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

Decision Date30 April 2003
Docket NumberNo. 01-56055.,01-56055.
Citation328 F.3d 1061
PartiesKP PERMANENT MAKE-UP, INC, Plaintiff-Counter-Defendant-Appellee, v. LASTING IMPRESSION I, INC; MCN International Inc, Defendants-Counter-Claimants-Appellants, Roes 1 Through 10, inclusive, Counter-Defendant-Appellee.
CourtU.S. Court of Appeals — Ninth Circuit

Charles C.H. Wu and C. William Kircher, Jr., Irvine, CA, for the defendants-counter-claimants-appellants.

Michael Machat, Beverly Hills, CA, for the plaintiff-counter-defendant-appellee.

Appeal from the United States District Court for the Central District of California; Gary L. Taylor, District Judge, Presiding. D.C. No. CV-00-00276-GLT.

Before: HUG, BRUNETTI, and O'SCANNLAIN, Circuit Judges.

OPINION

HUG, Circuit Judge.

I. Introduction

This case concerns the term "micro colors"1 and who has the right to use it. Lasting Impression I, Inc., owns an incontestable, registered trademark which consists of the term "micro colors," set in white, within a black box. It is the registration for this composite mark that is the basis of this litigation.

K.P. Permanent Make-Up, Inc. ("KP") uses the term "micro colors" on its products and brochures. Upon receiving a cease and desist letter from Lasting Impression I, Inc. in January 2000 demanding KP discontinue its use of the term "micro color," KP brought this action for declaratory relief against the defendants Lasting Impression I, Inc., and its distributor, MCN International, Inc. (hereinafter collectively referred to as "Lasting"). KP asserted that Lasting did not have the exclusive right to use the term "micro colors" and that the term was generic and incapable of receiving trademark protection. Lasting counterclaimed, alleging that KP's use of the term "micro color" infringed Lasting's incontestable, registered mark. The parties filed cross motions for summary judgment and summary adjudication.

The district court concluded that the term "micro colors" was generic, or if not generic, descriptive. The court then determined that KP was entitled to continue use of the term "micro color," in the manner that it had been since 1991, and that Lasting could continue to use its trademarked logo. Lasting appeals the district court's grant of summary judgment in favor of KP. We have jurisdiction under 28 U.S.C. § 1291.

II. Factual and Procedural Background

KP and Lasting are direct competitors in the permanent makeup industry. To better understand the nature of the term "micro color," a brief description of permanent makeup and the permanent makeup industry is of use. Permanent makeup is similar to a tattoo, in that both are created by injecting pigment into the skin. Permanent makeup has both cosmetic and medical uses. For example, it may be used to create permanent eye liner and to enhance eyebrows, or it may be used in scar revision or in cases of pigmentary disorder. Permanent makeup is also known as micropigmentation.

The pigments used for permanent makeup are sold in small bottles for use by trained professionals. Both KP and Lasting have a separate line of pigments for use in the permanent makeup process. These pigments are sold in various colors. Further, both KP and Lasting sell their pigments to the same end users, such as beauty salons.

Lasting began using "micro colors" commercially as a trademark for its line of permanent makeup pigments in April 1992. The mark was registered on the Principal Register of the United States Patent and Trademark Office on May 11, 1993, as Reg. No. 1,769,592. The mark is registered as a design and word mark and consists of a solid black rectangle, with the words "micro" and "colors" in reverse white lettering. The word "micro" appears directly over the word "colors," and the two are separated by a green horizontal bar. In 1999, Lasting's mark, as registered, became incontestable. An illustration of the registered trademark is shown in Appendix A.

KP used the term "micro color" on its flyers beginning in 1990 and has continued to use the term on its pigment bottles since 1991. KP's use of the term "micro color" on its bottle labels consists of the word in full capitals before the actual color of the pigment in the bottle. For example, KP's use of the word on a bottle containing black pigment would appear as: "MICRO-COLOR: BLACK."

In 1999, KP adopted a new use of the term "micro color." Rather than using it only on its bottles, KP began using the term in its marketing brochures. The brochures display the term "micro color" in a stylized format. "Micro color" sits directly over the word "pigment," and a vial with pigment flowing out of it is depicted to the side of the word display.

Additionally, under both the vial and the phrase "micro color pigment" is the word "chart." Both the words "pigment" and "chart" appear in a smaller size type than the term "micro color," making the term the most dominant feature of the image. The brochure on which this image appears contains a chart displaying all the various colors in which KP's pigments are available. An illustration of the term in the marketing brochures is shown in Appendix B.

In March 2000, KP commenced this trademark declaratory relief action against Lasting. In response, Lasting counterclaimed, alleging that KP's use of the phrase "micro color" infringed Lasting's incontestable registration of its "micro colors" mark and sought damages for the infringement. Lasting's counterclaim also alleged unfair competition and false advertising.

KP filed a motion for summary judgment. KP's contentions consisted of the following: (1) Lasting's picture mark registration did not give Lasting the exclusive right to the term "micro color" separate from the logo; (2) the term "micro color" is generic; (3) KP can use "micro color" under the fair use doctrine; (4) the phrase has no secondary meaning; (5) Lasting has also used "micro color" in a generic sense and is estopped from arguing the term is not generic; (6) Lasting cannot show likelihood of confusion; and (7) KP's continuous prior use of the term "micro color" defeats Lasting's claim to exclusivity.

Lasting moved for summary adjudication of certain issues, principally that KP's contention that the term "micro colors" is generic had no merit, that KP's prior use contention had no merit, and that Lasting's registered trademark was not limited to the composite.

The district court granted KP's motion for summary judgment and denied Lasting's motion for summary adjudication. It held that KP could continue to use the term "micro color" in the manner it has since 1991 and that Lasting could continue to use its trademarked logo containing the words "micro color." Specifically, the district court concluded that the term "micro color" is generic, and, if not generic, descriptive. The district court then determined that neither party had acquired secondary meaning in the term "micro color." Finally, the district court held that KP's use was protected under the "fair use" defense, 15 U.S.C. § 1115(b)(4), and because its use was fair, the court declined to discuss KP's prior use contention or likelihood of confusion.

III. Analysis
A. Standard of Review

A grant of summary judgment is reviewed de novo. Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1257(9th Cir.2001). We must determine, viewing the evidence in the light most favorable to the nonmoving party, whether there are any genuine issues of material fact and whether the district court correctly applied the relevant substantive law. Id. "Because of the intensely factual nature of trademark disputes, summary judgment is generally disfavored in the trademark arena." Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir.2002) (quotation marks and citations omitted).

B. Trademark Infringement

In evaluating the parties' motions for summary judgment and summary adjudication, it is easiest to frame the relevant issues in the context of a trademark infringement action. KP's motion raises essentially issues that are defenses to an infringement action.

The Lanham Act allows the holder of a protectable trademark to hold liable any person who without consent, "use[s] in commerce any ... registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services" which is likely to cause confusion. 15 U.S.C. § 1114(1)(a). Before infringement can be shown, the trademark holder must demonstrate that it owns a valid mark, and thus a protectable interest. Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir.2002). Once the trademark holder shows that it has a protectable interest, the holder must show that the alleged infringer's use of the mark "is likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114(1)(a) & (b); Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 900 (9th Cir.2002). The alleged infringer has a number of defenses available.

Trademarks are generally divided into four categories: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. The latter two categories are deemed inherently distinctive and are automatically entitled to protection because they naturally "serve[] to identify a particular source of a product...." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992).

Generic marks are not capable of receiving protection because they identify the product, rather than the product's source. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985). "Generic terms are not registerable, and a registered mark may be canceled at any time on the grounds that it has become generic." Id. Merely descriptive marks, which describe the qualities or characteristics of a product, may be registered only if the holder of the mark shows that the mark has acquired distinctiveness...

To continue reading

Request your trial
27 cases
  • Century 21 Real Estate Corp. v. Lendingtree, Inc., 03-4700.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (3rd Circuit)
    • October 11, 2005
    ...... to something is to use the trademarked term." KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 328 F.3d ......
  • Harris v. Matevousian, Case No.: 1:16-cv-00242-JLT
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Eastern District of California
    • February 24, 2016
  • Coldwell Banker Real Estate v. Brian Moses Realty Inc.
    • United States
    • United States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of New Hampshire
    • September 8, 2010
    ...the classic fair use defense recognized in trademark infringement cases. See KP Permanent Make–Up, Inc. v. Lasting Impression I, Inc., 328 F.3d 1061, 1071–72 (9th Cir.2003) (explaining the difference between classic and nominal fair use), vacated 543 U.S. 111, 125 S.Ct. 542, 160 L.Ed.2d 440......
  • Digital Dream Labs, LLC. v. Living Tech. (Shenzhen) Co.
    • United States
    • United States District Courts. 3th Circuit. United States District Courts. 3th Circuit. Western District of Pennsylvania
    • February 28, 2022
    ...way to refer to something is to use the trademarked term." Id. at 214 (citing KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. , 328 F.3d 1061, 1072 (9th Cir. 2003) ) (rev'd. on other grounds) (quotations omitted). Nominative fair use cases are governed by a two-step approach: (1) t......
  • Request a trial to view additional results
1 firm's commentaries
  • Supreme Court Decides Important Trademark Fair Use Case
    • United States
    • Mondaq United States
    • December 15, 2004
    ...whether the use is a fair one. The Court's holding resolves a split in the circuits and vacates the decision of the Ninth Circuit (at 328 F.3d 1061 (9th Cir. 2003)), holding that the fair use defense is available only where a defendant can prove no likelihood of The decision in the KP case ......
1 books & journal articles
  • Trademark fair use: Braun(R) versus the bunny.
    • United States
    • Marquette Intellectual Property Law Review Vol. 13 No. 2, June 2009
    • June 22, 2009
    ...F.3d at 1151). See also Century 21 Real Estate Corp., 425 F.3d at 214 (citing KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 328 F.3d 1061, 1072 (9th Cir. 2003)) (Nominative fair use exists "even if the alleged infringer's ultimate goal is to describe his own product.") (emphasis......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT