US Law on Trade-mark "Fair Use" Settled by Supreme Court

It is settled trade-mark law in the US that a defendant can assert the affirmative defense of "fair use" to avoid liability in an infringement suit. Until recently, however, it was unsettled whether this defense was available if the contested use caused confusion with the owner's trade-mark. This issue was finally resolved by the US Supreme Court in the recent decision of KP Permanent Make-Up, Inc v Lasting Impression I, Inc. The Court held that use of a registered trade-mark by the defendant was permissible fair use, even if it might cause some consumer confusion. KP Permanent Make-Up Inc (KP) and Lasting Impression I, Inc (Lasting) were both manufacturers of "permanent" cosmetic makeup (i.e. a mixture of pigment and liquid for injection under the skin). KP had been using the term "microcolor" to describe its products since 1991. In 1992, Lasting registered the trade-mark MICRO COLORS. That registration became incontestable in 1999. Lasting sued KP for trade-mark infringement, claiming that its use of "microcolor" infringed Lasting's registered rights. KP argued that its use of "microcolor" was merely descriptive and, therefore, constituted "fair use". The trial court agreed with KP and granted summary judgment. On appeal to the US Court of Appeals for the Ninth Circuit, the trial court's decision was reversed. The appellate court held that KP's use could not qualify as "fair use" unless it could show no likelihood of confusion. On further appeal, the US Supreme Court reversed the Ninth Circuit's ruling and confirmed that, in a trade-mark infringement suit, the burden of proving likelihood of confusion always rests with the plaintiff. The defendant is not obliged to prove absence of confusion in order to take advantage of the fair use defense. A defendant's use of a trade-mark might be considered "fair", even if it is likely to cause confusion. The decision clarifies that in US trade-mark law some risk of confusion will be tolerated in the context of fair use. For the text of the decision, visit: http://makeashorterlink.com/?T1FD6573A. Summary by: Hung Nguyen