24 IPL Newsl. 1 (2005-2006)

handle is hein.journals/iprolane24 and id is 1 raw text is: 












A  Publication of The ABA  Section of Intellectual Property Law  www.abanet.org/intelprop
                                                                         Volume 24 • Number 1 : Fall 2005


                   Confusion Likely after
          KP Permanent Make-Up, Inc.

             v. Lasting Impression I, Inc.
                                     BY SIMON J. FRANKEL


                   Last year, the U.S. Supreme Court
                   considered a question that has long
                   vexed, companies caught in trade-
                   mark disputes: When a trademark
                   defendant claims to be using the
                   plaintiff's mark as an English
                   language word- and not as a trade-
                   mark-what must the defendant
   Simon J. Frankel show in order to prevail? The
                   doctrine of classic fair use in trade-
mark law provides that when a defendant uses a word
mark in its original English language sense, it should not
be an infringement of the plaintiff's mark. The justifica-
tion for this doctrine is obvious: Companies that choose
ordinary, descriptive words as their trademarks should
not be able to prevent others from using those words, in
their descriptive sense, in commerce. But what if the
defendant's use might create a likelihood of confusion
between its goods and the plaintiff's goods?
  The Supreme Court took up this question last
December in KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc. I The Court could have provided a sim-
ple answer: A defendant who can establish it is using the
trademark as an English language word, and not for its
secondary meaning, also need not negate a likelihood of
consumer confusion as to source or sponsorship. Despite
some language to that effect, the opinion by Justice
David Souter ultimately backed down from any clear
rule to guide litigants and allowed that likelihood of con-
fusion might always be relevant when a defendant claims
a classic fair use.2
   Simon Frankel is a litigation partner at Howard Rice
Nemerovski Canady Falk & Rabkin in San Francisco. He special-
izes in copyright, trademark, patent and right of publicity litiga-
tion, defamation cases, and legal issues related to visual art. He
can be reached at 415/434-1600 or sfrankel@howardrice.com.
John P. Duchemin, a third-year student at the University of
Chicago Law School, assisted in the preparation of this article as
a summer associate at Howard Rice.


   When the Supreme Court sent the KP Permanent case
back to the Ninth Circuit to reconsider its earlier deci-
sion, that court exploited the loose language in Justice
Souter's opinion. Specifically, the Ninth Circuit held that
disputed factual issues concerning likelihood of confu-
sion meant that the trademark defendant could not
prevail with its classic fair use defense at the summary
judgment stage.3 The result unfortunately leaves the law
as muddy as when the Supreme Court waded into the
fray last year.
   KP Permanent and Lasting Joust over Micro Colors
   The decisions of the Supreme Court and the Ninth
Circuit resulted from a dispute between KP Permanent
and Lasting Impression, two competitors in the perma-
nent makeup industry. People, inject permanent makeup
under their skin to conceal scars and, as Justice Souter
put it, to modify nature's dispensations.4 Most users
want the makeup to blend in, rather than announce its
presence. Thus, KP and Lasting coined the term micro
colors to describe their products' minute gradations of
                                (continued on page 6)


Keeping Current with the Chair .................... 3
Elimination of the Best Mode Requirement .......... 8
Supreme Court of Canada Ends MP3 Levy Battle ..... 15
Maximum Copyright Statutory Damages Award ...... 16
The Intersection Between Damages Recovery
under the Patent Marking Statute ................19
European Software Patents  ....................... 25
I2P Group  News  ...... ........................29
Recent Developments in Intellectual Property Law .... 32


Q      THe A tA PECrty La
      Intellectual Property Law


Dfending Liberty
Puuing Jsie


VISIT THE SECTION WEB SITE AT WWW.ABANET.ORG/INTELPROP

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