In a decision late last year, the Supreme Court vacated and remanded this trademark case to the Ninth Circuit, holding that an accused infringer should not be required to prove "no customer confusion" in order to establish a fair use defense. The Ninth Circuit has now held the district court’s grant of summary judgment to be improper under the standard articulated by the Supreme Court. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., Case No. 01-56055 (Fed. Cir. May 19, 2005) (Hug, J.).
K.P. Permanent used the term "micro colors" on packaging and brochures for its permanent make-up products. Lasting Impression is the owner of a registered trademark for a logo including the term "micro colors" for use on the same types of products. When Lasting Impression demanded that K.P. stop using the term "micro colors," K.P. sued for a declaratory judgment that the "micro colors" mark was generic, and its use of the words was a fair one. Lasting counterclaimed, alleging infringement.
On cross motions for summary judgment, the district court held that the words "micro colors" were generic and incapable of trademark protection or, in the alternative, descriptive and protectable only upon a showing of secondary meaning (which it found lacking in this case). Accordingly, the district court granted summary judgment in K.P.’s favor.
The Ninth Circuit reversed, holding that K.P. had failed to show its use would not give rise to actual confusion. The Supreme Court, however, vacated and remanded, holding the Ninth Circuit improperly placed upon the accused infringer the burden of showing "no customer confusion" in order to make out a fair use defense.
In looking afresh at whether "micro colors" was protectable, the Ninth Circuit (applying the reasoning of the Supreme Court’s earlier Park ‘N Fly and Shakespeare Co. cases) held that, as the "most salient feature of [an incontestable] mark," "micro colors" was presumed to have acquired secondary meaning. Therefore, the words were protectable as a trademark, and Lasting Impression’s mark is valid. The Court also held that K.P. had not sustained its burden of proving the mark was generic.
With regard to fair use, the Ninth Circuit remanded for the district court to apply the reasoning of the Supreme Court and determine whether a likelihood of confusion exists and whether K.P.’s use of the mark was a fair one.
Practice Note: The Supreme Court in this case held that, even where some confusion exists, fair use can still be raised as a successful defense. Where the mark at issue is descriptive, the owner of the mark must accept the risk that others will make a fair use of the descriptive mark. As such, use of a descriptive mark by another to accurately describe its goods may be considered fair, even though confusion may result. In light of these recent developments, therefore, someone choosing a mark should not underestimate the challenges of enforcing a mark which may be deemed descriptive.
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