KP Permanent Makeup v. Lasting Impression is trademark infringement battle between permanent makeup companies.
The dispute is whether KP’s use of the words MICRO COLOR on its products infringes on Lasting Impression’s registered uncontested trademark MICRO COLORS (which is a design and word mark that consists of a solid black rectangle, with the words “micro” and “colors” in reverse white lettering). For those of us who (like me) lack imagination, the Court includes pictures of both marks as an illustration. But this picture does not tell a 1,000 words.
The parties filed motions / cross-motions for summary judgment / summary adjudication. The district court granted KP’s motion for summary judgment, ruling that the term “micro colors” is generic and / or descriptive and thus not entitled to protection; incidentally, it denied Lasting Impression’s summary adjudication motion re: “micro colors” being a generic phrase. The district court also ruled that KP can continue to use the words “micro colors,” as it had since 1991, while Lasting Impression can continue to use its trademark logo.
After the case went all the way to the Supreme Court on the issue of applicability of likelihood of confusion to the fair use defense, the case comes back to the 9th Circuit, which reverses. As to the question of MICRO COLORS trademark being generic, the Court finds that KP failed to overcome the presumption against genericness, which attached when MICRO COLORS became a registered trademark, so no summary judgment for KP. The Court also found that triable issues of fact remained regarding KP’s Fair Use and Likelihood of Confusion affirmative defenses.
One issue of some note is that the Court holds that the likelihood of confusion is inversely proportional to the fair use doctrine - the more confusion exists, the less likely is that the use is fair. This analysis appears to take the likelihood of confusion / fair use interplay a bit further than the Supreme Court did here, but the Supreme Court did leave room for the 9th Circuit to operate on this issue.
"While we thus recognize that mere risk of confusion will not rule out fair use, we think it would be improvident to go further in this case, for deciding anything more would take us beyond the Ninth Circuit’s consideration of the subject. It suffices to realize that our holding that fair use can occur along with some degree of confusion does not foreclose the relevance of the extent of any likely consumer confusion in assessing whether a defendant’s use is objectively fair. "I recommend this opinion as a very decent overview of the law regarding trademark infringement.
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