K.P. Permanent Makeup v. Lasting
K.P. Permanent Make-Up, Inc. (KP) and Lasting Impression I, Inc. (Lasting) are competing manufacturers of permanent makeup pigments. In 1993, Lasting registered the words “micro color” surrounded by a black rectangle as a design and word mark, Reg. No. 1,769,592. In 1999, KP began using the words “micro color” on its advertising brochures. Upon receiving a cease and desist letter from Lasting, KP brought an action for declaratory relief, asserting, among other things, that its use of “micro color” was protected by the fair use doctrine of the trademark statute. Lasting counterclaimed, asserting that KP’s use of “micro color” infringed upon Lasting’s trademark. The district court granted summary judgment in favor of KP. The court determined that KP’s use of “micro color” was protected by the fair use doctrine, and because its use was fair, declined to discuss likelihood of confusion.
The Ninth Circuit Court of Appeals reversed the district court’s grant of summary judgment for KP. The court determined that KP had raised a “classic,” as opposed to “nominal,” fair use defense because it had “used Lastings’s mark only to describe [its] own product.” When a “classic” fair use defense is raised, the party asserting the defense must also analyze the likelihood of confusion. Since the district court failed to discuss likelihood of confusion, the Ninth Circuit reversed the grant of summary judgment and remanded the case for further proceedings.
Question Presented:
Does the classic fair use defense to trademark infringement require the party asserting the defense to demonstrate an absence of likelihood of confusion, as is the rule in the Ninth Circuit, or is
Fair Use an absolute defense, irrespective of whether or not confusion may result, as is the rule in other Circuits?
