New England Biz Law Update
When selecting a trademark, clients and their trademark attorneys and clients frequently have a debate.
On the one side, attorneys strongly encourage clients to select arbitrary or fanciful marks for their goods or services, while clients commonly look to suggestive or descriptive marks for branding purposes.
Ever since the U.S. Supreme Court decision two years ago in K.P. Permanent Make-Up, Inc. v. Lasting Impression I, Inc., the need to select stronger marks has become clearer than ever.
The K.P. Permanent decision demonstrates the need for trademark owners to brand with strong marks. Though not always popular with clients, the strong mark not only helps avoid issues of descriptiveness and fair use, but further creates a distinct brand that benefits the product line over time.
As for existing marks subject to the fair-use defense, continuing to police the marketplace and to stop offending uses early can represent some of the best defense for limiting the arguments of future infringers.
Range of protection
Trademarks are commonly described on a scale from generic (lowest) to arbitrary or fanciful (highest). Trademarks found to be generic actually carry no weight at all. A generic term is the name of the underlying product itself, such as “chair” for chairs.
The next step up is marks found to be descriptive, such as Computerland. While these marks also carry no weight, in some circumstances through substantial and exclusive use, they may graduate to protectable trademark status.
Trademark protection on the scale begins with suggestive marks. Coppertone and White-Out are considered suggestive for suntan lotion and corrective paint, respectively. The suggestive term requires the consumer to pause to understand the underlying product or its characteristics.
Arguing as to whether a mark is descriptive or suggestive is part of many trademark disputes, and of the debate between attorney and client as noted by Judge Learned Hand in Franklin Knitting Mills, Inc. v. Fashionknit Sweater Mills, Inc. 297 F. 247, 248 (D.N.Y. 1923), aff’d, 4 F.2d 1018 (2d Cir. 1925) (“With the whole field of possible coinage before them, it is strange that merchants insist upon adopting marks that are so nearly descriptive.”)
Strong marks begin with arbitrary marks, such as Apple for computers, and made-up or fanciful terms, such as Kodak for film. Attorneys push clients to this level since arbitrary or fanciful trademarks leave little debate during litigation as to either scope of protection or underlying defenses.
Tussle over ‘micro colors’
The K.P. Permanent case involved a mark on the descriptive/suggestive line, which further permitted the accused infringer of arguing its descriptive use of the mark was “fair use,” and not infringement. The case involved use of “micro color” in connection with the marketing of permanent cosmetic makeup.
In 1993, Lasting Impression I, Inc. (Lasting) registered “MICRO COLORS” in white letters separated by a green bar within a black square for “color pigments.”
In 1999, K.P. Permanent Make-Up, Inc. (KP) began using a large, stylized version of the term “microcolor” on its advertising, compelling Lasting to demand that KP cease using the term. In response, KP filed a declaratory judgment action asserting its use of “microcolor” was protected by the fair use provision of the Lanham Act, and that “microcolor” was descriptive.
Lasting counterclaimed, asserting trademark infringement, and arguing the fair use defense was inapplicable because KP’s use of “microcolors” was likely to cause confusion amongst consumers.
A federal district court judge granted summary judgment for KP, ruling that it was acting fairly and in good faith because it used the term “microcolor,” not as a trademark, but merely as a descriptor of its goods. The court did not consider the question of likelihood of confusion.
On appeal, the 9th Circuit reversed, ruling that the trial court judge erred by addressing the issue of fair use without addressing the possibility of confusion regarding the origin of KP’s goods. The 9th Circuit determined that KP raised a “classic” fair-use defense because it used the term “microcolors” to describe its product, and that a party asserting the fair-use defense has an affirmative duty to address the issue of consumer confusion.
Further, the appeals court said that if there is actual confusion, or even a likelihood of confusion, a fair-use defense cannot be asserted.
The Supreme Court granted certiorari on the question of the significance of likelihood of confusion in cases addressing the fair-use defense to a claim of trademark infringement. At issue was whether a party asserting the fair-use defense has to demonstrate an absence of likelihood of confusion as a condition of asserting a fair-use defense, or whether the fair use defense is an absolute defense regardless of any consumer confusion.
Proving confusion isn’t necessary
The Supreme Court held that a party accused of trademark infringement may demonstrate fair use of another’s trademark without the obligation to prove a lack of confusion. It is the trademark owner’s burden to prove likelihood of confusion, and if confusion is found, an accused can still assert a fair-use defense.
Fair use then requires consideration of several factors, including the strength of plaintiffs mark, accuracy of use, and the degree of confusion.
The court emphasized that consumer confusion is an important element of infringement. However, the existence of some consumer confusion is tolerated, and does not preclude fair use. In fact, it is only when a plaintiff who claims infringement of a mark has proven likelihood of confusion by a preponderance of the evidence that a defendant has any need for the affirmative defense of fair use.
Douglas Wolf is a shareholder and co-chair of the trademark practice group at the Boston intellectual property law firm of Wolf Greenfield, (www.wolfgreenfield.com), specialists in patents, trademarks, copyrights, trade secrets, licensing, and IP-related litigation. Doug assists clients in developing, acquiring and protecting patent, trademark, and copyright portfolios. He can be reached at [email protected] or 617.646.8260.
Lisa Martin is an associate and member of the trademark practice group at Wolf Greenfield, where she focuses on U.S. and international trademark counseling, prosecution, and proceedings before the Trademark Trial and Appeal Board, advising on branding strategies, pursuing and resolving trademark and copyright infringement, right of publicity, domain name disputes, and licensing issues. Lisa can be reached at [email protected]
