall first explain agree conclusion appeals reached shall comment three arguments advances support contrary conclusion word incontestable defined act surprisingly concept explained committee reports bill enacted word implies intended resolve potential contests rival claimants particular mark indeed testimony proponents concept committee hearings occurred time time period legislation considered reveals primarily concerned problem potential contests ownership registrable marks might present one ever suggested public purpose served granting incontestable status mark never accepted registration first instance hearings witnesses frequently referred incontestability comparable decree quieting title real property decree forecloses contest ownership property create property similarly incontestability trademark precludes competitor contesting registrant ownership convert unregistrable subject matter valid mark claim clearly unenforceable case petitioner principally urges support reversal union carbide supra conflict simple proposition dealing contest two companies name eveready question name acquired secondary meaning although originally registered problem presented case properly resolved giving effect incontestable language act wholly different question presented record establishes mark registered legislative history incontestability provisions indicates congress intend prevent use mere descriptiveness substantive defense claim infringement mark acquired secondary meaning testimony committee hearings concerning public interest preventing grant monopoly privileges use merely descriptive phrases expressly relied administrative practice incorporated protection improper registration merely descriptive marks thus karl pohl testified question nontechnical trademarks professor handler assumes improperly registered idea originate carefully circumscribed procedure getting marks register means easy chairman gentlemen committee exceedingly difficult get descriptive words register patent office first place reject submit substantial body evidence words usage acquired secondary meaning usage acquired special status entitles protected secondary meaning sense therefore call marks improperly registered believe misnomer look problem point view see apprehensions handler less obviated believe personally completely obviated nontechnical carefully circumscribed number entitled protection registrant merely descriptive mark complies statutory requirement prima facie evidence secondary meaning must submitted patent trademark office entirely consistent policy act accord mark incontestable status additional five years continued use rival contests registration period reasonable presume initial prima facie showing distinctiveness rebutted proof secondary meaning ever presented either patent trademark office simply rational basis leaping conclusion passage time transformed inherently defective mark incontestable mark matter dedicated competent administrators may possibility error always present especially nonadversary proceedings reason normally assumes congress intended agency action subject judicial review unless contrary intent expressed clear unambiguous language statute congress expressed intent contrary given courts broadest possible authority determine validity trademark registrations action involving registered mark exercise broad power judicial review informed legislative purposes motivated enactment lanham act congress enacted lanham act secure owners goodwill built without showing secondary meaning basis upon conclude petitioner built goodwill secured mark fly fact without showing secondary meaning presume petitioner business appears consuming public another anonymous indistinguishable parking lot enacting lanham act congress also wanted protect public imposition use counterfeit imitated marks false trade descriptions upon record appears danger occurrence practical matter without showing public specifically identify petitioner service seems difficult believe anyone imitate petitioner marks imitation even occurred likely confuse anybody basis record case reasonable infer operators parking lots vicinity airports may make use words park fly simply words provide ready description businesses rather desire exploit petitioner goodwill public interest prohibiting commercial monopolization phrases park fly business claims exclusive right use words phrases part common vocabulary depart statutorily mandated authority rectify register absent clear congressional mandate language even commercial context properly belongs public unless congress instructs otherwise case instruction fact opposite command guides actions congress clear insistence merely descriptive mark fly context airport parking remain public domain unless secondary meaning proved basic purposes act unambiguous congressional command merely descriptive mark registered without prior proof acquired secondary meaning broad power judicial review granted combine persuade registrant merely descriptive mark granted injunction infringement without ever proving mark acquired secondary meaning ii relies three different though unrelated arguments support negative answer question whether action enjoin infringement incontestable mark may defended grounds mark merely descriptive ante language plain prevent conclusion legislative history indicates congress decided deny incontestable status merely descriptive marks practical value incontestable status nullified defense recognized arguments unpersuasive plain language right use registered mark become incontestable provides registration shall conclusive evidence registrant exclusive right use registered mark read isolation provision surely lend support holding indeed isolated literal reading language seem foreclose nonstatutory defense action enjoin infringement incontestable mark however wisely refuses adopt rigid interpretation examination provisions act plainly demonstrates right injunctive relief infringement automatically follows achievement incontestable status thus courts proper jurisdiction shall power grant injunctions according principles equity upon terms may deem reasonable registrant establishes violation right additionally emphasizes recovery shall subject principles equity sections addition broad power grants courts action involving registered mark determine right registration order cancelation registrations whole part restore canceled registrations otherwise rectify register respect registrations party action moreover well established injunctions issue matter course essence equity jurisdiction power chancellor equity particularly important public interest involved exercising broad power equity federal courts certainly take account tension apparent meaning plain command act prohibiting registration merely descriptive mark without proof secondary meaning demonstrably odds intent congress grant incontestable status mark eligible registration first place surely authorized require compliance granting relief basis legislative history language expressly demonstrates congress concern granting monopoly privileges merely descriptive marks however failure include mere descriptiveness laundry list grounds incontestability challenged interpreted today evidence congressional approval incontestable status merely descriptive marks history unpersuasive perfectly clear failure include mere descriptiveness among grounds challenging incontestability based understanding mark registered without showing secondary meaning see supra read congress failure equivalent endorsement incontestable status merely descriptive marks without secondary meaning described perverse practical argument suggests reading act effectively emasculates circumstances case ante reading simply require owner merely descriptive mark prove secondary meaning obtaining benefit incontestability mark fact distinctive applicant goods commerce requires burden onerous mark secondary meaning burden course met case purposes act served frustrated requiring adherence statutory procedure mandated congress sum petitioner complied time initial registration able prove secondary meaning case agree disposition however subscribe conclusion holder mark registered violation unambiguous statutory command may rely incontestability enjoin infringement ante see also ante accordingly respectfully dissent section enumerates seven categories defenses action enforce incontestable mark see quoted ante addition defendant free argue mark never become incontestable four reasons enumerated moreover expressly provides incontestable mark may challenged grounds set forth subsections sections turn incorporate objections registrability defined act section pertinent part provides action involving registered mark may determine right registration order cancelation registrations whole part restore canceled registrations otherwise rectify register respect registrations party action appeals petitioner argued mark suggestive respect airport parking lots appeals responded unpersuaded given clarity first word fly mark seen context understood readily consumers offering airport parking imagination thought perception needed simply understood park fly clear concise description characteristic ingredient service offered customer parks car flies airport conclude fly mark used context airport parking best merely descriptive mark see sess conf sess hearing subcommittee house committee patents statement charles kramer chairman house committee patents hearings subcommittee senate committee patents statements lanham testimony daphne robert aba committee trade mark legislation hearings supra statements lanham distinction new great britain enacted statutes provided essence registration conclusive evidence registrant right exclusive use mark expiration five years following registration see act establish register trade marks ch act amend consolidate law relating patents inventions registration designs trade marks ch statutes use word incontestable respects striking similarity language acts relevant provision lanham act construe today noteworthy english judges refused give statutory language plain meaning showing made mark properly registered beginning see edwards dennis ch jackson napper schmidt pat cas cf palmer ch although conclusion regarding secondary meaning contained alternative holding seems clear distinctiveness mark heavily influenced appeals disposition regarding incontestability wrote find difficult believe anyone living society daily familiarity hundreds products thoroughly acquainted eveready mark perhaps many know carbide manufacturer eveready products doubt term utilized indicate single though anonymous source play ostrich regard general public knowledge already noted expressly prohibits registration merely descriptive mark exception prohibition petitioner satisfy processing application reads follows except expressly excluded paragraphs section nothing chapter shall prevent registration mark used applicant become distinctive applicant goods commerce commissioner may accept prima facie evidence mark become distinctive applied applicant goods commerce proof substantially exclusive continuous use thereof mark applicant commerce five years next preceding date filing application registration emphasis added hearings subcommittee house committee patents supra pohl appeared hearings behalf new york merchants association committee member coordination committee recently gerald mossinghoff assistant secretary commissioner patents trademarks gave following testimony congress ne biggest problems one time percent million documents either missing misfiled paper system set remained virtually unchanged since time simply deteriorated point percent documents missing hearing subcommittee patents copyrights trademarks senate committee judiciary one treatise gives following advice regarding registration registration principal register attempted possible matter strategy applicant application concede term falls within statutory bars require proof secondary meaning applicant let trademark examiner prove term falls within one categories since ex parte application like contested proceeding applicant federal government applicant merely await examiner response possible contention mark requires proof secondary meaning examiner never makes contention applicant convinces examiner trademark board mark fall within whole problem proof secondary meaning avoided examiner adamant argument mark falls within category applicant several choices may appeal determination may agree mark registered supplemental register may submit proof secondary meaning applicant qualifies registration supplemental register may thereafter apply register mark principal register perhaps rely presumption secondary meaning examiner initial response mark barred ground inherently distinctive doubt applicant may respond alternative applicant may argue mark inherently distinctive merely descriptive even barred ground inherently distinctive mark become distinctive acquisition secondary meaning point applicant attorney concede weakness mark absolutely necessary object get mark principal register soon possible one way another mccarthy trademarks unfair competition emphasis added erika dunlop bachowski johnson robison barlow collins abbott laboratories gardner cf stafford briggs look statutory language objects policy law construction statute execute congress true intent supra ibid respondent raise issue likelihood confusion justifying injunction insofar petitioner present intention expanding pacific northwest disposition appeals reach issue patent trademark office handbook explains point general terms matter merely describes goods services applied prohibited registered principal register first permit one person appropriate exclusively mark merely ordinary language describe goods services involved obviously detrimental others deal goods service hindering use normal language association goods services second assurance mark merely describes fact mark indicating origin since purchasing public likely recognize descriptive meaning matter accord significance indicating single source origin goods services department commerce patent trademark office trademark manual examining procedure see otto roth universal foods ccpa recognizing importance free use language trademark context bada montgomery ward ne competitor permitted impoverish language commerce preventing fellows fairly describing goods cert denied additionally lanham act enacted canal clark wall wrote words still applicable today owner original undoubted right protected exclusive use marks forms symbols appropriated designating true origin ownership article fabric affixed right exclusive use words letter figures symbols relation origin ownership goods meant indicate name quality right appropriate sign symbol nature fact used signify others may employ equal truth therefore equal right employ purpose quoting amoskeag manufacturing spear sand super emphasizes address whether traditional equitable defenses available action enforce incontestable mark ante thus chooses rule whether language ignored defense laches estoppel asserted several courts indicated defenses allowed see prudential ins gibraltar financial cert denied cuban cigar brands upmann international supp sdny aff without opinion carl zeiss stiftung carl zeiss jena supp sdny modified cert denied haviland johann haviland china supp sdny several commentators also written subject mccarthy trademarks unfair competition one early article noted fact section limits defenses incontestable mark seven specific issues possibly conclusive difficult imagine equity granting injunctive relief registrant comes unclean hands even though defendant unable establish one seven specific defenses listed section equitable doctrines laches estoppel probably also preclude injunction damages case incontestable mark however always possibility courts might give act strict technical construction precluding defense except specifically enumerated diggins lanham act geo weinberger hecht bowles porter warner holding morton salt suppiger ourts equity may appropriately withhold aid plaintiff using right asserted contrary public interest virginian railway employees griffin oceanic contractors see also garcia ante stevens dissenting fidelity federal savings loan assn de la cuesta parts statute given effect possible american textile manufacturers institute donovan reiter sonotone construing statute obliged give effect possible every word congress used moreover even owner registered mark may enjoin infringement true registration become meaningless see ante registration may used prevent importation goods bearing infringing marks country see additionally registration country prerequisite registration foreign countries seidel general practitioner know trademarks copyrights ed vandenburgh trademark law procedure ed customs patent appeals opinion recognizing congress expressed desire scandalous matter registered wrote following regarding benefits registration registration granted responsibilities government respect mark ended benefits registration part government assistance include public notice mark official government publication official records distributed throughout world maintenance permanent public records concerning mark availability customs service blocking importation infringing goods access federal courts presumption validity registration notices registrant concerning maintenance registration extent direct government protection mark pto searches records refuses registration others conflicting marks apart nominal fees costs underwritten public funds robert mcginley