KP Permanent Make-up, Inc. v. Lasting Impression I, Inc

Brief Fact Summary. Two sellers of permanent make-up used the phrase “micro color†in marketing materials.  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.  Plaintiff sued Defendant in a declaratory judgment action and Defendant counterclaimed for trademark infringement.  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.

Facts. KP Permanent Mark-Up, Inc. (Plaintiff), a seller of permanent makeup, uses the phrase “micro color†to market and sell its products.  Plaintiff claimed it first used “micro color.â€Â  After that first use date, Defendant applied for and obtained trademark registration of the phrase “micro colors.â€Â  That registration then became incontestable.  Plaintiff, after the date of incontestability, produced an advertising brochure using the phrase “micro color.â€Â  Plaintiff filed a declaratory judgment action against Defendant asking the court to declare no infringement existed.  Lasting counterclaimed for trademark infringement.  Plaintiff filed a motion for summary judgment on the counterclaim based on the “fair use†defense.  The tc granted Plaintiff’s motion and Defendant appealed.  The appellate court determined the trial court should have considered the likelihood of confusion and reversed the judgment.  Plaintiff petitioned for a writ of certiorari, which the United States Supreme Court granted on the issue of which party had the burden of proof to demonstrate likelihood of confusion.

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.)  Yes.  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.  The fair-use defendant does not have to demonstrate the opposite proposition, which is that confusion is unlikely.  Some confusion is likely to occur simply because the mark is descriptive and that is a risk undertook by the registrar of the trademark.  If the confusion leads to an objectively unfair use, the courts may then consider it infringement.  Plaintiff does not have to bear the burden of proof in providing evidence that confusion is unlikely because it is the trademark infringement defendant.  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.  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.