Mark's secondary meaning extends to its most salient feature

In KP Permanent Make-Up Inc v Lasting Impression I Inc, the Ninth Circuit Court of Appeals has ruled that where the holder of an incontestable mark complains that the most salient feature of its mark is being imitated and a likelihood of confusion might result, a conclusive presumption that the mark has acquired a secondary meaning extends to the most salient feature of the mark.

KP Permanent Make-Up filed a declaratory judgment action alleging that Lasting Impression's mark MICRO COLORS is the generic name for pigments used in preparing permanent cosmetics. A US district court in California granted summary judgment in favour of KP based on the following findings:

  • the words 'micro colours' are generic;

  • even if not generic, the term 'micro colours' is descriptive and lacks secondary meaning; and

  • the fair-use defence precludes a claim of infringement.

On appeal, the Ninth Circuit reversed and remanded the case because the district court failed to give proper weight to Lasting's incontestable registration of MICRO COLORS, which creates a presumption that the mark is not generic and this presumption extends to the most salient feature of the mark. The district court erred as a matter of law in placing the burden on Lasting to show that the mark is not generic, instead of requiring KP to produce evidence overcoming the presumption. KP failed to meet this burden; it presented no evidence that consumers understood 'micro colours' to be a generic term.

The district court also erred in requiring Lasting to demonstrate secondary meaning in the words 'micro colours', apart from the mark. The owner of an incontestable registration does not have to prove secondary meaning when the salient part of its mark is being imitated.

The lower court's analysis of the fair-use defence was similarly flawed. There are two types of fair use: classic and nominative. Classic fair use occurs when an alleged infringer uses the mark in good faith only to describe its own products. Nominative fair use occurs when the alleged infringer uses the mark to describe the trademark owner's products or when the mark is the only practical term that can be used to refer to the products. The classic fair-use defence is available only if there is no likelihood of confusion. Nominative fair use does not require consideration of likelihood of confusion. Because KP was alleging classic fair use, the district court should not have granted judgment without considering whether there is a likelihood of confusion.

Michael A Grow, Arent Fox Kintner Plotkin & Kahn PLLC, Washington DC

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