Brief Fact Summary. Two sellers of permanent make-up used the phrase â€œmicro colorâ€ in marketing materials.Â KP Permanent Make-Up, Inc. (Plaintiff) claimed it first used the phrase while Lasting Impression I, Inc. (Defendant) had an incontestable trademark for the phrase.Â Plaintiff sued Defendant in a declaratory judgment action and Defendant counterclaimed for trademark infringement.Â Plaintiff moved for summary judgment on the counterclaim.
Synopsis of Rule of Law. In a trademark infringement action, the plaintiff has the burden of proof to show that a fair-use defendant’s use of mark is likely to cause consumer confusion.
Secondary meaning provides the mark holder an exclusive right not in the original, descriptive sense, but only in the secondary one associated with the mark holder's goods.View Full Point of Law
Issue. In a trademark infringement action, does the plaintiff have the burden of proof to show that a fair-use defendant’s use of mark is likely to cause consumer confusion?
Held. (Souter, J.)Â Yes.Â In a trademark infringement action, the plaintiff has the burden of proof to show that a fair-use defendant’s use of mark is likely to cause consumer confusion.Â The fair-use defendant does not have to demonstrate the opposite proposition, which is that confusion is unlikely.Â Some confusion is likely to occur simply because the mark is descriptive and that is a risk undertook by the registrar of the trademark.Â If the confusion leads to an objectively unfair use, the courts may then consider it infringement.Â Plaintiff does not have to bear the burden of proof in providing evidence that confusion is unlikely because it is the trademark infringement defendant.Â Vacated and remanded.
Discussion. As noted by the Supreme Court, the mere existence of a risk of confusion does not disprove a fair use defense and a plaintiff cannot rely on that alone to overcome the defense or meet its burden of proof to show likelihood of confusion.Â A defendant claiming fair use as its defense must affirmatively prove the elements of fair use separate from the plaintiff’s demonstration of likelihood of confusion.