United States: U.S. Supreme Court Resolves Confusion Over Trademark Fair Use Doctrine

On December 8, 2004, the U.S. Supreme Court issued a slip opinion which resolves a dispute among the U.S. Circuit Courts of Appeals regarding the trademark fair use doctrine. While a majority of the circuits have held that fair use is an absolute defense in trademark infringement cases, in April 2003, the Ninth Circuit rendered a decision which appeared to hold that the party asserting the fair use defense is required to demonstrate an absence of likelihood of confusion.

In KP Permanent Make-Up v. Lasting Impression I, Inc, the Court overruled the Ninth Circuit and, in a unanimous decision, held that a party raising the statutory affirmative defense of fair use to a claim of trademark infringement is not required to show that confusion among consumers is unlikely. Although the Court determined that the burden of proving likelihood of confusion rests with the plaintiff, the Court recognized (contrary to the Ninth Circuit’s view) that some possibility of consumer confusion is compatible with fair use.

The facts of this dispute involved the use of the term "micro color" by two companies that use the term in connection with permanent make up products. Lasting Impression owns an incontestable federally registered trademark that includes the term "Micro Colors." KP does not have a federally registered trademark. KP brought an action for declaratory relief and Lasting Impression counterclaimed, alleging among other things, that KP’s use of the term "micro color" infringes its federally registered trademark. In response, KP asserted the statutory affirmative defense of fair use.

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