Kp Permanent Make-Up, Inc. v. Lasting Impression I, Inc.

543 U.S. 111 (2004)

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Nature of the Case

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Facts

P and Lasting (D) sell permanent makeup. Each has used some version of the term 'micro color' in marketing and selling its product. P claims to have used the single-word version since 1990 or 1991 on advertising flyers and since 1991 on pigment bottles. In 1992, D applied for registration of a trademark consisting of the words 'Micro Colors' in white letters separated by a green bar within a black square. The mark was registered in 1993, and in 1999 the registration became incontestable. In 1999 P produced a 10-page advertising brochure using 'microcolor' in a large, stylized typeface, provoking D to demand that P stop using the term. P sued D seeking a declaratory judgment that its language did not infringe and was a fair use. P sought summary judgment on D's infringement counterclaim, based on the statutory affirmative defense of fair use, 15 U.S.C. § 1115(b)(4). D conceded that P used the term only to describe its goods and not as a mark, the District Court held that P was acting fairly and in good faith because undisputed facts showed that P had employed the term 'microcolor' continuously from a time before D adopted the two-word, plural variant as a mark. It entered summary judgment for P on fair use. The Court of Appeals reversed holding that P can only benefit from the fair use defense if there is no likelihood of confusion between P's use of the term 'micro color' and D's mark. It reversed the summary judgment and remanded the case. The Supreme Court granted certiorari.