IP News

On Dec. 8, 2004, the Supreme Court held that it is not a defendant's burden to negate a finding of consumer confusion when raising a “fair use” affirmative defense. In KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., No. 03-409, 2004 WL 2804921 (2004), the Court vacated a decision of the Ninth Circuit, which held that the Central District of California committed error when it concluded that KP had made out a fair use defense without addressing whether there was possible consumer confusion. The Ninth Circuit's ruling established a conflict with a Second Circuit decision, setting the stage for Supreme Court review.

In KP Permanent Make-Up, the dispute arose when Lasting sued KP, a rival make-up manufacturer, over use of the word “MICROCOLOR.” Lasting owns a federal registration for a stylized version of the words “MICRO COLORS” that became incontestable in 1999. The District Court granted summary judgment to KP on its fair use defense, finding that Lasting had conceded that KP used the term descriptively. The District Court also found that KP acted in good faith and employed the term “MICROCOLOR” before Lasting adopted the two-word version as a mark.