III TRADEMARKS
A. Incontestability: Now You See It, and Now You Don't
In Petro Stopping Centers, L.P. v. James River Petroleum, Inc.,1 the United States Court of Appeals for the Fourth Circuit held that the "PETRO CARD" trademark of James River Petroleum, Inc. (JRP) did not cause a "likelihood of confusion" with Petro Stopping Centers' (PSC) marks.2 The Fourth Circuit also held that the incontestability3 of PSC's marks did not prevent the district court from finding the PSC marks to be "descriptive and weak"; therefore, JRP's trademarks did not infringe PSC's.4 With this holding, the Fourth Circuit has solidified the case law on die doctrine of incontestability by following the guidance and intent of Congress, while adequately balancing the competing interests of trademark law.
1. 130 F.3d 88 (4th Cir. 1997), cert, denied, 118 S. Ct. 1561 (1998).
2. Id.st 90-91, aff'g 41U.S.P.Q.2d (BNA) 1853 (E.D. Va. 1997). See infra note 10 for examples of PSC's registered trademarks.
3. Section 15 of the Lanham Act provides that "the right of [a] registrant to use [a] registered mark in commerce for the goods or services on or in connection with which such registered ... mark shall be incontestable" if (1) the mark has been in continuous use for five years, (2) there has been no final decision adverse to the right of use of the mark, (3) there is no pending proceeding concerning the right to use the mark, (4) the registrant has filed an affidavit with the PTO attesting to the above requirements, and (5) die mark has not become the "generic" name for goods or services. 15 U.S.C. § 1065 (1994).
4. Petro Stopping Ctrs., 130 F.3d at 90, 92.
5. Id. ar 90.
6. Id
7. Id PSC operates over forty facilities thai are located in twenty-seven states. Id. The two facilities in Virginia were located in Ruther Glen and Fort Chiswell. Id,
8. Id. The services provided by PSC include "separate fueling areas for cars and trucks, truck maintenance, truck weighing scales, truck washes, restaurants, retail stores, fax machines, ATM machines, showers, laundry, quiet rooms, game rooms, television rooms, movie theaters, and barber shops."
9. Id The facilities were operated twenty-four hours a day, and PSC accepted all forms of payment, including cash, checks, credit cards, and on radio. Id PSC
PSC had registered fourteen federal trademarks that contained the word "PETRO."10 One of its trademarks covered the word "PETRO" alone with background colors that were distinctive to PSC.11 Eight of PSC's trademarks, including the PETRO mark, had attained "incontestable" status under the Lanham Act.12
In 1992 JRP, a petroleum distribution company, entered into the business of directly selling fuel to commercial fleets through a "card lock" system.13 In the "card lock" business, a commercial fleet owner purchases an "account" from JRP (or any other member of the Commercial Fueling Network (CFN)),14 which allows drivers of the commercial fleet to purchase fuel from unmanned, self-service filling stations via a payment card.15 JRP operated five such filling stations in the Richmond, Virginia area; none of these stations were adjacent to interstate highways or near any PSC facilities.16 JRP employed a limited advertising campaign directly aimed at obtaining commercial accounts.17 JRP used the trademark "JAMES RIVER PETRO CARD" to identify its facilities.18
On July 1, 1996, PSC sued JRP in the United States District Court for the Eastern District of Virginia,19 alleging, inter alia, federal and common law trademark infringement.20 The district court held for
estimated at trial that this advertising had cost $6.25 million over the five years prior to litigation. Id,
10. Id. Examples of PSC's registered marks include: "PETRO PRIDE," "PETRO:LUBE," "PETROL," "PETRO:PLUS," and "PETRO:TREAD." Id. PSC registered its first mark, "PETRO STOPPING CENTER," in August 1982. Id.
11. Id. PSC uses the colors green, white, and red-orange in its mark. Id. at 94.
12. Id. at 90; see supra note 3 (describing the prerequisites to obtaining incontestable status under the Lanham Act).
14. Id. The CFN is a network of facilities that employ the "card lock" fueling system. Id. A card from JRP will work at other CFN member stations and vice versa. Id.
15. Id. Although there were no other services available at JRP fueling stations, one station was located near a convenience store and another near a restaurant. Id. However, both the store and the restaurant were independently owned and had no affiliation with JRP. Id.
16. Id. at 91, 95.
17. Id. at 91. JRP ran advertisements directed specifically towards commercial customers in local trade newsletters and CFN directories. Id. JRP did not use radio advertisements, billboards or Virginia Department of Transportation signs for advertising. Id. at 91, 95.
18. Id. at 91. JRP used either white or gray for its background and had "JR" in large red letters. Id. Next to the "JR" is "James River" in blue letters and below that is "PETRO CARD" in slanted red letters designed to create an impression of movement. Id.
19. Id.
20. Id. at 9O. PSC also alleged federal and common law unfair competition, federal dilution, and Virginia false advertising claims. Id. All of these claims were resolved in favor of JRP in the district court and were not addressed on appeal. Id.
JRP on all counts, concluding that PSC's trademarks were "merely descriptive" and "fairly weak" and that no "likelihood of confusion" existed between the two marks.21 PSC appealed the district court's decision.22
2. Legal Background.—
a. Trademark Registration.—The law of trademarks "establishes exclusive rights to use marks that distinguish one manufacturer, merchant or service provider's goods or services from those of others."23 Trademarks can consist of a single word or a group of words or of "any device that serves to distinguish goods or services," such as "color patterns, scents, packaging, even a good's nonfunctional design."24 A trademark may be registered by its owner in die Patent and Trademark Office (PTO); this may be accomplished in a few, relatively easy, steps.25 When an applicant attempts to register a
21. Id.; Petro Stopping Ctrs., L.P. v. James River Petroleum, Inc., 41 U.S.P.Q.2d (BNA) 1853, 1855-56 (E.D. Va.), ajfd, 130 F.3d 88 (4th Cir. 1997), cert, denied, 118 S. Ct. 1561 (1998).
23. donald S. chisum & michael A. jacobs, understanding intellectual property law §5A, at 7 (1997).
24. Id.; see Qualitex Co. v.Jacobson Prods. Co., 514 U.S. 158, 159 (1995) (holding "that there is no rule absolutely barring the use of color alone"); In re Clarke, 17 U.S.P.Q.2d (BNA) 1238, 1239 (T.TA.B. 1990) (stating that there is no "reason why a fragrance is not capable of serving as a trademark to identify or distinguish a certain type of product"); In re General Elec. Broad. Co., 199 U.S.P.Q. (BNA) 560, 563 (T.T.A.B. 1978) (stating that in certain instances when sounds are distinguishable and create an association with a specific product they can be valid trademarks).
25. The applicant must fill out an application with the PTO listing (1) the name of the applicant, (2) die first date that the trademark was used, (3) a description of the goods or services that the trademark is used to represent, and (4) a claim of ownership of the trademark being submitted by the applicant. 15 U.S.C. § 1051 (a) (1994). Along with the application, the applicant must submit a copy of the trademark being registered. Id. After the application is filed, an examiner at the PTO reviews it. If the examiner feels that the trademark does not adequately identify or distinguish the goods or services of the applicant from other trademark holders, or if it violates any of the prohibitions of 15 U.S.C. § 1052 (defining which marks can and cannot be registered on the principal register), she will deny the application. 1 jerome gilson & anne gilson lalonde, trademark protection and practice § 3.04[1], at 82-82.1 (1998). If the application is approved, then the trademark is published in the Official Gazette, a PTO publication. 15 U.S.C. § 1062. After publication in the Official Gazette, members of the public have thirty days to file an "opposition" with the PTO if they feel that they will be "damaged" (i.e., the new trademark will infringe on their existing mark) by the trademark. 15 U.S.C. § 1O63. If no one files an opposition proceeding, then the trademark is registered, and the owner receives a certificate of registration. 15 U.S.C. § 1057. Each registered trademark must be renewed every ten years after its issuance to maintain the protections of federal registration; renewal may occur so long as the trademark is being used in the sale of goods in commerce. 15 U.S.C. § 1059.
trademark with the PTO, it must essentially meet four criteria before a registration will issue: (1) the mark must be a trademark,26 sendee mark,27 collective mark,28 or a certification mark;29 (2) the mark must be a "device" used to "distinguish goods and services"; (3) the mark must be "distinctive"; and (4) the mark cannot be so similar to another mark that has been previously used or registered as to cause confusion.30 Several statutory bars exist to block registration; the most important, for the purposes of this note, is the mark being "merely descriptive."31
The ability of a mark to "distinguish" itself is often referred to as its "strength" or its ability to "identify the goods sold under the mark as emanating from a particular, although possibly anonymous, source."32 For purposes of determining registrability, trademarks are generally classified into one of four categories:33 (1) "generic" trade-
26. See 15 U.S.C. § 1127 (defining trademark as "any word, name, symbol, or device, or any combination thereof . . . used by a person, or ... which a person has a bona fide intention to use in commerce ... to identify and distinguish his or her goods" from others in commerce).27. See id. (defining service mark as "any word, name, symbol, or device, or any combination thereof. . . used by a person, or ... which a person has a bona fide intention to use in commerce ... to identify and distinguish the services of one person" from the services of others in commerce).
28. See id. (defining collective mark as "a trademark or service mark . . . used by the members of a cooperative, an association, or other collective group or organization" or intended to be used by the group or organization).
29. See id. (denning certification mark as "any word, name, symbol, or device, or any combination thereof.. . used by a person other than its owner, or ... which its owner has a bona fide intention to permit a person other than its owner to use in commerce").
30. See chisum & jacobs, supra note 23, § 5C, at 12; fee also 15 U.S.C. § 1052 (setting forth the statutory requirements and bars to trademark registration); 1 gilson & lalonde, supra note 25, § 1.02[1] [c], at 11 (stating that a "trademark must meet three fundamental requirements'* for registrability: (1) "it must consist of a word, name, symbol, device, or any combination thereof which will qualify as a valid trademark, (2) "it must be adopted and used by a manufacturer or merchant or qualify for intent to use treatment," and (3) "it must identify [the mark holder's] goods and distinguish them from those manufactured or sold by others").
31. 15 U.S.C. § 1052(e)(l). Other statutory bars include: when the mark is comprised of "immoral, deceptive, or scandalous matter"; when the mark is "deceptively misdescrip-tive" of the goods to be sold; and when the mark is "primarily geographically descriptive" or is "primarily geographically deceptively misdescriptive" of the goods being sold, or is "primarily a surname." 15 U.S.C. § 1052(a), (e).
32. McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1131 (2d Cir. 1979) (citing E.I. Dupont de Nemours & Co. v. Yoshida Int'l, Inc., 393 F. Supp. 502, 512 (E.D.N.Y. 1975); 3 rudolph callman, the law of unfair competition, trademarks and monopolies § 82.1(1), at 755 (3d ed. 1969)).
33. SeeAbercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-11 (2d Cir. 1976) (identifying the four categories of terms with respect to trademark protection). The strength or distinctiveness of a mark determines not only "the ease with which it may be established as a valid trademark," but also "the degree of protection it will be accorded."
marks, which receive no protection;34 (2) "descriptive" trademarks,35 which obtain no protection unless the registrant can show that the trademark has "become distinctive of the applicant's goods in commerce," i.e., acquired a "secondary meaning";36 (3) "suggestive" trademarks, which are register-able but are only entitled to narrow or "weak" protection;37 and (4) "arbitrary" or "fanciful" trademarks, which receive broad or "strong" protection.38 Therefore, when a party wants to oppose the registration of a trademark, or to declare it invalid, it must show that the mark is either generic or descriptive (with no secondary meaning) .39
McGregor-Doniger, 599 F.2d at 1131; see infra notes 78-79 and accompanying text (discussing the role of a mark's distinctiveness in the infringement analysis).34. See Abercrambie & Fitch, 537 F.2d at 9 (defining a "generic" term as "one that refers, or has come to be understood as referring, to the genus of which the particular product is a species"); e.g., Kellogg Co. v. National Biscuit Co., 305 U.S. Ill, 116 (1938) (holding that the term "Shredded Wheat" as a trademark could give no exclusive rights because it is the generic term for the product).
35. See 1 gilson & lalonde, supra note 25, § 2.03, at 59-60 (defining a "descriptive" term as one that "informs the purchasing public of the characteristics, quality, functions, uses, ingredients, components, or other properties of a product, or conveys comparable information about a service," and citing an example of a merely descriptive term as "Speedy" for a delivery service ).
36. See International Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1085 (7th Cir. 1988) (stating that even if a term's " 'primary' meaning is merely descriptive, if through use the public has come to identify the term with [a specific] product or service, the words have acquired 'secondary meaning' and would become a protectable trademark"); see also chisum & jacobs, supra note 23, § 5C, at 12 ("Descriptive . . . marks are presumptively nondistinctive, but the mark user may overcome the presumption by a showing that the mark has acquired secondary meaning, i.e., has through use become distinctive of the goods of services."); F.T. Alexandra Mahaney, Incontestability: The Park 'N Fly Deci-sion, 33 UCLA L. rev. 1149, 1160 (1986) ("The doctrine of secondary meaning recognizes that a mark that is incapable of inherent distinctiveness because of its descriptiveness might nevertheless have been used so long and so exclusively by one producer in connection with one product that the mark has come to identify that product alone." (citing G. & C. Merriam Co. v. Saalfield, 198 F. 369, 373 (6th Cir. 1912))).
37. See Abercrombie Of Fitch, 537 F.2d at 11 (noting that "[a] term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods" (internal quotation marks omitted) (quoting Stix Prods., Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968))); Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 379-80 (7th Cir. 1976) (stating that "EVEREADY" is not descriptive, but suggestive because it "suggests the quality of long life").
38. See chisum & jacobs, supra note 23, § 5C[3], at 60 n.218 (stating that "[a] fanciful term is one invented solely for use as a trademark, for example 'EXXON' for petroleum services" and "[a]n arbitrary term is a common word used in an unfamiliar way, for example 'APPLE' for computers"); 1 gilson & lalonde, supra note 25, § 1.02[l][c], at 11-12 (defining arbitrary and fanciful marks as those "having no inherent meaning in relation to the product or service").
39. A trademark can be challenged anytime after its registration (and before it becomes incontestable) on the basis that it is generic or merely descriptive because "the Lanham Act gives the courts broad authority to review the PTO's registration decisions and
An application to register a trademark may be opposed by "[a]ny person who believes that he would be damaged by the registration of a mark upon the principal register."40 An opposition may be brought for any reason in which a mark may be denied by the PTO listed in 15 U.S.C. § 1052, such as the mark is "merely descriptive" or is likely to cause confusion with an existing mark.41
b. Trademark Infringement.—The common law of trademarks and the rationale underlying the Lanham Act derive from a basic policy designed to "prevent others from using the same or similar marks that create a likelihood of confusion ... as to the origin or sponsorship of goods or services."42 With the goal of preventing consumer confusion, trademark law serves four vital functions in commercial law. First, "it identifies one seller's product and distinguishes a product from similar products sold by others."43 Second, "it signifies that all goods bearing the same trademark come from a single source."44 Third, "it signifies that all goods bearing the same trademark are of equal quality."45 Finally, "it is a prime instrument in the advertisement and sale of goods."46
"Trademark law fosters these functions by balancing four interests" to equally serve the consuming public, the trademark owner, and those who want to compete freely in an open market.47 The first interest is to prevent consumers from being confused about the "origin or sponsorship" of merchandise, goods, or services.48 The second in-
to allow or cancel registrations." Mahaney, supra note 36, at 1157 (citing 15 U.S.C. § 1119 (1982)).
41. See chisum & jacobs, supra note 23, § 5D, at 142 (stating that "[g] rounds for opposition are the same as those for registration denial under Lanham Act Section 2, including descriptiveness and confusing similarity to marks previously used by others"); see also supra notes 25-31 and accompanying text (discussing the requirements for trademark registration and some of the statutory bars to registration listed in 15 U.S.C. § 1052).
42. chisum & jacobs, supra note 23, § 5A, at 8.
43. Mahaney, supra note 36, at 1151.
44. Id.
45. Id. at 1151-52.
46. Id. at 1152; see also chisum & jacobs, supra note 23, § 5A, at 8 (stating that the four functions of trademarks are to: (1) "identify the goods or services to consumers"; (2) "identify the source of the goods and services and serve as a badge of their quality"; (3) provide "consumers [with] a frame of reference regarding quality by informing them of a product manufacturer's identity"; and (4) serve as "advertising devices").
48. Id. If marks are similar, they may confuse consumers, causing them to purchase one merchant's goods when they were intending to purchase another merchant's goods. Id. This would deprive the consumers of "free choice" in choosing the products that they want to purchase, regardless of the products' quality. Id.
terest is in preserving and protecting the "goodwill" of the mark's owner in the community among consumers.49 The third interest is the common interest of free competition, which serves both the consumers and new competitors who want to enter into a particular enterprise.50 The final competing interest is a general desire for a "fair and efficient legal system" that will serve both the consumers and competitors equally.51
The balance between these competing interests is served by one's opportunity to bring an infringement action. An injunction in an infringement action is allowed when the litigant bringing the action can show that the registered mark is "likely ... to cause confusion."52 If a mark is permitted to cause confusion as to the origin of the goods in commerce, it will run afoul of the first two competing interests mentioned above, the prevention of confusion as to the origin of goods and preserving the goodwill of a mark holder in commerce.53 Therefore, courts protect these interests via infringement suits. Additionally, the third and fourth interests are also preserved by courts presiding over infringement actions.64 Courts ensure the fair and consistent application of trademark law, allowing the continuance of free trade and commerce among competitors in the market, which prevents "[e]xcessive trademark protection [which] restricts market entry, limiting customer choice and raising prices."55 Therefore, infringement actions promote the balancing of the competing interests in trademark law.
The Lanham Act states that a person "infringes" a trademark when that person uses "in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark" for the purpose of selling, distributing or advertising "any goods or services on or in connection with which such use is likely to cause confusion, or to cause
49. Id. Any incentives that a trademark holder would have in establishing "goodwill" with his customers, by providing consistent quality in his goods, would be lost if any competitor could freely take advantage of that "goodwill" through use of similar marks. Id.50. Id. By granting "excessive trademark protection" the choices that consumers have would be reduced and the prices of those products that are available could be priced higher. Id.
51. Id. If the doctrines of trademark law are "vague or subject to inconsistent application," it will increase the burden on judicial resources, promote litigation, and increase the costs of conducting business. Id.
52. 15 U.S.C. § 1052(d) (1994).
53. See supra notes 47-51 and accompanying text (describing various interests weighed by trademark law).
54. See supra notes 47-51 and accompanying text (discussing the interest of free competition, and the desire for fairness and efficiency in the legal system).
55. chisum & jacobs, supra note 23, § 5A, at 8.
mistake, or to deceive," without the registrant's consent.56 "In determining infringement, it is not necessary to prove actual confusion [,]" rather "[t]he test is whether there is likelihood of confusion."57
The judicially created two part test for infringement was explained in Quality Inns International, Inc. v. McDonald's Corp.58 In that case, Quality Inns International, Inc. sought a declaratory judgment against McDonald's Corp., declaring that the trademark "McSleep Inn" for an economy class hotel chain did not infringe any of McDonald's federally registered marks.59 In denying Quality Inn's declaratory judgment Judge Niemeyer stated that:
[t]here are but two inchoative elements that must be established for entitlement [of a claim of infringement], from which all permutations and guises of the cause of action are derived: the senior owner of the mark must demonstrate (1) the adoption and use of a mark and his entitlement to enforce it, and (2) the adoption and use by a junior user of a mark that is likely to cause confusion that goods or services emanate from the senior owner.60
Using this two-step analysis, the Fourth Circuit stated its test for infringement in the case of Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc.61 In that case, the Fourth Circuit affirmed the lower court's ruling granting the plaintiff (Lone Star Steakhouse) a permanent injunction against Alpha of Virginia on die basis of trademark infringement.62 The plaintiff had federal registration for the trademarks "Lone Star Steakhouse & Saloon" and "Lone Star Cafe," and was seeking to enjoin the defendant's use of "Lone Star Grill."63 To determine the test for infringement, the court looked to 15 U.S.C. § 1114(1) and stated that "a complainant must demonstrate that it has a valid, protectible trademark and that die defendant's use of a colorable imitation of the trademark is likely to cause confusion among consumers."64 The court agreed with the lower court's analysis in
57. Dwight S. Williams Co. v. Lykens Hosiery Mills, Inc., 233 F.2d 398, 401 (4th Cir. 1956) (citing Noll v. Rinex Labs. Co., 25 F. Supp. 239, 240 (N.D. Ohio 1935); Mershon Co. v. Pachmayr, 220 F.2d 879, 883-84 (9th Cir. 1955)).
58. 695 F. Supp. 198 (D. Md. 1988).
59. Id. at 201.
60. Id. at 209 (citing Yale Elec. Corp. v. Robertson, 26 F.2d 972 (2d Cir. 1928)).
61. 43 F.3d 922 (4th Cir. 1995).
62. Id. at 925.
63. Id. at 925-26.
64. Id. at 930.
finding infringement by the defendant and with its decision to grant an injunction in favor of Lone Star Steakhouse & Saloon.65
In the Fourth Circuit, the modern test for determining whether a likelihood of confusion exists began to develop in Pizzeria Uno Carp. v. Temple.66 In this case, the plaintiff, Pizzeria Uno Corp., registered the mark "Pizzeria Uno" in 1978 for a restaurant in Chicago, Illinois.67 The plaintiff began to sell franchises, and the chain of restaurants grew to eleven.68 The defendant operated restaurants in South Carolina under the trademark "Taco Uno."69 The defendant attempted to register the "Taco Uno" mark in 1982 and the PTO rejected the first application.70 The defendant petitioned the PTO for reconsideration and the PTO then published the mark in the Official Gazette.71 After viewing the defendant's mark in the Official Gazette, the plaintiff filed a complaint alleging, inter alia, federal trademark infringement.72 The district court held that there was no infringement, finding that the term "UNO" was weak and "merely descriptive," the operations of the two companies were not similar, the restaurant operations were not located near each other, the advertising campaigns were different, there was no intentional infringement, and there was no evidence of actual confusion.73
The district court relied on the Fifth Circuit's decision in Sun-Fun Products, Inc. v. Suntan Research & Development, Inc.7* to define the factors to be employed when determining if a likelihood of confusion exists.75 The factors, which the Fourth Circuit adopted, were:
a) the strength or distinctiveness of the mark;
b) the similarity of the two marks;
65. Id. at 937, 941.
66. 747 F.2d 1522 (4th Cir. 1984).
67. Id. at 1525.
68. Id.
69. Id. The court noted that the plaintiff, Pizzeria Uno, was not operating any franchises in South Carolina, but was investigating the possibility of expansion into that state. Id.
70. Id. The PTO rejected the mark "'on the basis of [the registration] for the mark Pizzeria Uno.'" Id.
71. Id.; see supra note 25 (explaining the process by which a trademark is registered).
72. Pizzeria Uno, 747 F.2d at 1524-25. In addition to the federal infringement claim, Pizzeria Uno brought a state common law unfair competition action. Id. at 1524. Prior to filing the action in federal court, Pizzeria Uno filed an opposition application with the PTO. Id. at 1525-26. The PTO ordered a hearing on the opposition, but deferred the hearing pending the outcome of the infringement action in federal court. Id.
73. Pizzeria Uno Corp. v. Temple, 566 Ã. Supp. 385, 396-99 (D.S.C. 1983), affd, 747 F.2d 1522 (4th Cir. 1984).
74. 656 F.2d 186 (5th Cir. 1981).
75. Pizzeria Uno, 747 F.2d at 1527.
c) the similarity of the goods/services the marks identify;
d) the similarity of the facilities the two parties use in their businesses;
e) the similarity of the advertising used by the two parties;
f) the defendant's intent;
g) actual confusion.76
The Fourth Circuit cautioned that not all of the factors carry equal weight or are relevant in every analysis.77 However, the court did emphasize that the "first and paramount factor under this set of factors is the distinctiveness or strength of the two marks."78 Similarly, the majority of the circuits consider the "strength" of the mark factor when determining if a likelihood of confusion exists.79
77. Id. (stating that "'[n]ot all these [factors] are always relevant or equally emphasized in each case'" (alterations in original) (quoting Modular Cinemas of Am., Inc. v. Mini Cinemas Corp., 348 F. Supp. 578, 582 (S.D.N.Y. 1972))).
78. Id. In addition to developing the seven-factor test for the likelihood of confusion analysis, the Fourth Circuit also denned the standard for appellate review to be applied in reviewing the district court's findings in trademark cases. Id. at 1526. The court adopted the "clearly erroneous rule" and stated:
Id. (citing United States v. United States Gypsum Co., 333 U.S. 364, 395 (1948); Friend v. Leidinger, 588 F.2d 61, 64 (4th Cir. 1978); Phillips v. Crown Cent. Petroleum Corp., 556 F.2d 702, 703 (4th Cir. 1977)). Note that although the Fourth Circuit adopted the test announced by the district court and affirmed the denial of an injunction, it disagreed with the district court's conclusion that the mark was descriptive, and instead held it to be suggestive. Additionally, the Fourth Circuit rejected the district court's finding that there was no likelihood of confusion, and held instead that while there was a likelihood of confusion between the two marks, injunctive relief was not appropriate because Pizzeria Uno has not "penetrated" the area in which the defendant was operating. Id. at 1533, 1536.
79. See Keds Corp. v. Renee Int'l Trading Corp., 888 F.2d 215, 222 (1st Cir. 1989) (identifying one of the eight factors as "the strength of the plaintiffs mark"); Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co., 791 F.2d 423, 428 (5th Cir. 1986) (stating that one of the seven factors to be considered is the "type (i.e., strength) of [the] trademark or trade dress"); Frish's Restaurants, Inc. v. Elby's Big Boy, 670 F.2d 642, 648 (6th Cir. 1982) (noting that the "strength of the plaintiffs mark" is one of the eight factors to be considered); Squirtco v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980) (recognizing that the strength of a trademark is one of numerous factors examined to determine whether there is a likelihood of confusion); AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 34&49 (9th Cir. 1979) (noting that the "strength of the mark" is one of eight factors to be considered); Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir. 1978) (stating that one of the ten factors to be considered is "the strength of [the] owner's mark"); He-lene Curtis Indus., Inc. v. Church & Dwight Co., 560 F.2d 1325, 1330 (7th Cir. 1977) (indicating that "the strength of the complainant's mark" is one of the seven factors to be considered); Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961) (stating that one of the eight factors to be used is the "strength of [the plaintiffs] mark").
ñ. The Doctrine of Incontestability.—The introduction of the Lanham Act80 was important to trademark law in many respects; one of the Act's most important new provisions was the doctrine of "incontestability."81 Incontestability status is obtained for a trademark by meeting the following requirements: the trademark must have been in use for five consecutive years; the trademark registered may not be the "generic"82 name for the goods and services the mark is being used in connection with; and the owner of the mark must provide a written affidavit to the PTO within one year after the five years continuous use has elapsed.83 The owner's affidavit must state the goods and services that the trademark has been used in connection with for the continuous five year period, that there has been "no final decision adverse to the registrant's claim of ownership" of the mark, and that there is no current proceeding involving the rights of the trademark.84 Once the PTO determines that these requirements are met, the trademark becomes incontestable, and its registration "shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce."85 This right of exclusive use is subject to a number of defenses that may be proven by an alleged infringer to overcome the incontestable status of a mark.86
81. See Mahaney, supra note 36, at 1154 ("One of the most important statutory advantages of the Lanham Act is the doctrine of incontestability."); see also chisum & jacobs, supra note 23, § 5E[1] at 168 ("The Lanham Act's incontestability provision . . . was an innovation.").
82. See supra note 34 and accompanying text (denning and providing an example of a "generic" mark).
83. 15 U.S.C. § 1065.
84. Id.
85. Id. § 1115(b).
86. Id. Under 15 U.S.C. § 1115(b), the incontestable status of a mark is subject to the following defenses: "the registration or the incontestable right to use the mark was obtained fraudulently"; "the mark has been abandoned by the registrant"; the mark is being used by or with the permission of the owner to misrepresent the source of goods or services that the mark is used on or in connection with; the mark being charged as an infringement is used "otherwise than as a mark, of the party's individual name in his own business,... or of a [mark] which is descriptive of and used fairly and in good faith only to describe the goods of such party, or their geographic origin"; "prior use" of the registered mark by the alleged infringer, without the knowledge of the senior mark (note that this defense is only applicable to the party who is charged with the specific infringement, and does not bar an infringement action being brought against others who can not use this defense); the mark was previously registered and used by the alleged infringer; "the mark has been or is being used to violate the antitrust laws of the United States"; or "equitable principles, including laches, estoppel, and acquiescence, are applicable." Id. Additionally, by reference, 15 U.S.C. § 1115(b) allows defenses from § 1065, which are: "no incontestable right shall be
However, since the Lanham Act was passed in 1946, many courts have had difficulty defining the scope of protection to be accorded to incontestable marks.87 One of the main questions was whether a mark that has attained incontestable status under 15 U.S.C. § 1065 could be declared invalid in an infringement action brought by the owner of the incontestable mark on the grounds that the mark was merely descriptive with no secondary meaning.88 This split in the interpretation of the impact of incontestability is best evidenced in the cases of Park 'N Fly, Inc. v. Dollar Park & Fly, Inc.,89 a Ninth Circuit case, and Union Carbide Corp. v. Ever-Ready Inc.,go a Seventh Circuit decision. This split in the case law related to whether the incontestable status of a "merely descriptive" trademark could be used "offensively,"91 in addition to its "defensive"92 use.
In Union Carbide Corp., the Seventh Circuit determined that even though a mark was "merely descriptive," with no secondary meaning,
acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered," and that an incontestable mark will not be superior to a "Valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of [federal] registration" of the incontestable mark. Id. § 1065.87. SeeMahaney, supra note 36, at 1149 ("Since the passage of the [Lanham] Act, federal courts have wrestled with the meaning of incontestability.").
88. See 1 gii.son & lai.onde, supra note 25, § 4.03[3] [C], at 52-53 (noting that a "conflict [existed] between the Ninth and Seventh Circuit on a fundamental question of Lanham Act interpretation"). Compare Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 718 F.2d 327, 331 (9th Cir. 1983) (stating that in the Ninth Circuit "a registrant can use the incontestable status of its mark defensively, as a shield to protect its mark against cancellation and to protect its right to continued use of the mark, but not offensively, as a sword to enjoin another's use") with Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 377 (7th Cir. 1976) (holding that "a plaintiff in an infringement action establishes conclusively, under § 1115(b), his exclusive right to use a trademark to the extent he shows his trademark has become incontestable under § 1065" and that there is no distinction between "defensive/ offensive" use of a mark's incontestable status).
89. 718 F.2d 327 (9th Cir. 1983).
90. 531 F.2d 366 (7th Cir. 1976).
91. "Offensive" use of an incontestable trademark is analogous to using the incontestability of the "merely descriptive" mark as a "sword to enjoin another's use." Park 'NFly, 718 F.2d at 331. This use would allow the holder of an incontestable, "merely descriptive" mark to enjoin the use of an infringing mark. If the mark was not incontestable, it would not be able to enjoin the use, because of its "merely descriptive" strength. Id.
92. "Defensive" use of an incontestable trademark allows a registrant of a mark which is "merely descriptive" (and normally not entitled to protection) to use its incontestable status as a "shield to protect its mark against cancellation and to protect its right to continued use of the mark." Id. "If an incontestable mark becomes generic, it may be canceled pursuant to 15 U.S.C. § 1064(c), but an incontestable mark cannot be challenged for being "merely descriptive.'" Id. at 330 (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 12-13 (2d Cir. 1976); Park "N Fly, Inc. v. Park & Fly, Inc., 489 F. Supp. 422, 424 (D. Mass. 1979)).
"offensive" use of the mark's incontestable status was allowed.93 The plaintiff, Union Carbide, had the mark "EVEREADY," which had long gained incontestable status,94 and brought an infringement action against the defendant, Ever-Ready Inc., which was in similar business operations under the mark "Ever-Ready."95 The defendant argued that "incontestability is a narrow defense device which cannot be used offensively by a plaintiff in an infringement action."96 After careful review of the statutory materials and the case law, the Seventh Circuit concluded that "[t]here is no defensive/offensive distinction in the [Lanham Act], and . . . one should [not] be judicially engrafted on it."97
However, in Park 'N Fly, the Ninth Circuit held exactly the opposite, stating that a plaintiff with a "merely descriptive" but incontestable mark could not enjoin die use of an infringing mark.98 The plaintiff, Park 'N Fly, Inc.,99 brought an infringement action against Dollar Park &: Fly, Inc.100 While rejecting Dollar Park & Fly's argument that the mark "Park 'N Fly" was generic (and therefore entitled to no protection), the Ninth Circuit did agree that since the "Park 'N Fly" mark was "merely descriptive" with no secondary meaning, Park 'N Fly, Inc. was not allowed to use incontestability as an offensive weapon and enjoin the defendant's use.101 This controversy was resolved by the Supreme Court in Park 'N Fly, Inc. v. Dollar Park & Fly, Inc.102
In Park 'N Fly, the Supreme Court held that an infringement action brought by the owner of an incontestable mark may not be de-
94. The mark "EVEREADY" was registered and used for "electric batteries, flashlights, and miniature [light] bulbs," and was in continuous use since 1901. Id. at 370.
95. Ever-Ready Inc. imported and distributed light bulbs and other electrical items under the mark "Ever-Ready," but had only been in operation since 1946. Id. at 370-71.
96. Id. at 373.
97. Id. at 377.
98. Park *N Èó, Inc. v. Dollar Park & Fly, Inc., 718 F.2d 327, 331 (9th Cir. 1983).
99. Park *N Fly, Inc. had been in business since 1967, and has operated a number of automobile parking lots near airports in various cities throughout the United States. The company's mark, "Park 'N Fly" (with an airplane logo), received incontestable status from the PTO in 1977. Id. at 329-30.
100. Id. at 329. Dollar Park & Fly, Inc. had entered into the same business as the plaintiff in 1973, and only operated one facility in Portland, Oregon, where the plaintiff had no business. Id. at 329.
101. Id. at 330-31. The court reversed the district court's determination that Park 'N Fly, Inc. was entitled to an injunction against the defendant and expressly disregarded the Seventh Circuit decision in Union Carbide by holding that incontestability of a "merely descriptive" mark can only be used "defensively" and not "offensively." Id. at 331.
102. 469 U.S. 189 (1985).
fended on the ground that the mark is merely descriptive and therefore invalid.103 In so holding, the Court focused on the plain language of the Lanham Act, stating that because a registrant has an "'exclusive right' to use the mark [the] incontestable status may be used to enjoin infringement by others."104 The court further noted that "Congress expressly provided in [section] 33 (b) [15 U.S.C. § 1114(b)] and 15 [15 U.S.C. § 1065] that an incontestable mark could be challenged on specified grounds, and the grounds identified by Congress do not include mere descriptiveness."105 The Court did note that any possibility of merely descriptive language being taken from die "public domain" as a consequence of its holding is mitigated by the existence of the PTO's examination procedure and the opportunity for third parties to contest the registration of any mark for the five years prior to a mark becoming incontestable.106
Confusion still exists, however, widi regard to the effect of incontestability on the "likelihood of confusion" analysis, which is the second element of a cause of action for infringement.107 Some courts have held that a trademark's incontestable status dictates that the mark be considered "strong" for purposes of the likelihood of confusion analysis. Both Dieter v. Â & H Industries, Inc.,106 in the Eleventh Circuit, and Wynn Oil Co. v. Thomas,109 in the Sixth Circuit, interpreted the Supreme Court's holding in Park 'NFly to mean that incontestable trademarks are to be considered "strong" when determining if a likelihood of confusion exists.110
However, the majority of circuits have held that incontestability goes only to a trademark's validity and gives no weight to incontestability in assessing a mark's strengdi when determining if a likelihood
103. Id. at 205 (concluding "that the holder of a registered mark may rely on incontestability to enjoin infringement and that such an action may not be defended on the grounds that the mark is merely descriptive").
104. Id. at 196.
105. Id. at 201.
106. Id
107. See chisum & jacobs, supra note 23, § 5E[l][b], at 171.
108. 880 F.2d 322 (llth dr. 1989).
109. 839 F.2d 1183 (6th Cir. 1988).
110. See Dieter, 880 F.2d at 328-29 (reviewing the Park 'N Fly decision and Eleventh Circuit case law and concluding that when a "mark is incontestable, then it is presumed to be at least descriptive with secondary meaning, and therefore a relatively strong mark"); Wynn Oil Co., 839 F.2d at 1187 (stating that "Park 'NFfy[ ] require[s] that courts give full effect to incontestable trademarks" and "[t]herefore, while the strength of the plaintiffs' mark will still be at issue in cases invoking contestable marks, once a mark has been registered for five years, the mark must be considered strong and worthy of full protection").
of confusion exists.111 Therefore, in most circuits incontestability-will have no effect on a likelihood of confusion analysis; a defendant in an infringement action will not be precluded from proving the plaintiff's mark to be a weak mark and entitled to little or no protection.112 This majority view of the effect of incontestability can even be seen in the opinions of district court judges in the Sixth Circuit, which has adopted the minority view, as judges are "finding ways to de-emphasize and diffuse [the] presumption" that incontestability will make a weak mark strong.113
The Fourth Circuit first considered this issue in Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, /òåñ.114 In Lone Star, the Fourth Circuit reversed the district court's decision pertaining to plaintiff Max Shayne,115 a New York corporation operating the Lone Star Cafe Roadhouse, on the basis that it "erroneously relied on incontestability as being dispositive" on the issue of the strength of an incontestable mark.116 After reviewing decisions in other circuits and
111. See 1 gilson & lalonde, supra note 25, § 4.03[3][D][f], at 60 (noting that a "majority of courts are taking the . . . view . . . that a defendant is entitled to show that the plaintiffs incontestably registered mark is weak" in a likelihood of confusion analysis).
112. See, e.g., Gruner & Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993) (noting that it was not error for the district court to find an incontestable mark "weak" for the purposes of a likelihood of confusion analysis); Munters Corp. v. Matsui Am., Inc., 909 F.2d 250, 252 (7th Cir. 1990) (concluding that "Park 'NFly does not preclude consideration of a[n incontestable] mark's strength for purposes of determining the likelihood of confusion"); Miss World (UK) Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445, 1448-49 (9th Cir. 1988) (stating that incontestability of a mark "does not establish, however, that it is a particularly strong mark"); Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 171 (5th Cir. 1986) (holding that "[incontestable status does not make a weak mark strong").
113. 1 gilson & lalonde, supra note 25, § 4.03[3][D][f], at 61; see Aero-Motive Co. v. U.S. Aeromotive, Inc., 922 F. Supp. 29, 37 (W.D. Midi. 1996) (determining, as a Sixth Circuit district court, that the presumption of an incontestable mark being strong can "be rebutted by demonstrating that the mark, while inherently distinctive, is nevertheless not distinctive in the marketplace"); Daddy's Junky Music Stores v. Big Daddy's Family Music Ctr., 913 F. Supp. 1065, 1071-72 (S.D. Ohio 1996) (suggesting the following additional factors, besides incontestability, to examine when determining if an incontestable mark is weak or strong: "determining the mark's type" (i.e. generic, descriptive, suggestive, or arbitrary/fanciful); "consider [ing] the markets in which the mark has its greatest recognition and allegiance"; and the existence of "numerous third-party registrations of the mark").
114. 43 F.3d 922 (4th Cir. 1995). In Lone Star, the defendant, Alpha of Virginia, Inc. (Alpha), appealed a grant of summary judgment in the district court for the plaintiff, Lone Star Steakhouse & Saloon, Inc. (Lone Star). Id. at 925. Lone Star brought the action claiming trademark infringement on its "Lone Star Steakhouse & Saloon" mark, which was used in connection with over thirty restaurants, claiming that Alpha's use of "Lone Star Cafe Roadhouse" caused a likelihood of confusion. Id. at 925-27.
115. The district court granted the plaintiff's motion for summary judgment, enjoining Alpha from using the mark "Lone Star Grill," and also granted a motion for summary judgment for the plaintiff, Max Shayne. Id. at 925.
116. Id. at 933.
the analysis of various commentators on the issue, the court stated "that incontestability affects the validity of the trademark but does not establish the likelihood of confusion necessary to warrant protection from infringement. Likelihood of consumer confusion remains an independent requirement for trademark infringement."117 Therefore, the court held, it was free to determine whether the incontestable mark was descriptive or suggestive in determining whether a likelihood of confusion existed.118
This view of incontestability was reaffirmed in Shakespeare Co. v. Silstar Corp. of America.119 In this case, Shakespeare brought a trademark infringement action against Silstar for infringing its registration of a fishing rod with a " 'whitish translucent' tip."120 In holding that the defendant did not infringe on the plaintiffs mark, the Fourth Circuit affirmed the decision of the lower court to inquire into the strength of the plaintiffs mark, even though it was incontestable.121 The court followed Lone Star, stating " [i] n determining the likelihood of confusion, the court may consider—indeed, should consider—the mark's strength."122
3. The Court's Reasoning.—In Petro Stopping Centers, the United States Court of Appeals for the Fourth Circuit reaffirmed its position in Lone Star and held that the incontestability of a trademark only determines the validity of a mark in an infringement action and has no weight in defining the "strength" of a mark for the "likelihood of confusion" analysis.123 Additionally, the court held that the district court's finding that no likelihood of confusion existed between the two parties' trademarks was not clearly erroneous, and therefore, PSC
117. Id. at 935 (citing 4A rudolf callmann, the law of unfair competition, trademarks and monopolies § 25.08, at 59 (1992)).118. Id.
119. 110 F.3d 234, 238-40 (4th Cir. 1997), cert, denied, 118 S. Ct. 688 (1998) (holding that an incontestable mark cannot be canceled because it is functional or descriptive, but that its functionality or descriptiveness should be taken into account when performing a likelihood of confusion analysis).
120. Id. at 236. The plaintiff, Shakespeare, owned a trademark for distinctive fishing rods called "Ugly Stiks" and brought an action against the defendant, Silstar, which manufactured similar looking fishing rods called the "Power Tip Crystal rod." Id. at 236-37. In this case, Silstar was not challenging Shakespeare's mark on the basis that it was "merely descriptive," but rather because the mark was "functional" and therefore weak and entided to no federal protection. Id.
121. Id. at 239.
122. Id.
123. Petro Stopping Ctrs., 130 F.3d at 92.
was not entitled to an injunction to prevent JRP from using its "PETRO CARD" mark.124
To determine whether infringement had occurred, the court looked at the test denned in Lone Star. "[t]o prove trademark infringement, a plaintiff must show both that it has a valid, protectable trademark and that the defendant's use of a 'reproduction, counterfeit, copy, or colorable imitation,' creates a likelihood of confusion."125 Because many of PSC's marks had attained incontestable status, the court conceded that no issue existed as to the validity of PSC's trademarks and focused only on whether a likelihood of confusion existed.126
To determine whether a likelihood of confusion existed, the court employed the Pizzeria Una seven-factor test.127 The court reiterated that these factors do not carry "equal importance or equal relevance in every case," and that "determinations regarding likelihood of confusion" are reviewed under the clearly erroneous standard.128
The first element of the likelihood of confusion analysis addressed by the court was the strength of PSC's mark.129 PSC proffered three separate arguments in an attempt to show that the lower court erred in finding that PSC's "PETRO" mark was "merely descriptive and a fairly weak mark."130 PSC argued that the Supreme Court decision in Park 'N Fly precluded the district court from finding PSC's mark descriptive and weak; that because the PTO found PSC's marks to be at least suggestive,1S1 the district court was precluded from finding PSC's marks weak; and that the fact that third-party registrations
125. Id, at 91 (citing 15 U.S.C. § 1114(1) (1994); Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 930 (4th Cir. 1995)).
126. Id, ("[OJnly the second requirement—likelihood of confusion—is at issue in this appeal.").
127. Id, at 91-92; see supra notes 75-79 and accompanying text (explaining the seven factor test adopted by the Fourth Circuit in Pixzeria Una).
128. Petro Stopping Ctrs., I30 F-3d at 91-92 (citing Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1526 (4th Cir. 1984)).
130. Id. at 91-93 (quoting Petro Stopping Ctrs., L.P. v. James River Petroleum, Inc., 41 U.S.P.Q.2d (BNA) 1853, 1855 (E.D. Va. 1997)).
131. PSC contended that since the PTO did not require PSC to show that its mark had acquired "secondary meaning" to be entitled to registration^ the PTO found the mark to be at least "suggestive." Id. at 92. Specifically, PSC reasoned that when the PTO receives an application for a mark that is descriptive, a "secondary meaning" showing is required. Because PSC was not required to show secondary meaning, it claimed that its mark must be at least suggestive. Id. (citing Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 934 (4th Cir. 1995)).
including the word "PETRO" exist was not sufficient to declare a mark weak.132 The court addressed and dismissed all of these arguments. First, the court addressed PSC's claim that Park 'N Fly precluded the conclusion that an incontestable mark is descriptive and weak.133 The court dismissed this argument by showing that PSC misinterpreted the holding in Park W.Ffy.134 The court characterized the Park 'N Fly decision as holding only that "a defendant in an infringement suit cannot claim that an incontestable mark is merely descriptive and therefore invalid and undeserving of any protection."135 The court noted that the Park 'N Fly Court did not go as far as saving that the incontestability of a mark is dispositive of its strength when being considered in the likelihood of confusion analysis.136 The court stated that the 1988 revisions of the Lanham Act confirmed its interpretation of Park 'N Fly.137 The court also looked to its decisions in Lone Star, where the court held that "incontestability affects the validity of the trademark but does not establish the likelihood of confusion necessary to warrant protection from infringement,"138 and Shakespeare, where it held that "although a district court cannot cancel an incontestable trademark on the grounds of functionality or descriptiveness, it can and should consider these grounds when determining whether likelihood of confusion has been established."139
133. Id. at 92.
134. Id. (stating that PSC "confuses the issue of a trademark's validity with the separate inquiry into a mark's strength for purposes of the likelihood of confusion determination").
135. Id.
136. Id. ("The [Supreme] Court did not hold . . . that the descriptive nature of a mark may not be considered in the separate likelihood of confusion inquiry.").
137. Id. The court quoted a change in the incontestability provisions of the Lanham Act, which occurred in the Trademark Law Revision Act of 1988, which stated that "[s]uch conclusive evidence of the right to use the registered mark shall be subject to proof of infringement." Id. (alteration in original) (emphasis added) (citing Trademark Law Revision Act of 1988, Pub. L. No. 100-667, §128(b)(l), 102 Stat. 3935, 3945 (codified at 15 U.S.C. § 1115(b))). The court felt that by making the use of an incontestable mark conditioned on any "proof of infringement," Congress was making it clear that incontestability would not affect the likelihood of confusion analysis, and therefore, not affect the determination of the strength of the mark, when determining if likelihood of confusion exists. Id. If Congress meant to make any incontestable mark strong as a matter of law, it would be inconsistent to make its use conditioned on "proof of infringement," as Congress was likely aware that almost every circuit uses "strength of the mark" when determining if a likelihood of confusion exists. See supra note 79 (listing all of the circuits that use this factor in their analysis).
138. Id. (internal quotation marks omitted) (quoting Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 935 (4th Cir. 1995)).
139. Id. (citing Shakespeare Co. v. Silstar Corp. of Am., 110 F.3d 234, 238-40 (4th Cir. 1997), cert, denied, 118 S. Ct. 688 (1998)).
Secondly, PSC argued that since the PTO found the "PETRO" mark to be at least suggestive, the lower court erred in finding that the mark was descriptive and weak, because a district court should not be "free to substitute its own finding for that of the PTO."140 The court addressed this argument by again citing Pizzeria Una and stating diat "courts should accord deference to the PTO's findings when assessing the strength of a mark under the likelihood of confusion test," but "the PTO's 'determination is not conclusive.'"141 The court, however, also stated diat other factors besides a mark's suggestive or descriptive nature should be considered when determining the strengdi of a mark.142 In the instant case, these additional factors included whether the mark had acquired a secondary meaning and the extent that third parties have used the term "PETRO" in other trademarks.143 The court agreed with die district court's findings diat the term "PETRO" does not have a secondary meaning in the card lock business, in which JRP is involved, and diat a large number of third-party registrants have the term "PETRO" in their trademarks.144 PSC argued diat "evidence of diird-party registrations alone is insufficient to conclude diat a mark is weak."145 The court disagreed, stating that " [t] he frequency widi which a term is used in odier trademark registrations is indeed relevant to the distinctiveness inquiry under the first likelihood of confusion factor."146
The court also noted that PSC's representations to the PTO when first trying to acquire registration for its trademarks, diat die term "PETRO" is " 'entided to a very narrow scope of protection,'" was in conflict widi die position PSC was taking before die Fourth Circuit regarding the strengdi of its "PETRO" marks.147 On diese grounds,
140. Id. at 93; see supra note 118 and accompanying text (noting the Fourth Circuit's similar observation in Lone Star).141. Petro Stopping Ctrs., 130 F.3d at 93 (quoting Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1534 (4th Cir. 1984)).
142. See id. ("More significantly, the placement of a mark in either the suggestive or descriptive category is merely the first step in assessing the strength of a mark for purposes of the likelihood of confusion test." (citing Lang v. Retirement Living Publ'g Co., 949 F.2d 576, 581 (2d Cir. 1991); Western Publ'g Co. v. Rose Art Indus., Inc., 910 F.2d 57, 61 (2d Cir. 1990); Miss World (UK) Ltd. v. Mrs. Am. Pageants, Inc., 856 F.2d 1445, 1449 (9th Cir. 1988))).
144. Id. The court noted that there are 117 third-party registrations or applications with the word "PETRO" in it, and 63 of these are related to the sale of fuel or fuel related services. Id.
145. Id.
146. Id. (citing Pizzeria Uno, 747 F.2d at 1530-31).
147. Id. at 94. When PSC first tried to obtain registration of its mark in 1981, the PTO objected to the mark, claiming that it would cause a "likelihood of confusion with previ-
the court upheld the district court's finding that PSC's "PETRO" mark was descriptive and weak.148
The second "likelihood of confusion" factor addressed by the court was the similarity between PSC's and JRP's marks.149 PSC argued that the district court erred because it focused on the dissimilarities between the marks and not the similarities.150 The court dismissed this argument, stating that when considering the similarity of the marks "courts generally focus on the dominant portions of parties' marks."151 The court further stated that if the scrutiny of two marks was limited xto only similarities, then the need to review this factor would be eliminated altogether, "[b]ecause every triable case of trademark infringement involves marks that are similar at some level."152 The court then noted that the test for similarity is whether a "'similarity of appearance and sound'" exists which would result in consumer confusion.153 After reviewing the two marks, the court affirmed the lower court's finding that the marks were dissimilar.154
The court then addressed the similarity of goods and services, and similarity of facilities—the third and fourth Pizzeria Una factors.155 The court again found that the lower court did not err in finding the goods, services, and facilities to be so dissimilar as to create no likelihood of confusion.156 In so finding, the court compared the services and facilities of both PSC and JRP and held that "[b]esides the sale of fuel, the two parties' services and facilities differ in virtually every respect."157 The court also noted that even if by chance a PSC customer was confused and attempted to purchase fuel at a JRP card lock sta-
ously registered trademarks that included the term PETRO." Id, To obtain registration, PSC countered that "the term 'Petro' is entitled to a very narrow scope of protection," and "that the term is extremely dilute and entitled to a weak scope of protection." Id. (internal quotation marks omitted). In contrast, in this litigation, PSC was asking the court for broad protection for its PETRO marks, which the court denied. Id-146. Id.
149. Id,
150. Id,
151. Id. (citing Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 936 (4th Cir. 1995); Pizzeria Una, 747 F.2d at 1534-35).
152. Id.
153. Id. (quoting Pizzeria Una, 747 F.2d at 1534).
154. Id, The court noted that PSC's marks use green, white and red-orange, while JRP's marks use red, white and blue (and sometimes gray). Id. Additionally, the court focused on JRP's use of "James River" or "JR" in its marks along with lines that signify movement, and that the use of "JR" was the "dominant portion" of the mark. Id.
155. See id. at 94-95.
156. Id,
157. Id. at 95; see also supra notes 7-11, 13-15 and accompanying text (describing the facilities and services available at PSC and JRP).
tion, he could not, because only CFN members can purchase fuel at JRP's facilities.158
The court next addressed the similarity of the advertising used by both parties.159 PSC argued that JRP "promotes its services in the CFN directories, in a manner similar to [PSC's] own promotion of its services in truck stop directories."160 The court dismissed this by noting that CFN directories are available only to CFN customers (not to the public) and that drivers of a CFN company would only wish to visit those stations in which their CFN card would work.161 The court also noted the many differences between the types of advertising that each company uses,162 and held that the lower court did not clearly err in finding no likelihood of confusion under this factor.163
The final factor addressed by the court was whether there were any instances of actual confusion between the two parties' marks. PSC argued that even one instance of actual confusion should be significant in determining the likelihood of confusion, and that the lower court erred by not giving proper weight to its showing of actual confusion.164 The court, however, stated that PSC's "meager evidence of actual confusion is at best de minimis."165 The court further stated that the evidence of so few cases of actual confusion creates a "presumption against likelihood of confusion in the future."166
In holding that the Park 'N fly decision does not preclude an incontestable mark from being deemed merely descriptive, and therefore weak, for purposes of the likelihood of confusion analysis, and that the lower court did not clearly err when applying the likelihood of confusion factors, the court affirmed the district court's decision that JRP did not infringe upon PSC's trademarks.167
158. Petro Stopping Ctrs., 130 F.3d at 95; see supra notes 14-15 and accompanying text (discussing the Commercial Fueling Network and the "card lock" fueling system).
159. Petro Stopping Ctrs., 130 F.3d at 95.
160. Id.
161. Id. (reasoning that the exclusivity of the CFN makes any confusion unlikely).
162. Id.; see supra notes 9, 17 and accompanying text (comparing the advertising used by PSC and JRP).
163. Petro Stopping Ctrs., 130 F.3d at 95. The likelihood of confusion factor concerning the defendant's intent was not raised on appeal and was therefore not addressed by the court. Id.
164. Id. ("[PSC] maintains that courts normally accord significance to even one instance of actual confusion.").
165. Id. (citing Universal Money Ctrs., Inc. v. American Tel. & Tel. Co., 22 F.3d 1527, 1535 (10th Cir. 1994)).
166. Id. (internal quotation marks omitted) (quoting Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 263 (5th Cir. 1980)).
167. Id.
4. Analysis.—In Petro Stopping Centers, the Fourth Circuit affirmed its earlier holding in Lone Star that the incontestability of a trademark does not make a "weak" mark "strong" for purposes of the "likelihood of confusion" analysis in an infringement action, but is only to be used to determine the validity of the mark.168 Additionally, the court held that the district court's finding that no likelihood of confusion existed between the two parties' trademarks was not clearly erroneous.169 The Petro Stopping Centers holding, that incontestability is only to be taken into account when determining the validity of a trademark in an infringement action, is directly in line with Fourth Circuit precedent. This holding strengthens the Fourth Circuit's position that incontestability has no weight in a likelihood of confusion analysis, and is consistent with both the guidance and the intent of Congress, while balancing the competing interests that exist in trademark law.170
The decision in Petro Stopping Centers finds its roots in the Supreme Court's Park 'N Fly decision. In that case, the Supreme Court held that a trademark owner can bring an action for infringement of an incontestable mark, and that the defendant cannot defend the action on die basis that the mark is merely descriptive, and therefore not valid.171 However, the Supreme Court did not hold, as PSC asserted, diat a mark's incontestable status "forecloses any argument that [the mark] is descriptive."172 In fact, the Park 'N Fly Court remanded the case to the district court to determine whether a likelihood of confusion actually existed.173 Therefore, the Court did not address the question of whether or not incontestability has any bearing on the strength of the mark in a likelihood of confusion analysis.174
168. Id. at 92 (" [I] ncontestability affects the validity of the trademark but does not establish the likelihood of confusion necessary to warrant protection from infringement." (internal quotation marks omitted) (quoting Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 935 (4th Cir. 1995))).
170. See supra notes 47-51 and accompanying text (discussing the competing interests of trademark law).
171. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 205 (1985). See supra notes 102-106 and accompanying text for a more detailed discussion on the Park 'N Fly decision.
172. Petro Stopping Ctrs., 130 F.3d at 92.
173. Park 'NFly, 469 U.S. at 205.
174. See Petro Stopping Ctrs., 130 F.3d at 92 (stating that Park 'NFly "did not hold[ ] that the descriptive nature of a mark may not be considered in the separate likelihood of confusion inquiry"); Munters Corp. v. Matsui Am., Inc., 909 F.2d 250, 252 (7th Cir. 1990) (The Supreme Court's holding in Park 'N fly does not address likelihood of confusion. In fact the Court specifically directed the district court to consider die likelihood of confusion
The Supreme Court's failure in Park 'N Fly to address the impact of incontestability on the strength of the mark, in a likelihood of confusion analysis, left the courts with no guidance on the subject.175 In 1988, Congress amended the text of 15 U.S.C. § 1115(b) to clarify the incontestability provisions by providing that although incontestable status is conclusive evidence of the validity of the registered mark "[s]uch conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in section 32."176 The Lanham Act states that infringement occurs when an individual uses the valid trademark of another in a manner which "is likely to cause confusion."177 This shows that even if incontestability grants an "exclusive right" to use a mark, that use is subject to a likelihood of confusion analysis. If Congress intended incontestability to be dispositive in a likelihood of confusion analysis, there would be no need to condition the "exclusive right" to use an incontestable mark by requiring a confusion analysis. In support of this position, a commentator has stated that the Senate Committee made it "clear that incontestability does not relieve the owner of an incontestable registration from the burden of proving likelihood of confusion."178 Therefore, with this revision, Congress attempted to eliminate any confusion stemming from the Park 'N Fly decision and to ensure that the incontestability of a mark was to affect only the validity of the mark and not its strength.179
In his dissent in Park 'N Fly, Justice Stevens expressed concerns over the Court's holding because of the nonadversarial nature of the registration process.180 He felt that even though trademark applications are reviewed by competent personnel, the possibility for errors
argument on remand." (citing Park 'N fly, 469 U.S. at 205)); Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 171 (5th Cir. 1986) (stating that the Park 'N Fly holding does not address whether incontestability is to be a factor in determining likelihood of confusion).175. See 1 gilson & lalonde, supra note 25, § 4.03[3][D][f], at 60 (stating that "[i]n the aftermath of Park 'NFly, the courts were faced with the question of whether incontestable marks must be considered strong for likelihood of confusion analysis" and that the courts still have not come to a unanimous agreement on the issue).
176. Trademark Law Revision Act of 1988, Pub. L. No. 100-667, § 128(b)(l), 102 Stat. 3935, 3945 (codified at 15 U.S.C. § 1115(b) (1994)).
177. 15 U.S.C. § 1114(1) (a).
178. chisum & jacobs, supra note 23, § 5E[l][b], at 171.
179. See id. (stating that "[t]he better view, confirmed by the 1988 amendment, is that incontestability pertains only to validity").
180. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 212 (1985) (Stevens, J., dissenting) (noting that "the possibility of error [during the registration process that a 'merely descriptive mark' obtains registration] is always present, especially in nonadversary proceedings" (footnote omitted)).
did exist.181 Justice Stevens's concern was that merely descriptive trademarks with no secondary meaning may be registered in error, and if left unchallenged for the required five years, would become incontestable.182 This, in his mind, would lead to marks which are not entitled to protection under the Lanham Act (because they are "merely descriptive") becoming valid as a matter of law.183
These concerns are well founded and valid. However, by holding that incontestability does not affect the strength of the mark for purposes of the likelihood of confusion analysis, the potential for harm to society and free market competition is greatly reduced, if not eliminated. This is because the "governing standard in trademark infringement actions is 'likelihood of confusion,'"184 and as long as incontestability does not affect this portion of the infringement test, the infringement test will remain equally balanced because only one half of the infringement test will be affected by incontestability.185 Because incontestability affects only validity in the infringement analysis in the Fourth Circuit, it will not create strong marks as a matter of law.186 This will make it more difficult for a holder of an incontestable weak mark than a holder of an incontestable strong mark to show
182. Id.
183. See id. at 211-12 (stating that "Congress could not have intended that incontestability should preserve a merely descriptive trademark from challenge when the statutory procedure for establishing secondary meaning was not followed and when the record still contains no evidence that the mark has ever acquired secondary meaning," for this result would mean that the mere "passage of time [can] transform [ ] an inherendy defective mark into an incontestable mark").
184. Sun-Fun Prods., Inc. v. Suntan Research & Dev. Inc., 656 F.2d 186, 189 (5th Cir. 1981) (quoting 15 U.S.C. § 1114 and citing Exxon Corp. v. Texas Motor Exch., 628 F.2d 500, 504 (5th Cir. 1980)); see also Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978) ("It is well settled that the crucial issue in an action for trademark infringement or unfair competition is whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." (citing Maternally Yours, Inc. v. Your Maternity Shop, Inc., 234 F.2d 538, 542 (2d Cir. 1956))).
185. Balance in the infringement test will be maintained because incontestability will only sway one half of the infringement test (validity of the mark) in favor of the holder of the incontestable mark. By having the remaining half of the test (likelihood of confusion) unaffected by incontestability, the holder of an incontestable mark which is "merely descriptive" will not receive very broad protection. If a mark was to be considered strong as a matter of law because it is incontestable, than the holder of a registered but "merely descriptive" mark would receive broader protection than if the mark was only considered "merely descriptive" (and therefore weak). This result would seem to grant an effective monopoly in merely descriptive language to the holder of the mark, which is in conflict widi the goals of trademark law.
186. &eLone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 935 (4th Cir. 1995) (stating that "incontestability affects the validity of the trademark but does not establish the likelihood of confusion necessary to warrant protection from infringement"
infringement because incontestability will not create the presumption of a strong mark.187 If a party has a weak mark, it will need to make a stronger showing with respect to the remaining six Pizzeria Uno factors to show infringement.188 Therefore, unless an intentional act of infringement took place, it will be much more difficult for a plaintiff to show a likelihood of confusion.189
The concern over the potential for the trademark holder to obtain a "monopoly" of merely descriptive language is practically eliminated by the Fourth Circuit's decision in Petro Stopping Centers. By holding that incontestability does not affect the strength of die mark in a likelihood of confusion analysis, the court places the burden on the holder of an incontestable mark to prove infringement.190 Because the strength of a mark is the "first and paramount factor"191 in determining whether a likelihood of confusion exists, a district court must consider the amount of protection the holder of the incontestable mark is to receive.192 The weaker the mark, the less likely that confusion between the marks will be found.193 Therefore, by holding
for the "[l]ikelihood of consumer confusion remains an independent requirement for trademark infringement").187. The strength of the mark is the most important factor in the likelihood of confusion analysis. See Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984) {stating that the "first and paramount factor [in a likelihood of confusion analysis] is the distinctiveness or strength of the two marks").
188. Because the Pizzeria Uno court described the strength of the mark as the "first and paramount factor" when determining if a likelihood of confusion exists, it must follow that if the mark of the person bringing the action is "weak," they will have to rely predominantly on the remaining six Pizzeria Uno factors to bring a successful infringement action.
189. See Sun-Fun Prods., Inc. v. Suntan Research & Dev. Inc., 656 F.2d 186, 190 (5th Cir. 1981) (stating that "[e]vidence of intentional deception carries special weight in the calculus of determining likelihood of confusion" and "proof that a defendant chose a mark with the intent of copying the plaintiffs mark, standing alone, may justify an inference of confusing similarity" (citing Exxon Corp. v. Texas Motor Exch., 628 F.2d 500, 506 (5th Cir. 1980); Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 263 (5th Cir. 1980))).
190. To show infringement, the Petro Stopping Centers court stated that the plaintiff must show it has "a valid, protectable trademark and that the defendant's use of a 'reproduction, counterfeit, copy, or colorable imitation,' . . . creates a likelihood of confusion." Petro Stopping Ctrs., 130 F.2d at 91 (citing 15 U.S.C. § 1114(1); Lone Star, 43 F.3d at 930).
192. Basically, the district court will determine if the mark is weak or strong. See Petro Stopping Ctrs., 130 F.2d at 92 (stating that the Fourth Circuit "recognize[s] that likelihood of confusion is an inherently factual issue" to be determined by the trier of fact in the district court and reviewed under the "clearly erroneous" standard).
193. This is inherent in the impact of the strength of the mark in a likelihood of confusion analysis. In the Fourth Circuit, as the strength of the mark is the "first and paramount factor" in determining if a likelihood of confusion exists, it follows that if die mark is weak, die trademark holder will have to make a much stronger showing in the remaining factors to show infringement. Id.; see also supra notes 187-188 and accompanying text (emphasizing reliance on other factors when a mark is weak).
that incontestability does not affect the likelihood of confusion analysis, the Fourth Circuit has placed a check on die exclusive use of merely descriptive marks. This will prevent "monopolies" on merely descriptive language by allowing the original holder to keep using his mark while permitting others to use similar language.
Additionally, the application of the incontestability doctrine in die manner set forth in Petro Stopping Centers equally balances die competing interests in trademark law.19"1 One such interest is that of die trademark owner in maintaining customer "goodwill."193 As interpreted by die Fourth Circuit in Petro Stopping Centers, two aspects of the doctrine of incontestability allow die holder of a mark to maintain "goodwill" with his customer base. First, die mark remains valid and die holder may continue to use it. Therefore, the advertising and customer base that the holder has developed over die five years leading up to die incontestable status of the mark, and beyond, is not wasted. Even though a court may still consider the mark merely descriptive and therefore weak, incontestability will ensure the continued validity of the mark for both "offensive" and "defensive" use, even diough a court may find it "merely descriptive" witii no secondary meaning.196 Second, die strengdi of a mark is not die only factor to be considered in a likelihood of confusion analysis.197 Thus, although a competitor may be able to use similar language because die incontestable mark is descriptive and weak, she would not be permitted to use a near duplicate of die mark.198 Many courts have held that the weight and use of die factors to determine whether a likelihood of confusion exists var-
194. See supra notes 47-51 and accompanying text (explaining the competing interests that must be balanced in trademark law).
195. See supra note 49 (explaining the interest in protecting the "goodwill" of a mark's owner in the community).
196. This is because 15 U.S.C. § 1115(b) specifically states that incontestability "shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce." 15 U.S.C. § 1115(b) (1994) (emphasis added). Of course, this exclusive right is subject to the enumerated defenses of § 1115(b). See supra note 86 and accompanying text.
197. See supra notes 75-78 and accompanying text (discussing the factors considered by the Fourth Circuit in determining whether a likelihood of confusion exists).
198. By using a "near duplicate" of a weak, but incontestable mark, a defendant in an infringement suit would run afoul of at least one of the Pizzeria Una factors, the "similarity of the two marks." See supra note 76 and accompanying text (listing the seven Pizzeria Una factors which are used in the Fourth Circuit for the likelihood of confusion test). As "'[n]ot all of the[ ] [factors] are always relevant or equally emphasized in each case,'" a court would certainly give great weight to the similarity of the marks when the allegedly infringing mark is a near duplicate. Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984) (quoting Modular Cinemas of Am., Inc. v. Mini Cinemas Corp., 348 F. Supp. 578, 582 (S.D.N.Y. 1972)).
ies in each case.199 For example, if a plaintiff has a mark that is determined to be weak, but can show that the defendant intentionally copied his mark, that evidence would carry "special weight."200 "[P]roof that a defendant chose a mark with the intent of copying [the] plaintiffs mark, standing alone, may justify an inference of confusing similarity."201 Therefore, if a court finds a plaintiffs mark is weak, the court is not precluded from finding that a likelihood of confusion exists and ruling in the plaintiffs favor. Even though incontestability will "not make a weak mark strong,"202 a trademark holder will be able to keep his mark, and he will be protected from infringement by the remaining factors of the likelihood of confusion analysis.203
However, because the strength of a mark is the "first and paramount factor"204 in a likelihood of confusion analysis, another competing interest of trademark law, the public and potential competitors' interest in a free market, is protected by the holding in Petro Stopping Centers.205 If a plaintiffs mark is determined to be weak, he will have to make a strong showing with regard to the remaining factors to show that a likelihood of confusion exists. This extra weight given to the strength of a mark will provide an extra burden on the holder of a descriptive, and therefore weak, mark to show infringement. This prevents the holder of a weak mark from having a "monopoly" on descriptive language, which would foreclose anyone else
199. See Petro Stopping Ctrs., 130 F.3d at 91 (stating that likelihood of confusion factors "are not of equal importance or equal relevance in every case" (citing Pixzeria Una, 747 F.2d at 1527)).
200. Sun-Fun Prods., Inc. v. Suntan Research & Dev. Inc., 656 F.2d 186, 190 (5th Cir. 1981).
201. Id. (citing Exxon Corp. v. Texas Motor Exch., 628 F.2d 500, 506 (5th Cir. 1980); Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 263 (5th Cir. 1980)).
202. Greek Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 171 (5th Cir. 1986).
203. Because no lone factor is dispositive in a likelihood of confusion analysis, a trademark holder can have a weak mark and yet still show that the remaining factors create a likelihood of confusion. See supra notes 199-202 and accompanying text (discussing the varying weight that may be given to different factors of the Pixzeria Una "likelihood of confusion" test, depending on the circumstances of the case).
204. Pizzeria Una, 747 F.2d at 1527.
205. See supra notes 47-51 and accompanying text (discussing the competing interests of trademark law). By holding that incontestability does not affect the strength of the mark for purposes of the likelihood of confusion analysis, the Fourth Circuit protected the public's and competitors' interest in a free market; because the holding prevents holders of weak, but incontestable, marks from having a monopoly on a "merely descriptive" mark. If incontestability operated as a matter of law to make a weak mark strong, then the holder of that weak mark could easily use that "strength" as a weapon to prevent others from using similar "descriptive" language in the marketing of their products. This would fly in the face of the interest to allow others to compete freely in an open market and grant wide protection to a mark, that would only receive very narrow protection (if any at all) were it not for its incontestability.
from using that language in describing their own product. The very nature of a free market requires that multiple competitors try to sell the same or similar product, and the Fourth Circuit's application of the incontestability doctrine aids in that end.
Another competing interest is the need for a "fair and efficient legal system."206 This interest is also achieved by the limitation on the effect of incontestability in a likelihood of confusion analysis. If incontestability could turn a weak descriptive mark into a strong mark as a matter of law, then a "monopoly" on that descriptive language would be created. This would be unfair both to innocent competitors and to the consuming public. One should not be denied the opportunity to fairly compete in a free market. Additionally, if the court had not followed its precedent, it would have placed the Fourth Circuit's deci-sional law in disarray, leaving the door open for more litigation on the impact of incontestability and taking away from the "efficiency" of the judicial system in the Fourth Circuit.207
The final competing interest of trademark law is to protect consumers from being confused about the origin of products.208 The potential for consumer confusion is held in check in a way similar to the way a trademark holder's "goodwill" interest is protected.209 This is because the test for likelihood of confusion has seven independent factors, which are weighed differently in each fact situation, thereby ensuring that the similarity of descriptive language in competing marks will not be dispositive in an infringement action by favoring either the plaintiff or the defendant.210 The holder of a descriptive, but incontestable, mark is protected from having his customers become confused because he can rely on the other six Pizzeria Una factors to demonstrate a likelihood of confusion.211 Therefore, although this application of incontestability may allow a competitor to use simi-
207. See supra note 51 and accompanying text (discussing the interest of trademark law in a "fair and efficient legal system").
208. See supra note 48 and accompanying text (stating that confusion impedes customers from making free and informed purchasing decisions).
209. See supra notes 196-203 and accompanying text (discussing the analysis of the holding in Petro Stopping Centers and how it protects the interest of the trademark holders' "goodwill").
210. See supra note 77 and accompanying text (describing the case-by-case treatment of the relevant factors).
211. See supra note 76 and accompanying text (setting forth the seven factors to be taken into account in the likelihood of confusion analysis). A determination that a mark is weak does not preclude a trademark owner from successfully prosecuting an infringement action. See supra note 77 and accompanying text (noting that not all of the factors will carry equal weight in each analysis, therefore allowing the plaintiff to make a strong showing in the other six factors to be successful in an infringement action).
lar descriptive language, the public will be protected from confusion by proper application of the remaining factors, which ensure fair competition.
The holding in Petro Stopping Centers clearly advances the views of incontestability illustrated by the Supreme Court in Park 'NFly, and by Congress in the creation and subsequent revisions of the Lanham Act, while balancing the competing interests which exist in trademark law. The prevention of confusion among consumers regarding the origin of goods is protected by the many factors which carry flexible weight, allowing an analysis to be customized to the facts of any situation.212 The interest of a trademark owner in maintaining his "goodwill" is protected by the incontestable validity of his mark, along with the additional factors he can use to show a likelihood of confusion. The common interest in free competition is protected by the additional importance given to the "strength" of the mark when determining if a likelihood of confusion exists, causing the holder of a merely descriptive mark to make a stronger showing in the other factors to show infringement.213
5. Conclusion.—In holding that incontestability does not affect the "strength" of a trademark when determining if a likelihood of confusion exists, the Fourth Circuit has followed its precedent and solidified its case law on the doctrine of incontestability.214 The Fourth Circuit has properly applied the intent of the Congress215 by ensuring that incontestability is used only to define the validity of a mark and not to affect a likelihood of confusion analysis. This holding also maintains a balance between the competing interests of trademark law, and ensures that no "monopolies" will be granted for merely descriptive language. With its holding in Petro Stopping Centers, the Fourth Circuit has made it clear that "[i] neon testable status does not make a weak mark strong."216
Terrance J. Wikberg
212. See supra notes 207-211 and accompanying text (analyzing the impact of the Petro Stopping Centers holding on the interest of trademark law in the prevention of confusion among consumers).213. See supra notes 204-205 and accompanying text (explaining how the common interest of the public and potential competitors in a free market is protected by the holding in Petro Stopping Centers).
214. Petro Stopping Ctrs., 130 F.3d at 95.
215. See supra notes 175-179 and accompanying text.
216. Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 171 (5th Cir. 1986).