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Keywords

plaintiffdefendantburden of proofwilltrademarkgood faith

defendantappeal

Related Cases

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 125 S.Ct. 542, 160 L.Ed.2d 440, 73 USLW 4029, 72 U.S.P.Q.2d 1833, 04 Cal. Daily Op. Serv. 10,722, 2004 Daily Journal D.A.R. 14,540, 18 Fla. L. Weekly Fed. S 28

Facts

KP Permanent Make-Up, Inc. and Lasting Impression I, Inc. both market permanent cosmetic makeup and have used the term 'micro color' in their products. KP claims to have used the term since the early 1990s, while Lasting registered the trademark 'Micro Colors' in 1992. When Lasting demanded KP cease using the term, KP filed for declaratory relief, and Lasting counterclaimed for trademark infringement. The District Court initially ruled in favor of KP, asserting fair use, but the Ninth Circuit reversed, stating that the fair use defense could not be evaluated without considering potential consumer confusion.

Each party to this case sells permanent makeup, a mixture of pigment and liquid for injection under the skin to camouflage injuries and modify nature's dispensations, and each has used some version of the term 'micro color' (as one word or two, singular or plural) in marketing and selling its product.

Issue

Does a party asserting the statutory affirmative defense of fair use to a claim of trademark infringement have a burden to negate any likelihood that the practice complained of will confuse consumers about the origin of the goods or services affected?

Rule

Under the Lanham Act, a party raising the affirmative defense of fair use does not have the burden to prove that their use of a term is unlikely to cause consumer confusion. Instead, the burden of proving likelihood of confusion rests with the plaintiff, who must show that the defendant's actual practice is likely to produce confusion regarding the origin of the goods or services.

Analysis

The Court determined that the Ninth Circuit erred by placing the burden of proof regarding consumer confusion on KP. The statutory language of the Lanham Act indicates that the burden lies with the plaintiff to demonstrate confusion. The Court emphasized that some degree of consumer confusion is permissible under the fair use defense, as the purpose of the defense is to allow descriptive use of terms without imposing an undue burden on the defendant to negate confusion.

Conclusion

The Supreme Court vacated the Ninth Circuit's judgment and remanded the case, clarifying that a fair use defense does not require the defendant to prove the absence of consumer confusion.

Because we read the Court of Appeals as requiring KP to shoulder a burden on the issue of confusion, we vacate the judgment and remand the case for further proceedings consistent with this opinion.

Who won?

The Supreme Court ruled in favor of KP Permanent Make-Up, Inc., stating that the fair use defense does not impose a burden on the defendant to negate the likelihood of consumer confusion. This decision underscores the importance of allowing descriptive terms to be used in commerce without the risk of infringing on trademark rights, provided the use is fair and in good faith.

The Supreme Court ruled in favor of KP Permanent Make-Up, Inc., stating that the fair use defense does not impose a burden on the defendant to negate the likelihood of consumer confusion.

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