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03-409 KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.

By: dmc-admin//December 13, 2004//

03-409 KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.

By: dmc-admin//December 13, 2004//

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Although §1115(b) makes an incontestable registration “conclusive evidence … of the registrant’s exclusive right to use the … mark,” it also subjects a plaintiff’s success to “proof of infringement as defined in section 1114.” Section §1114(1) in turn requires a showing that the defendant’s actual practice is “likely to cause confusion, or to cause mistake, or to deceive” consumers about the origin of the goods or services in question, see, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780. Thus, a plaintiff claiming infringement of an incontestable mark must show likelihood of consumer confusion as part of the prima facie case. This plaintiff’s burden must be kept in mind when reading §1115(b)(4), which provides the fair use defense to a party whose “use of the … term … charged to be an infringement is a use, otherwise than as a mark, … of a term … which is descriptive of and used fairly and in good faith only to describe the goods or services.” It is evident (1) that §1115(b) places a burden of proving likelihood of confusion (that is, infringement) on the party charging infringement even when relying on an incontestable registration, and (2) that Congress said nothing about likelihood of confusion in setting out the elements of the fair use defense in §1115(b)(4). It therefore takes a long stretch to claim that a fair use defense entails any burden to negate confusion. It is not plausible that Congress would have used §1114’s phrase “likely to cause confusion, or to cause mistake, or to deceive” to describe the requirement that a markholder show likelihood of consumer confusion, but would have relied on §1115(b)(4)’s phrase “used fairly” to give a defendant the burden to negate confusion. See, e.g., Russello v. United States, 464 U.S. 16, 23. Congress’s failure to say anything about a defendant’s burden on this point was almost certainly not an oversight, since the House Trademarks Subcommittee refused to forward a proposal expressly providing likelihood to deceive the public as an element of the fair use defense. Lasting argues unpersuasively that “used fairly” in §1115(b)(4) is an oblique incorporation of a likelihood-of-confusion test developed in the common law of unfair competition. While cases such as Baglin v. Cusenier Co., 221 U.S. 580, are consistent with taking account of the likelihood of consumer confusion as one consideration in deciding whether a use is fair, they cannot be read to make an assessment of confusion alone dispositive or provide that the defense has a burden to negate it entirely. Finally, a look at the typical course of litigation in an infringement action points up the incoherence of placing a burden to show nonconfusion on a defendant. If a plaintiff succeeds in making out a prima facie case, including the element of likelihood of confusion, the defendant may offer rebutting evidence to undercut the force of the plaintiff’s evidence on this element, or raise an affirmative defense to bar relief even if the prima facie case is sound, or do both. It would make no sense to give the defendant a defense of showing affirmatively that the plaintiff cannot succeed in proving some element (like confusion); all the defendant needs to do is to leave the factfinder unpersuaded that the plaintiff has carried its own burden on that point. Nor would it make sense to provide an affirmative defense of no confusion plus good faith, when merely rebutting the plaintiff’s case on confusion would entitle the defendant to judgment, good faith or not.

328 F.3d 1061, vacated and remanded.

Local effect:

The decision is consistent with current Seventh Circuit law, Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir. 1995).

Souter, J.

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