Case:
KP Permanent Make Up, Inc. v. Lasting Impression I, Inc.
543 U.S. 111 (2004)
Facts of the case:
This case is about two permanent make up companies that both use the term “Micro Colors†either as one word or two. KP Permanent Make Up (KP) has used the term since 1990 or 1991. Then in 1992, Lasting Impression I (Lasting) registered a trademark under 15 U.S.C. § 1051, consisting of the terms “micro†and “colors,†and then in 1999, the registration became incontestable as defined in 15 U.S.C. § 1065. Lasting demanded that KP stop using the word “microcolor.†Because of these demands, KP sued Lasting for declaratory relief.
Procedural Posture:
After KP sued for declaratory relief, Lasting counterclaimed alleging that KP had infringed Lasting’s trademark. KP responded to this allegation by asserting the affirmative defense of fair use under 15 U.S.C. § 1115(b)(4). Because Lasting agreed that KP only used the term “microcolor†to describe its goods, not as a trademark, the District Court found that KP was acting fairly and in good faith as is required under § 1115(b)(4) because KP had undisputedly used the mark continuously since before Lasting used the mark. The District Court found that KP had proved its affirmative defense and, without deciding on whether KP’s practice was likely to cause consumer confusion, entered summary judgment for KP under Lasting’s trademark infringement case. The Ninth Circuit reversed the District Court’s ruling stating that the Court erred in finding an affirmative defense without examining the issue of whether there was consumer confusion about the origin of KP’s goods. The Ninth Circuit appears to have placed the burden of proof on KP to show the absence of such consumer confusion when arguing its affirmative defense. This case was granted certiorari and was then heard before the Supreme Court of the United States.
Holding:
“A party raising the statutory affirmative defense of fair use to a claim of trademark infringement does not have a burden to negate any likelihood that the practice complained of will confuse consumers about the origin of the goods or services affected.†The Supreme Court found (1) that § 1115(b) places a burden of proving likelihood of confusion on the party charging infringement, and (2) that Congress said nothing about the likelihood of confusion when establishing the elements of the fair use defense under § 1115(b)(4). The Supreme Court also found that Congress not mentioning anything about a defendant's burden on this fair use defense was almost certainly not an oversight, since the House Trademarks Subcommittee refused to forward a proposal expressly providing likelihood to deceive the public as an element of the fair use defense.
Critical Analysis:
This case confirms the notion that a defendant does not have to disprove the likelihood of confusion to win its affirmative defense case. In cases such as these, the burden is on the plaintiff to prove consumer confusion, not on the defendant to prove that the plaintiff cannot succeed in proving some element (like confusion). The only job of the defendant is to leave the factfinder unpersuaded that the plaintiff has carried its own burden on that point.
KP Permanent Make Up, Inc. v. Lasting Impression I, Inc.
543 U.S. 111 (2004)
Facts of the case:
This case is about two permanent make up companies that both use the term “Micro Colors†either as one word or two. KP Permanent Make Up (KP) has used the term since 1990 or 1991. Then in 1992, Lasting Impression I (Lasting) registered a trademark under 15 U.S.C. § 1051, consisting of the terms “micro†and “colors,†and then in 1999, the registration became incontestable as defined in 15 U.S.C. § 1065. Lasting demanded that KP stop using the word “microcolor.†Because of these demands, KP sued Lasting for declaratory relief.
Procedural Posture:
After KP sued for declaratory relief, Lasting counterclaimed alleging that KP had infringed Lasting’s trademark. KP responded to this allegation by asserting the affirmative defense of fair use under 15 U.S.C. § 1115(b)(4). Because Lasting agreed that KP only used the term “microcolor†to describe its goods, not as a trademark, the District Court found that KP was acting fairly and in good faith as is required under § 1115(b)(4) because KP had undisputedly used the mark continuously since before Lasting used the mark. The District Court found that KP had proved its affirmative defense and, without deciding on whether KP’s practice was likely to cause consumer confusion, entered summary judgment for KP under Lasting’s trademark infringement case. The Ninth Circuit reversed the District Court’s ruling stating that the Court erred in finding an affirmative defense without examining the issue of whether there was consumer confusion about the origin of KP’s goods. The Ninth Circuit appears to have placed the burden of proof on KP to show the absence of such consumer confusion when arguing its affirmative defense. This case was granted certiorari and was then heard before the Supreme Court of the United States.
Holding:
“A party raising the statutory affirmative defense of fair use to a claim of trademark infringement does not have a burden to negate any likelihood that the practice complained of will confuse consumers about the origin of the goods or services affected.†The Supreme Court found (1) that § 1115(b) places a burden of proving likelihood of confusion on the party charging infringement, and (2) that Congress said nothing about the likelihood of confusion when establishing the elements of the fair use defense under § 1115(b)(4). The Supreme Court also found that Congress not mentioning anything about a defendant's burden on this fair use defense was almost certainly not an oversight, since the House Trademarks Subcommittee refused to forward a proposal expressly providing likelihood to deceive the public as an element of the fair use defense.
Critical Analysis:
This case confirms the notion that a defendant does not have to disprove the likelihood of confusion to win its affirmative defense case. In cases such as these, the burden is on the plaintiff to prove consumer confusion, not on the defendant to prove that the plaintiff cannot succeed in proving some element (like confusion). The only job of the defendant is to leave the factfinder unpersuaded that the plaintiff has carried its own burden on that point.