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16 Wake Forest Journal of Business and Intellectual Property Law 134 (2015)


The Supreme Court has been inextricably constraining the trademark right in the last 15 years. The Court first embarked in a wholesale expansion of the trademark right and now the Court is engaged in an effort to rein it back in.

The expansion started in 1985 with Park ‘N Fly v. Dollar Park & Fly. The Court there held that a descriptive and otherwise unenforceable trademark is made enforceable and the appropriate subject of an offensive action to enjoin a competing use if it is incontestable. The Court overruled Park ‘N Fly by implication with KP Permanent Makeup v. Lastings. In KP Permanent Makeup, the Court held that a descriptive mark used descriptively is fair use which the mark hold must tolerate.

KP Permanent Makeup appears to be only a fair use case and has been heralded as an important case clarifying fair use in trademark jurisprudence. It also emasculates the incontestability doctrine. Although there are other uses of incontestability, its primary use for descriptive marks is to rescue them from cancellation and allow them to be used offensively in enforcement actions if incontestable. With KP Permanent Makeup, a user of a descriptive but incontestable mark only need to make they claim that they are using it descriptively to entirely shift the analysis from the use of someone else’s incontestable mark to fair use.

This curtailment should come as no surprise to anyone. The Court first expanded trademark jurisprudence with Park ‘N Fly, Taco Cabana and Qualitex, and then constrained it with TrafFix, Wal-Mart, and Dastar, now KP Permanent Makeup. What is surprising is the fact that, with KP Permanent Makeup, Park ‘N Fly has been overruled by implication and the incontestability doctrine has been made superfluous. The expansion of trademark rights encourage trademark speculation and this speculation led to trademark bullying. Its constraint should have the effect of reining in trademark bullies as well.