The U.S. Supreme Court will take up a significant trademark infringement question in the October Term 2004. The Court, on January 9, 2004, granted a writ of certiorari to the Ninth Circuit Court of Appeals for KP Permanent Make-Up, Inc. v. Lasting Impressions, Inc. et al, Supreme Court No. 03-409. The Court will consider whether assertion of the trademark fair use defense requires that the proponent of the defense also demonstrate an absence of likelihood of confusion.
This case resolves a split between circuits over the use of the fair use defense. The Second, Fourth, Fifth and Seventh Circuits have all indicated that likelihood of confusion analysis is not necessary for successful assertion of the fair use defense, while the Sixth and Ninth Circuits regularly use an analysis in such cases. The Ninth Circuit in KP Permanent reaffirmed their commitment to use of likelihood of confusion analysis when a defendant asserts the fair use defense. 328 F.3 1061, 1072 (9th Cir. 2003). A good faith defendant who uses a trademark in a confusing manner, knowingly or unknowingly, will be liable if the Supreme Court affirms the Ninth Circuit's decision. The trademark fair use defense, codified at 15 U.S.C. §1114(b)(4) and Section 33(b)(4) of the Lanham Act, will be eviscerated in all but form if the Ninth Circuit’s ruling is upheld.