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

*206Justice Stevens,

dissenting.

In trademark law, the term “incontestable” is itself somewhat confusing and misleading because the Lanham Act expressly identifies over 20 situations in which infringement of an allegedly incontestable mark is permitted.1 Moreover, in § 37 of the Act, Congress unambiguously authorized judicial review of the validity of the registration “in any action involving a registered mark.”2 The problem in this case arises because of petitioner’s attempt to enforce as “incontestable” a mark that Congress has plainly stated is inherently unregistrable.

The mark “Park ’N Fly” is at best merely descriptive in the context of airport parking.3 Section 2 of the Lanham Act *207plainly prohibits the registration of such a mark unless the applicant proves to the Commissioner of the Patent and Trademark Office that the mark “has become distinctive of the applicant’s goods in commerce,” or to use the accepted shorthand, that it has acquired a “secondary meaning.” See 15 U. S. C. §§ 1052(e), (f). Petitioner never submitted any such proof to the Commissioner, or indeed to the District Court in this case. Thus, the registration plainly violated the Act.

The violation of the literal wording of the Act also contravened the central purpose of the entire legislative scheme. Statutory protection for trademarks was granted in order to safeguard the goodwill that is associated with particular enterprises.4 A mark must perform the function of distinguishing the producer or provider of a good or service in order to have any legitimate claim to protection. A merely descriptive mark that has not acquired secondary meaning does not perform that function because it simply “describes the qualities or characteristics of a good or service.” Ante, at 194. No legislative purpose is served by granting anyone a monopoly in the use of such a mark.

Instead of confronting the question whether an inherently unregistrable mark can provide the basis for an injunction against alleged infringement, the Court treats the case as though it presented the same question as Union Carbide Corp. v. Ever-Ready, Inc., 531 F. 2d 366 (CA7), cert. denied, 429 U. S. 830 (1976), a case in which the merely descriptive mark had an obvious and well-established secondary meaning. In such a case, I would agree with the Court that the descriptive character of the mark does not provide an in-fringer with a defense. In this case, however, the provisions *208of the Act dealing with incontestable marks do not support the result the Court has reached. I shall first explain why I agree with the conclusion that the Court of Appeals reached; I shall then comment on each of the three arguments that the Court advances in support of its contrary conclusion.

I

The word “incontestable” is not defined in the Act. Nor, surprisingly, is the concept explained in the Committee Reports on the bill that was enacted in 1946.5 The word itself implies that it was intended to resolve potential contests between rival claimants to a particular mark. And, indeed, the testimony of the proponents of the concept in the Committee hearings that occurred from time to time during the period when this legislation was being considered reveals that they were primarily concerned with the problem that potential contests over the ownership of registrable marks might present.6 No one ever suggested that any public purpose would be served by granting incontestable status to a mark that should never have been accepted for registration in the first instance.

In those hearings the witnesses frequently referred to incontestability as comparable to a decree quieting title to real property.7 Such a decree forecloses any further contest over ownership of the property, but it cannot create the property itself. Similarly the incontestability of a trade*209mark precludes any competitor from contesting the registrant’s ownership, but cannot convert unregistrable subject matter into a valid mark. Such a claim would be clearly unenforceable.8

The case that petitioner principally urges in support of reversal, Union Carbide Corp. v. Ever-Ready, Inc., supra, does not conflict with this simple proposition. The court there was dealing with a contest between two companies over the name “Eveready.” There was no question that the name had acquired a well-established secondary meaning, although it was not originally registered under § 1052(f).9 The problem presented in such a case is properly resolved by *210giving effect to the incontestable language of the Act, but a wholly different question is presented when the record establishes that a mark should not have been registered at all.

The legislative history of the incontestability provisions indicates that Congress did not intend to prevent the use of mere descriptiveness as a substantive defense to a claim of infringement if the mark has not acquired secondary meaning. The testimony in the Committee hearings concerning the public interest in preventing the grant of monopoly privileges in the use of merely descriptive phrases expressly relied on the administrative practice that was incorporated into § 2(f), 15 U. S. C. § 1052(f),10 as a protection against the improper registration of merely descriptive marks. Thus, Dr. Karl Pohl testified:

“On the question of so-called nontechnical trademarks, Professor Handler assumes that they have been improperly registered.
“Now, where does that idea originate?
“They have very carefully circumscribed procedure for getting these marks on the register. It will by no means be easy, Mr. Chairman and gentlemen of the committee, it will be exceedingly difficult to get these descriptive words on the register. The Patent Office will, in the first place, reject them, and you will have *211to submit a substantial body of evidence that these words by long-continued usage, have acquired a secondary meaning, and by that long-continued usage have acquired that special status which entitles them to be protected in their secondary meaning sense.
“Therefore, to call these marks improperly registered trade-marks is, I believe, a misnomer.
“Now, if you look at the problem from that point of view, you will see that the apprehensions of Mr. Handler are more or less obviated. I believe personally that they are completely obviated, but as to nontechnical trademarks and only a very carefully circumscribed number of trade-marks will be entitled to that protection.”11

The record in this case demonstrates that Professor Handler’s concern was justified, and that Dr. Pohl’s assurance to the Committee was somewhat misleading; for the “Park ’N Fly” mark issued without any evidence of secondary meaning having been presented to the Patent and Trademark Office. In light of this legislative history, it is apparent 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 a secondary meaning.

If the registrant of a merely descriptive mark complies with the statutory requirement that prima facie evidence of secondary meaning must be submitted to the Patent and Trademark Office, it is entirely consistent with the policy of the Act to accord the mark incontestable status after an addi*212tional five years of continued use. For if no rival contests the registration in that period, it is reasonable to presume that the initial prima facie showing of distinctiveness could not be rebutted. But if no proof of secondary meaning is ever presented, either to the Patent and Trademark Office or to a court, there is simply no rational basis for leaping to the conclusion that the passage of time has transformed an inherently defective mark into an incontestable mark.

No matter how dedicated and how competent administrators may be, the possibility of error is always present,12 especially in nonadversary proceedings.13 For that reason *213the Court normally assumes that Congress intended agency action to be subject to judicial review unless the contrary intent is expressed in clear and unambiguous language.14 In this statute Congress has expressed no such intent. On the contrary, it has given the courts the broadest possible authority to determine the validity of trademark registrations “in any action involving a registered mark.”15 The exercise of that broad power of judicial review should be informed by the legislative purposes that motivated the enactment of the Lanham Act.16

Congress enacted the Lanham Act “to secure trade-mark owners in the goodwill which they have built up.”17 But without a showing of secondary meaning, there is no basis upon which to conclude that petitioner has built up any goodwill that is secured by the mark “Park ’N Fly.” In fact, without a showing of secondary meaning, we should presume *214that petitioner’s business appears to the consuming public to be just another anonymous, indistinguishable parking lot. When enacting the Lanham Act, Congress also wanted to “protect the public from imposition by the use of counterfeit and imitated marks and false trade descriptions.”18 Upon this record there appears no danger of this occurrence, and as a practical matter, without any showing that the public can specifically identify petitioner’s service, it seems difficult to believe that anyone would imitate petitioner’s marks, or that such imitation, even if it occurred, would be likely to confuse anybody.19

On the basis of the record in this case, it is reasonable to infer that the operators of parking lots in the vicinity of airports may make use of the words “park and fly” simply because those words provide a ready description of their businesses, rather than because of any desire to exploit petitioner’s goodwill.20 There is a well-recognized public interest in prohibiting the commercial monopolization of *215phrases such as “park and fly.” When a business claims the exclusive right to use words or phrases that are a part of our common vocabulary, this Court should not depart from the statutorily mandated authority to “rectify the register,” 15 U. S. C. §1119, absent a clear congressional mandate. Language, even in a commercial context, properly belongs to the public unless Congress instructs otherwise.21 In this case we have no such instruction; in fact, the opposite command guides our actions: Congress’ clear insistence that a merely descriptive mark, such as “Park ’N Fly” in the context of airport parking, remain in the public domain unless secondary meaning is proved.

The basic purposes of the Act, the unambiguous congressional command that no merely descriptive mark should be registered without prior proof that it acquired secondary meaning, and the broad power of judicial review granted by § 37 combine to persuade me that the registrant of a merely descriptive mark should not be granted an injunction against *216infringement without ever proving that the mark acquired secondary meaning.

II

The Court relies on three different, though not unrelated, arguments to support its negative answer to the question “whether an action to enjoin the infringement of an incontestable mark may be defended on the grounds that the mark is merely descriptive,” ante, at 191: (1) the language of § 33(b) is too plain to prevent any other conclusion; (2) the legislative history indicates that Congress decided not to deny incontestable status to merely descriptive marks; and (3) the practical value of incontestable status would be nullified if the defense were recognized. Each of these arguments is unpersuasive.

The Plain Language

After the right to use a registered mark has become incontestable, § 33(b) provides that “the registration shall be conclusive evidence of the registrant’s exclusive right to use the registered mark.” 15 U. S. C. § 1115(b). Read in isolation, this provision surely does lend support to the Court’s holding. Indeed, an isolated and literal reading of this language would seem to foreclose any nonstatutory defense to an action to enjoin the infringement of an incontestable mark. The Court, however, wisely refuses to adopt any such rigid interpretation of § 33(b).22

*217An examination of other provisions of the Act plainly demonstrates that no right to injunctive relief against infringement automatically follows from the achievement of incontestable status. Thus, §34 states that courts with proper jurisdiction “shall have power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable.” 15 U. S. C. § 1116. If a registrant establishes the violation of any right, § 35 additionally emphasizes that any recovery shall be “subject to the principles of equity.” 15 U. S. C. § 1117. These sections are in addition to the broad power that § 37 grants to courts in “any action involving a registered mark” to “determine the right to registration, order the cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action.” 15 U. S. C. § 1119. Moreover, it is well established that injunctions do not issue as a matter of course,23 and that “the essence of equity jurisdiction has been the power of the Chancellor to do equity,”24 particularly when an important public interest is involved.25

*218In exercising its broad power to do equity, the federal courts certainly can take into account the tension between the apparent meaning of § 33(b) and the plain command in §§ 2(e), (f) of the Act prohibiting the registration of a merely descriptive mark without any proof of secondary meaning. Because it would be “demonstrably at odds with the intent of [Congress]”26 to grant incontestable status to a mark that was not eligible for registration in the first place, the Court is surely authorized to require compliance with § 2(f) before granting relief on the basis of § 33(b).27

The Legislative History

The language of §§ 2(e), (f) expressly demonstrates Congress’ concern over granting monopoly privileges in merely descriptive marks. However, its failure to include mere descriptiveness in its laundry list of grounds on which incontestability could be challenged is interpreted by the Court today as evidence of congressional approval of incontestable status for all merely descriptive marks.

This history is unpersuasive because it is perfectly clear that the failure to include mere descriptiveness among the grounds for challenging incontestability was based on the understanding that such a mark would not be registered without a showing of secondary meaning. See supra, at 210-211. To read Congress’ failure as equivalent to an endorsement of incontestable status for merely descriptive *219marks without secondary meaning can only be described as perverse.

The Practical Argument

The Court suggests that my reading of the Act “effectively emasculates § 33(b) under the circumstances of this case.” Ante, at 197. But my reading would simply require the owner of a merely descriptive mark to prove secondary meaning before obtaining any benefit from incontestability. If a mark is in fact “distinctive of the applicant’s goods in commerce” as § 2(f) requires, that burden should not be onerous. If the mark does not have any such secondary meaning, the burden of course could not be met. But if that be the case, the purposes of the Act are served, not frustrated, by requiring adherence to the statutory procedure mandated by Congress.28

*220In sum, if petitioner had complied with § 2(f) at the time of its initial registration, or if it had been able to prove secondary meaning in this case, I would agree with the Court’s disposition. I cannot, however, subscribe to its conclusion that the holder of a mark which was registered in violation of an unambiguous statutory command “may rely on incontestability to enjoin infringement.” Ante, at 205; see also ante, at 196. Accordingly, I respectfully dissent.

Section 33(b) enumerates seven categories of defenses to an action to enforce an incontestable mark. See 15 U. S. C. § 1115(b), quoted ante, at 194, n. 3. In addition, a defendant is free to argue that a mark should never have become incontestable for any of the four reasons enumerated in § 15. 15 U. S. C. § 1065. Moreover, § 15 expressly provides that an incontestable mark may be challenged on any of the grounds set forth in subsections (c) and (e) of § 14, 15 U. S. C. § 1064, and those sections, in turn, incorporate the objections to registrability that are defined in §§ 2(a), 2(b), and 2(c) of the Act. 15 U. S. C. §§ 1052(a), (b), and (c).

Section 37, in pertinent part, provides:

“In any action involving a registered mark the court may determine the right to registration, order the cancelation of registrations in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action.” 15 U. S. C. §1119.

In the Court of Appeals petitioner argued that its mark was suggestive with respect to airport parking lots. The Court of Appeals responded: “We are unpersuaded. Given the clarity of its first word, Park 'N Fly's mark seen in context can be understood readily by consumers as an offering of airport parking — imagination, thought, or perception is not needed. Simply understood, ‘park and fly’ is a clear and concise description of a characteristic or ingredient of the service offered — the customer parks his car and flies from the airport. We conclude that Park ’N Fly’s mark used in the context of airport parking is, at best, a merely descriptive mark.” 718 F. 2d 327, 331 (CA9 1983).

Although the Court appears to speculate that even though the mark is now merely descriptive it might not have been merely descriptive in 1971 *207when it was first registered, see ante, at 198-199, n. 5,1 find such speculation totally unpersuasive. But even if the Court’s speculation were valid, the entire rationale of its opinion is based on the assumption that the mark is in the “merely descriptive” category. See, for example, the statement of the question presented, ante, at 191.

S. Rep. No. 1333, 79th Cong., 2d Sess., 5 (1946).

See S. Rep. No. 1333, 79th Cong., 2d Sess. (1946); H. R. Conf. Rep. No. 2322, 79th Cong., 2d Sess. (1946).

Hearing on H. R. 102, H. R. 5461, and S. 895 before the Subcommittee on Trade-Marks of the House Committee on Patents, 77th Cong., 1st Sess., 48 (1941) (statement of Charles Kramer, Chairman, House Committee on Patents); id., at 51, 193-194.

Hearings on H. R. 82 before the Subcommittee of the Senate Committee on Patents, 78th Cong., 2d Sess., 21 (1944) (statements of Rep. Lanham); id., at 21,112 (testimony of Daphne Robert, ABA Committee on Trade Mark Legislation); Hearings on H. R. 102, H. R. 5461, and S. 895, supra, at 73 (statements of Rep. Lanham).

This distinction is not new. In 1875 and 1883 Great Britain enacted statutes which provided, in essence, that registration was conclusive evidence of the registrant’s right to the exclusive use of the mark after the expiration of five years following registration. See An Act to Establish a Register of Trade Marks, 38 & 39 Viet., ch. 91, § 3 (1875); An Act to Amend and Consolidate the Law Relating to Patents for Inventions, Registration of Designs, and of Trade Marks,. 46 & 47 Viet., ch. 57, § 76 (1883). Those statutes did not use the word “incontestable,” but in other respects there is a striking similarity between the language of those Acts and the relevant provision of the Lanham Act that we construe today. It is noteworthy that the English judges refused to give the statutory language its plain meaning if a showing was made that the mark had not been properly registered in the beginning. See Edwards v. Dennis, 30 Ch. D. 454 (1885); Jackson & Co. v. Napper (Re Schmidt’s Trade-Mark), 4 Rep. Pat. Cas. 45 (1886); cf. In re J. B. Palmer’s Trade-Mark, 24 Ch. D. 504 (1883).

Although its conclusion regarding secondary meaning was contained in an alternative holding, it seems clear that the distinctiveness of the mark heavily influenced the Court of Appeals’ disposition regarding incontestability. The court wrote:

“[W]e find it difficult to believe that anyone living in our society, which has daily familiarity with hundreds of battery-operated products, can be other than thoroughly acquainted with the EVEREADY mark. While perhaps not many know that Carbide is the manufacturer of EVEREADY products, few would have any doubt that the term was being utilized other than to indicate the single, though anonymous, source. A court should not play the ostrich with regard to such general public knowledge.” 531 F. 2d, at 381.

As I have already noted, § 2(e), 15 U. S. C. § 1052(e), expressly prohibits the registration of a merely descriptive mark. The exception from that prohibition, which petitioner did not satisfy in processing its application, reads as follows:

“Except as expressly excluded in paragraphs (a), (b), (c), and (d) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Commissioner may accept as prima facie evidence that the mark has become distinctive, as applied to the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years next preceding the date of the filing of the application for its registration." 15 U. S. C. § 1052(f) (emphasis added).

Hearings on H. R. 102, H. R. 5461, and S. 895 before the Subcommittee on Trade-Marks of the House Committee on Patents, supra n. 6, at 113. Dr. Pohl appeared in the hearings on behalf of the New York Merchants’ Association Trade-mark Committee and was a member of the Coordination Committee. Id., at 136.

Recently, Gerald J. Mossinghoff, Assistant Secretary and Commissioner of Patents and Trademarks, gave the following testimony before Congress:

“[0]ne of the biggest problems we have had is that, at any one time, about 7 percent of our 25 million documents are either missing or misfiled. The paper system was set up in 1836 and has remained virtually unchanged since then. During that time it simply has deteriorated to the point where 7 percent of the documents are missing.” Hearing before the Subcommittee on Patents, Copyrights and Trademarks of the Senate Committee on the Judiciary, 98th Cong., 1st Sess., 5 (1983).

One treatise gives the following “advice” regarding registration:

“Registration on the Principal Register should be attempted if it is at all possible. As a matter of strategy, an applicant should not in the application concede that the term falls within any of the statutory bars of § 2(e) which require proof of secondary meaning under §2(f). The applicant should let the Trademark Examiner prove that the term falls within one of the categories of § 2(e). Since an ex parte application is like a contested proceeding between the applicant and the Federal Government, the applicant can merely await the Examiner’s response and possible contention that the mark requires proof of secondary meaning. If the Examiner never makes this contention, or if the applicant convinces the Examiner or Trademark Board that the mark does not fall within § 2(e), then the whole problem of § 2(f) proof of secondary meaning is avoided. If the Examiner is adamant in his or her argument that the mark falls within a § 2(e) category, then the applicant has several choices: He may appeal the determination: he may agree to have the mark registered on the Supplemental Register; or he may submit proof under § 2(f) of secondary meaning. If the applicant qualifies for registration on the Supplemental Register, he *213may thereafter apply to register the mark on the Principal Register, and perhaps rely on the five-year presumption on secondary meaning. After the examiner’s initial response that the mark is barred by a § 2(e) ground, as being not inherently distinctive, there is no doubt that applicant may respond in the alternative. That is, applicant may argue that (1) the mark is inherently distinctive (e. g., is not ‘merely descriptive’) and/or (2) that even if barred by a § 2(e) ground as not inherently distinctive, the mark has become distinctive through the acquisition of secondary meaning. The point is that the applicant’s attorney should not concede any more weakness in the mark than is absolutely necessary. The object is to get the mark on the Principal Register as soon as possible, one way or another.” 1 J. McCarthy, Trademarks and Unfair Competition § 19:7 (1984) (emphasis added).

United States v. Erika, 456 U. S. 201, 208 (1982); Dunlop v. Bachowski, 421 U. S. 560, 567 (1975); Johnson v. Robison, 415 U. S. 361, 373-374 (1974); Barlow v. Collins, 397 U. S. 159, 166 (1970); Abbott Laboratories v. Gardner, 387 U. S. 136, 140-141 (1967).

§37, 15 U. S. C. §1119.

Cf. Stafford v. Briggs, 444 U. S. 527, 536 (1980) (the Court should look to the statutory language, and the objects and policy of the law, so that the Court’s construction of the statute will execute Congress’ true intent).

S. Rep. No. 1333, supra n. 4, at 5.

Ibid.

Respondent did raise the issue of “no likelihood of confusion justifying an injunction insofar as [petitioner] has no present intention of expanding into the Pacific Northwest.” Because of its disposition, the Court of Appeals did not reach this issue. 718 F. 2d, at 331-332, n. 4.

The Patent and Trademark Office’s own handbook explains this point in general terms:

“Matter which merely describes the goods or services to which it is applied is prohibited from being registered on the Principal Register. First, to permit one person to appropriate exclusively a mark which is merely the ordinary language to describe the goods or services involved would obviously be detrimental to others who deal in the same goods or services by hindering their use of normal language in association with their goods or services. Second, there would be no assurance that a mark which merely describes would in fact be a mark indicating origin, since the purchasing public would be likely to recognize only the descriptive meaning of the matter as it would be to accord to it any significance as indicating a single source of origin of the goods or services.” U. S. Department of Commerce, Patent and Trademark Office, Trademark Manual of Examining Procedure 144 (1983).

See Otto Roth & Co. v. Universal Foods Corp., 640 F. 2d 1317, 1320 (CCPA 1981)(recognizing the importance of the “free use of the language” in the trademark context); Bada Co. v. Montgomery Ward & Co., 426 F. 2d 8, 11 (CA9) (“[0]ne competitor will not be permitted to impoverish the language of commerce by preventing his fellows from fairly describing their own goods”), cert. denied, 400 U. S. 916 (1970). Additionally, before the Lanham Act was enacted, this Court, in Canal Co. v. Clark, 13 Wall. 311, 323-324 (1872), wrote words that are still applicable today:

“ ‘[T]he owner of an original trade-mark has an undoubted right to be protected in the exclusive use of all the marks, forms, or symbols, that were appropriated as designating the true origin or ownership of the article or fabric to which they were affixed; but he has no right to the exclusive use of any words, letters, figures, or symbols, which have no relation to the origin or ownership of the goods, but are only meant to indicate their name or quality. He has no right to appropriate a sign or symbol which, from the nature of the fact it is used to signify, others may employ with equal truth, and therefore have an equal right to employ for the same purpose.’” (Quoting Amoskeag Manufacturing Co. v. Spear, 2 Sand. 599, 606-607 (N. Y. Super. 1849).)

The Court emphasizes that it does not address whether traditional equitable defenses are available in an action to enforce an incontestable mark. Ante, at 203, n. 7. Thus, the Court chooses not to rule oh whether the language of § 33(b) can be ignored when a defense such as laches or estoppel is asserted. Several courts have indicated that such defenses are allowed. See, e. g., Prudential Ins. Co. v. Gibraltar Financial Corp., 694 F. 2d 1150, 1153 (CA9 1982), cert. denied, 463 U. S. 1208 (1983); Cuban Cigar Brands N. V. v. Upmann International, Inc., 457 F. Supp. 1090, 1092, n. 5 (SDNY 1978), aff’d without opinion, 607 F. 2d 995 (CA2 1979); Carl Zeiss Stiftung v. V. E. B. Carl Zeiss, Jena, 298 F. Supp. 1309 (SDNY 1969), modified, 433 F. 2d 686 (CA2 1970), cert. denied, 403 U. S. 905 (1971); Haviland & Co. v. Johann Haviland China Corp., 269 *217F. Supp. 928, 955 (SDNY 1967). Several commentators have also written on the subject. 2 J. McCarthy, Trademarks and Unfair Competition 761 (1984). One early article noted:

“The fact that Section 33(b) limits the defenses against an incontestable mark to seven specific issues is possibly not conclusive. It is difficult to imagine an equity court granting injunctive relief to a registrant who comes into court with unclean hands, even though the defendant is unable to estabish one of the seven specific defenses listed in Section 33(b). Other equitable doctrines such as laches and estopppel would probably also preclude injunction and damages in the case of an incontestable mark. However, there is always the possibility that the courts might give the Act a strict and technical construction, precluding any defense except those specifically enumerated.” Diggins, The Lanham Trade-Mark Act, 35 Geo. L. J. 147, 195 (1947).

Weinberger v. Romero-Barcelo, 456 U. S. 305, 311 (1982).

Hecht Co. v. Bowles, 321 U. S. 321, 329 (1944).

Porter v. Warner Holding Co., 328 U. S. 395, 400 (1946); Morton Salt Co. v. G. S. Suppiger Co., 314 U. S. 488, 492 (1942) (“[C]ourts of equity may appropriately withhold their aid where the plaintiff is using the right *218asserted contrary to the public interest”); Virginian R. Co. v. Railway Employees, 300 U. S. 515, 552 (1937).

Griffin v. Oceanic Contractors, Inc., 458 U. S. 564, 571 (1982); see also Garcia v. United States, ante, at 80 (Stevens, J., dissenting).

Fidelity Federal Savings & Loan Assn. v. De la Cuesta, 458 U. S. 141, 163 (1982) (all parts of a statute should be given effect if possible); American Textile Manufacturers Institute, Inc. v. Donovan, 452 U. S. 490, 513 (1981) (same); Reiter v. Sonotone Corp., 442 U. S. 330, 339 (1979) (“In construing a statute we are obliged to give effect, if possible, to every word that Congress used”).

Moreover, even if the owner of a registered mark may not enjoin infringement, it is not true that the registration has become “meaningless.” See ante, at 196. A registration may be used to prevent the importation of goods bearing infringing marks into this country. See 15 U. S. C. § 1124, 19 U. S. C. § 1526, and 19 U. S. C. § 1337(a). Additionally, registration in this country is a prerequisite to registration in some foreign countries. A. Seidel, What the General Practitioner Should Know About Trademarks and Copyrights 26 (4th ed. 1979); E. Vandenburgh, Trademark Law and Procedure 58 (2d ed. 1968). Further, the United States Court of Customs and Patent Appeals, in an opinion recognizing that Congress had expressed its desire that scandalous matter not be registered, wrote the following regarding the benefits of registration:

“Once a registration is granted, the responsibilities of the government with respect to a mark are not ended. The benefits of registration, in part with government assistance, include public notice of the mark in an official government publication and in official records which are distributed throughout the world, maintenance of permanent public records concerning the mark, availability of Customs Service for blocking importation of infringing goods, access to federal courts where there is a presumption of validity of the registration . . . , notices to the registrant concerning maintenance of the registration, and, to some extent, direct government protection of the mark in that the PTO searches its records and refuses registration *220to others of conflicting marks. Apart from nominal fees, these costs are underwritten by public funds.” In re Robert L. McGinley, 660 F. 2d 481, 486 (1981).