KP Permanent Make-Up Inc. v. Lasting Impression I Inc.
543 U.S., 72 USPQ2d 1833 (Sup. Ct. 2004)
Facts
The Supreme Court resolved a split among the circuits regarding the affirmative defense of fair use to a claim of trademark infringement. In a unanimous (9-0) decision, the Court held that a party asserting the fair use defense does not bear the burden of proving that there is no likelihood of confusion. KP and Lasting each sell makeup, and has used the term "micro color" in marketing its product. Lasting owns an incontestable registration to the term and demanded that KP stop using it. KP asserted the affirmative defense of fair use, saying that it used the term to describe its goods and not as a mark.
Rules and Analysis
The Court stated that the holder of a registered mark (incontestable or not) has a civil action against anyone employing an imitation of it in commerce when such use is likely to cause confusion, cause mistake, or deceive. The plaintiff's success requires a showing of likelihood of confusion in minds of consumers about the origin of the goods or services. The trademark statute at 15 U.S.C. § 1115(b) places a burden of proving likelihood of confusion on the plaintiff, even when relying on an incontestable registration. Congress said nothing about likelihood of confusion in setting out the elements of the fair use defense in § 1115 (b)(4).
Further, some possibility of consumer confusion must be compatible with fair use. The Lanham Act was not meant to deprive commercial speakers of the ordinary utility of descriptive words. "If any confusion results, that is a risk the plaintiff accepted when it decided to identify its product with a mark that uses a well known descriptive phrase." Registrants get an exclusive right not in the original, descriptive sense of descriptive terms, but only in the secondary one associated with the markholder's goods.
A plaintiff claiming infringement of an incontestable mark must show likelihood of confusion as part of the prima facie case (§1115(b)), while the defendant has no independent burden to negate the likelihood of confusion in raising the affirmative defense that a term is used descriptively, not as a mark, fairly, and in good faith (§ 1115(b)(4)). A defendant need prove only that the use of the owner's mark was in good faith to describe, rather than to identify source. The defendant does not need to prove that consumers were not confused by the use.