Background
KP Permanent Make-Up and Lasting Impression I both sold products used in micropigmentation — a cosmetic procedure that permanently applies makeup-like color to skin. Both companies used the term “micro color” to describe their products. Lasting Impression had a federal trademark registration that included the words “micro colors,” and it sued KP for trademark infringement.
KP raised the defense of classic (or “descriptive”) fair use, which allows a defendant to use a trademarked term in its ordinary descriptive sense, provided the use is in good faith and not as a trademark. The question was whether a defendant invoking fair use must also prove that its use causes no likelihood of consumer confusion — or whether the plaintiff retains that burden.
The Court’s Holding
Justice Souter, writing for a unanimous Court, held that a defendant asserting classic fair use has no obligation to negate likelihood of confusion. The burden of proving likelihood of confusion lies with the plaintiff, and the fair use defense does not add a new element of “no confusion” that the defendant must establish.
More significantly, the Court acknowledged that some degree of consumer confusion may be compatible with a valid fair use defense. This does not mean that confusion is irrelevant — courts can consider the extent of likely confusion as part of the overall fair use analysis — but it does mean that a showing of some confusion does not automatically defeat the defense. The alternative would produce absurd results, potentially giving trademark holders a veto over any descriptive use of ordinary words.
Key Takeaways
- In a trademark infringement suit, the plaintiff bears the burden of proving likelihood of confusion — the defendant need not affirmatively negate it to succeed on a fair use defense.
- Some level of consumer confusion can coexist with a lawful classic fair use, without defeating the defense.
- Classic fair use protects good-faith descriptive use of a term in its ordinary meaning, even if that term is trademarked.
- Trademark rights do not give owners a monopoly over descriptive terms that others need to accurately describe their goods or services.
Why It Matters
Trademark law is designed to prevent consumer deception, not to hand brand owners exclusive rights over common words and phrases. If descriptive fair use defendants had to prove zero consumer confusion, trademark holders could effectively monopolize ordinary language by registering descriptive terms and then blocking anyone who uses them — regardless of context.
For businesses using ordinary descriptive terms to describe their products, this ruling is protective. A cosmetics company that describes its product as “micro color” can invoke fair use without having to prove that no consumer anywhere might momentarily wonder about the source. The confusion concern doesn’t disappear, but it weighs in the balance rather than triggering automatic liability.