U.S. Court of Appeal Rules in Generic Trade-mark Dispute

The U.S. Court of Appeals (9th Circuit) recently ruled on whether the trade-mark "MICRO COLORS" is generic when used in association with permanent makeup color pigments. Lasting Impression I, Inc. ("Lasting") owns a U.S. incontestable trade-mark registration for MICRO COLORS in a design form for color pigments. K.P. Permanent Make-up, Inc. ("K.P.") also uses the term "micro colors" on its pigment bottles. K.P. sued Lasting, seeking a declaration that Lasting did not have the right to use the term "micro colors" and that the term was generic and incapable of receiving trade-mark protection. Lasting counterclaimed, alleging that K.P.'s use of the term "micro color" infringed Lasting's registered mark. The District Court agreed with K.P. and granted it summary judgment. It held that the term "micro color" is generic, and if not generic, descriptive. It also held that K.P.'s use was protected under the "fair use" doctrine. On appeal, the Court reversed the summary judgment for K.P. Instead, the Court of Appeal granted Lasting summary judgment on the generic issue. It held that a reasonably minded jury could not conclude from the evidence that "micro colors" is a generic term. The Court of Appeal also held that Lasting's incontestable registration is conclusive evidence that the overall mark is non-descriptive or has acquired secondary meaning, and there is no need to require a showing of secondary meaning in the term "micro colors" apart from the mark. Finally, the Court of Appeal remanded the case back to the District Court for further proceedings with respect to the "fair use" defense issue. For there to be "fair use", K.P. must show that there was no likelihood of confusion between its use of the term "micro color" and Lasting's mark. In this case, the Court of Appeal concluded that genuine issues of fact existed with respect to the likelihood of confusion, which could not be decided by summary judgment. For a copy of the decision, please visit: http://makeashorterlink.com/?Y35E21864 Summary by: Hung Nguyen