KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.: Difference between revisions

 

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The Supreme Court issued an opinion by Justice [[David Souter]] on December 8, 2004. The court sided with KP and reversed the Ninth Circuit.<ref name=”case“/>

The Supreme Court issued an opinion by Justice [[David Souter]] on December 8, 2004. The court sided with KP and reversed the Ninth Circuit.<ref name=””/>

The decision was unanimous aside from some footnotes. Justice [[Stephen Breyer]] declined to join footnote 6, and Justice [[Antonin Scalia]] declined to join footnotes 4 and 5. Footnote 5 was a citation sentence highlighting the quotation “Everybody has got a right to the use of the English language and has got a right to assume that nobody is going to take that English language away from him.”<ref name=”case”/>

The decision was unanimous aside from some footnotes. Justice [[Stephen Breyer]] declined to join footnote 6, and Justice [[Antonin Scalia]] declined to join footnotes 4 and 5. Footnote 5 was a citation sentence highlighting the quotation “Everybody has got a right to the use of the English language and has got a right to assume that nobody is going to take that English language away from him.”<ref name=”case”/>

2004 United States Supreme Court case

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.
Full case name	KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.
Citations	543 U.S. 111 (more)
The defendant in a trademark infringement action may raise a fair use defense without proving that there is no likelihood of confusing the marks.
Chief Justice William Rehnquist Associate Justices John P. Stevens · Sandra Day O’Connor Antonin Scalia · Anthony Kennedy David Souter · Clarence Thomas Ruth Bader Ginsburg · Stephen Breyer
Majority	Souter, joined by Rehnquist, Stevens, O’Connor, Kennedy, Thomas, Ginsburg; Scalia (not footnotes 4 and 5); Breyer (not footenote 6)

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004), was a United States Supreme Court case in which the court held that the defendant in a trademark infringement action may raise a fair use defense without proving that there is no likelihood of confusing the marks. The court’s interpretation of the Lanham Act puts the burden to show that a likelihood of confusion exists on the plaintiff as part of their prima facie case. The defendant, on the other hand, has no independent burden to prove that aspect of the allegations is untrue.^[1][2][3]

Trademark law confers upon proprietors a privilege to use a certain mark to identify their good or service in commerce. Someone else can infringe a trademark by using it to identify their own good or service in commerce without authorization.^[2] Although trademark privileges can exist without registering the mark with the United States Patent and Trademark Office (USPTO), doing so confers some legal rights that are otherwise unavailable.^[4] Section 32 of the Lanham Act states that those who use marks that are similar or identical to registered marks in such a way as “likely to cause confusion,… cause mistake, or to deceive… shall be liable in a civil action by the registrant….”^[5] Where the respective marks are not identical, similarity will generally be assessed by reference to whether there is a likelihood of confusion that consumers will believe the products or services originated from the trademark owner.^[6] A plaintiff must prove a likelihood of confusion exists before a court can find a defendant liable for copyright infringement.^[3]

However, a trademark can be composed of one or more words. Generally, the Free Speech Clause in the First Amendment to the United States Constitution prevents the government from creating laws that restrict free speech.^[2] The fact that a “word mark”^[7] can exist necessarily restricts some speech by people who do not control that word mark. There are various doctrines within the law intended to balance trademark with free speech policy.^[8]

Fair use is such a doctrine, and there are two kinds within United States law. First, descriptive fair use allows… Second, nominative fair use allows…^{[further explanation needed]}

KP Permanent Make-Up, Inc., and several of its competitors (collectively Lasting) all used the term “micro color” (as one word or two, singular or plural) in marketing permanent makeup. KP claimed that it had used the single-word version since 1990 or 1991. In 1992, Lasting registered a trademark that included the words “Micro Colors” with the USPTO. In 1999, the registration became incontestable under the Lanham Act.^[1]

When Lasting demanded that KP stop using the word “microcolor,” KP sued for declaratory relief. Lasting counterclaimed, alleging, among other things, that KP had infringed Lasting’s trademark. KP responded by asserting the that their use was not infringement because it was a fair use under the statute, §1115(b)(4). Finding that Lasting conceded that KP used “microcolor” only to describe its goods and not as a mark, the federal District Court held that KP was acting fairly and in good faith because KP undisputedly had employed the term continuously from before Lasting adopted its mark. Without inquiring whether the practice was likely to cause consumer confusion, the court concluded that KP had made out its defense under §1115(b)(4) and entered summary judgment for KP on Lasting’s infringement claim.^[1]

Reversing, the Ninth Circuit Court of Appeals ruled that the District Court erred in addressing the fair use defense without delving into the matter of possible consumer confusion about the origin of KP’s goods.^[1] The Ninth Circuit said that a finding of likelihood of confusion precluded a fair use defense. Moreover, although the Ninth Circuit did not address the burden of proof in particular, it implied that the burden fell on KP to prove there was no likelihood of confusion.^[3]

This section needs expansion. You can help by adding to it. (December 2025)

The Supreme Court issued an opinion by Justice David Souter on December 8, 2004. The court sided with KP and reversed the Ninth Circuit, putting the burden to prove that a likelihood of confusion exists on the plaintiff.^[2]

The decision was unanimous aside from some footnotes. Justice Stephen Breyer declined to join footnote 6, and Justice Antonin Scalia declined to join footnotes 4 and 5. Footnote 5 was a citation sentence highlighting the quotation “Everybody has got a right to the use of the English language and has got a right to assume that nobody is going to take that English language away from him.”^[1]

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• Text of KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) is available from: Justia

This article incorporates written opinion of a United States federal court. As a work of the U.S. federal government, the text is in the public domain.