IP News

Confusion Analysis in Fair Uses Cases Contested in Supreme Court

On Oct. 5, 2004, the Supreme Court heard arguments on the issue of whether an accused trademark infringer must demonstrate an absence of likelihood of confusion prior to asserting the defense of fair use or whether fair use is an absolute defense.

In KP Permanent Make-Up Inc. v. Lasting Impressions Inc., cert. granted 124 S. Ct. 981 (No. 03-409), both parties are competitors in the field of micropigmentation (also known as permanent makeup). Lasting owns a federal registration for the stylized formulation of the words “MICRO COLORS” and KP, who used “MICROCOLORS,” sued to have the mark declared generic. The district court held that the mark was generic and that KP's use was protected under the fair use doctrine. The Ninth Circuit reversed. See 328 F.3d 1061 (9th Cir. 2003). A full explanation of the facts and the holdings of the Ninth Circuit decision was presented in the April 2004 edition of the IP Strategist.

In its argument before the Supreme Court, KP argued that the good will element of fair use could be met even if there is confusion, as long as the user does not trade on the good will of another. KP faulted the Ninth Circuit's analysis because it only took into account the effect of the use, not the user's intent or whether the owner was at fault for using generic terms. Lasting argued that KP's position improperly collapsed “used fairly and in good faith” to one element, and that a term cannot be used fairly if the use causes a likelihood of confusion. Pointing to unfair competition common law, Lasting argued that confusing uses are not fair to consumers and go to the heart of the Lanham Act, which is to prevent consumer confusion as to the source of goods. Lasting also dismissed KP's free speech argument, stating that marks that become generic lose their registration. Five amicus curiae briefs supporting KP have been filed, including one from the U.S. government. The Society of Permanent Cosmetic Professionals filed a brief in support of Lasting.

Federal Circuit Holds a Species Is Adequate Written Description for a Genus

In Bilstad v. Wakalopus, 2004 U.S. App. LEXIS 20922 (Fed. Cir. 2004), the Federal Circuit considered whether claims for moving a surgical instrument in a “plurality of directions” had an adequate written description under 35 U.S.C. 112 paragraph 1, when the specification only described two or three methods of movement. Previously, using several dictionary definitions, the Board of Patent Appeals construed plurality to connote a range “bounded by two at the lower end and unbounded or infinite at the upper end.” Based on this construction, the Board held that the claim was not supported because the specification only described a small number of manipulations.

The Federal Circuit affirmed the Board's construction. However, the court vacated the Board's decision with respect to the written description rejection. The court held that disclosing a species in the specification would support a claim reciting a genus unless there was unpredictability in the art or if the disclosure specifically disclaimed portions of the genus. The Federal Circuit stated that the key to determining written disclosure was what would be reasonable conveyed to one skilled in the art at the time of the disclosure. Because the Board of Patent Appeals made no findings with respect to the unpredictability of the art or the knowledge of one skilled in the art, the case was remanded.

Confusion Analysis in Fair Uses Cases Contested in Supreme Court

On Oct. 5, 2004, the Supreme Court heard arguments on the issue of whether an accused trademark infringer must demonstrate an absence of likelihood of confusion prior to asserting the defense of fair use or whether fair use is an absolute defense.

In KP Permanent Make-Up Inc. v. Lasting Impressions Inc., cert. granted 124 S. Ct. 981 (No. 03-409), both parties are competitors in the field of micropigmentation (also known as permanent makeup). Lasting owns a federal registration for the stylized formulation of the words “MICRO COLORS” and KP, who used “MICROCOLORS,” sued to have the mark declared generic. The district court held that the mark was generic and that KP's use was protected under the fair use doctrine. The Ninth Circuit reversed. See 328 F.3d 1061 (9th Cir. 2003). A full explanation of the facts and the holdings of the Ninth Circuit decision was presented in the April 2004 edition of the IP Strategist.

In its argument before the Supreme Court, KP argued that the good will element of fair use could be met even if there is confusion, as long as the user does not trade on the good will of another. KP faulted the Ninth Circuit's analysis because it only took into account the effect of the use, not the user's intent or whether the owner was at fault for using generic terms. Lasting argued that KP's position improperly collapsed “used fairly and in good faith” to one element, and that a term cannot be used fairly if the use causes a likelihood of confusion. Pointing to unfair competition common law, Lasting argued that confusing uses are not fair to consumers and go to the heart of the Lanham Act, which is to prevent consumer confusion as to the source of goods. Lasting also dismissed KP's free speech argument, stating that marks that become generic lose their registration. Five amicus curiae briefs supporting KP have been filed, including one from the U.S. government. The Society of Permanent Cosmetic Professionals filed a brief in support of Lasting.

Federal Circuit Holds a Species Is Adequate Written Description for a Genus

In Bilstad v. Wakalopus, 2004 U.S. App. LEXIS 20922 (Fed. Cir. 2004), the Federal Circuit considered whether claims for moving a surgical instrument in a “plurality of directions” had an adequate written description under 35 U.S.C. 112 paragraph 1, when the specification only described two or three methods of movement. Previously, using several dictionary definitions, the Board of Patent Appeals construed plurality to connote a range “bounded by two at the lower end and unbounded or infinite at the upper end.” Based on this construction, the Board held that the claim was not supported because the specification only described a small number of manipulations.

The Federal Circuit affirmed the Board's construction. However, the court vacated the Board's decision with respect to the written description rejection. The court held that disclosing a species in the specification would support a claim reciting a genus unless there was unpredictability in the art or if the disclosure specifically disclaimed portions of the genus. The Federal Circuit stated that the key to determining written disclosure was what would be reasonable conveyed to one skilled in the art at the time of the disclosure. Because the Board of Patent Appeals made no findings with respect to the unpredictability of the art or the knowledge of one skilled in the art, the case was remanded.