Amicus Curiae Brief — KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.

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No. 03-409 APR 1°

In the Supreme Court of the United States

—

KP PERMANENT MAKE-UP, INC., PETITIONER

LASTING IMPRESSION, INC., ET AL.

ON WRIT OF CERTIORARI

10 THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

BRIEF FOR THE UNITED STATES AS

AMICUS CURIAE SUPPORTING PETITIONER

THEODORE B. OLSON

Solicitor General

Counsel of Record

PETER D. KEISLER

Assistant Attorney General

THOMAS G. HUNGAR

Deputy Solicitor General

JAMES md — PATRICIA A. MILL ETI

General Counse Assistant to the Solicitor

JOHN M. WHEALAN General

Solicitor ANTHONY J. STEINMEYER

CYNTHIA C. LYNCH ANTHONY A. YANG

NANCY C. SLUTTER Attorneys

Associate Solicitors Department of Justice

Patent and Trademark Office Washington, D.C. 20530-0001

Arlington, VA 22215 (202) 514-2217

QUESTION PRESENTED

Whether the Lanham Act’s fair use defense to trademark

infringement, 15 U.S.C. 1115(b)(4), requires the party assert-

ing the defense to demonstrate the absence of a likelihood of

consumer confusion.

(I)

TABLE OF CONTENTS

Interest of the United States

Statement

1. Legal framework

2. Factual and procedural background

Summary of argument

Argument:

The fair use defense to trademark infringement

under the Lanham Act does not require proof that

consumers are not likely to be confused

A. The text of the Lanham Act’s fair use

defense does not require proof by the defen-

dant of the absence of a likelihood of

confusion

B. The context and overall structure of the

Lanham Act’s fair use defense demonstrate that

the defendant need not prove the absence of a

likelihood of confusion

1. Requiring proof of non-confusion would

render the affirmative defense super-

fluous

2. The court of appeals’ policy rationale

fails

C. No other considerations justify judicial supple-

mentation of the fair use defense enacted

by Congress

1. Legislative history

2. Common law

Conclusion

Appendix

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F 8 NN

TABLE OF AUTHORITIES

Cases:

Abercrombie & Fitch Co. v. Hunting World, Inc.,

537 F.2d 4 (2d Cir. 1976)

Armstrong Paint & Varnish Works v. Nu-Enamel

Corp., 305 U.S. 315 (1938)

Bates v. United States, 522 U.S. 23 (1997)

Beach v. Ocwen Fed. Bank, 523 U.S. 410 (1998)

Beecham v. United States, 511 U.S. 368 (19949 =

Brother Records, Inc. v. Jardine, 318 F.3d 900 (9th

Cir.), cert. denied, 124 S. Ct. 155 (2003)

Burger King v. Hoots, 403 F.2d 904 (7th Cir.

1968)

Cairns v. Franklin Mint Co., 292 F.3d 1139

(9th Cir. 2002)

Car-Freshner Corp. v. S.C. Johnson & Son, Inc.,

70 F.3d 267 (2d Cir. 1995)

Champions Golf Club, Inc. v. The Champions Golf

Club, Inc., 78 F.3d 1111 (6th Cir. 1996)

Cosmetically Sealed Indus. v. Chesebrough - Pond s

USA Co., 125 F.3d 28 (2d Cir. 1997)

Director, Office of Workers’ Comp. Programs v.

Newport News Shipbuilding & Dry Dock Co.,

514 U.S. 122 (1995)

Doe v. Chao, 124 S. Ct. 1204 (2004)

Elkins v. United States, 364 U.S. 206 (1960)

EMI Catalogue Partnership v. Hill, Holliday,

Connors, Cosmopulos Inc., 228 F.3d 56 (2d Cir.

2000)

Forstmann Woolen Co. v. Murray Sices Corp.,

10 F. R. D. 367 (S. D. N. V. 1950)

Franklin Knitting Mills, Inc. v. Fashionit Sweater

Mills, Inc., 297 F. 247 (S. D. N. V. 1923), aff d.

4 F.2d 1018 (2d Cir. 1925)

Cases—Continued:

Green v. Bock Laundry Mach. Co., 490 U.S. 504

(1989)

Holiday Inn v. Holiday Inns, Inc., 534 F 2d 312

(C.C.P.A. 1976)

Howe Scale Co. v. Wyckoff, Seamans, & Benedict,

198 U.S. 118 (1905)

Institute for Scientific Infor., Inc. v. Gordon &

Breach, Science Publishers, Inc., 931 F.2d 1002

(3d Cir.), cert. denied, 502 U.S. 909 (1991)

James Burrough Ltd. v. Sign of Beefeater, Inc.,

540 F.2d 266 (7th Cir. 1976) .

John Hancock Mut. Life Ins. Co. v. Harris Trust &

Sav. Bank, 510 U.S. 86 (1993)

Keene Corp. v. United States, 508 U.S. 200

(1998)

Lamie v. United States Trustee, 124 S. Ct. 1023

(2004)

Lexecon Inc. v. Milberg Weiss Bershad Hynes &

Lerach, 523 U.S. 26 (1998)

Lindy Pen Co. v. Bic Pen Corp., 725 F.2d 1240

(9th Cir. 1984), cert. denied, 469 U.S. 1188 (1985)

Mil-Mar Shoe Co. v. Shonac Corp., 75 F.3d 1153

(7th Cir. 1996)

Moseley v. V Secret Catalogue, Inc., 537 U.S. 418

(2003)

PACCAR, Inc. v. TeleScan Techs., LLC, 319 F 3d

243 (6th Cir. 2003)

Packman v. Chicago Tribune Co., 267 F.3d 628

(7th Cir. 2001)

Park NF, Inc. v. Dollar Park & Fly, Inc.,

469 U.S. 189 (1985)

Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526

(5th Cir. 1998)

Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924)

Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159

(1995) ~

Cases—Continued: Page

Resorts of Pinehurst, Inc. v. Pinehurst Nat'l Corp.,

148 F.3d 417 (4th Cir.), cert. dismissed, 515 U.S.

1051 (1998) 23

Rodriguez v. United States, 480 U.S. 522 (1987) 20

San Francisco Arts & Athletics, Inc. v. United States

Olympic Comm., 483 U.S. 522 (1987) 6

Shakespeare Co. v. Silstar Corp., 110 F.3d 234

(4th Cir. 1997), cert. denied, 522 U.S. 1046 (1998) 17

Smith v. United States, 508 U.S. 223 (1993) 16

Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178 (5th

Cir. 1980), cert. denied, 450 U.S. 981 (1981) .... 3, 17-18, 19, 24

Standard Paint Co. v. Trinidad Asphalt Mfg. Co.,

220 U.S. 446 (1911) 27

Sugar Busters, LLC v. Brennan, 177 F.3d 258 (5th

Cir. 1999) 19

SunAmerica Corp. v. Sun Life Assurance Co., 77

F.3d 1325 (11th Cir.), cert. denied, 519 U.S. 822

(1996) 23

Sunmark, Inc. v. Ocean Spray Cranberries, Inc.,

64 F.3d 1055 (7th Cir. 1995) 18, 30

Thaddeus Davids Co. v. Davids, 233 U.S. 461

(1914) 27

Thrifty Rent-A-Car Sys., Inc. v. Thrift Cars, Inc.,

831 F.2d 1177 (Ist Cir. 1987) 22, 23, 24

Time, Inc. v. Petersen Publ’g Co., 173 F.3d 113

(2d Cir. 1999) 17

TMT North Am., Inc. v. Magic Touch GmbH,

124 F.3d 876 (7th Cir. 1997) 3, 23

TrafFix Devices, Inc. v. Marketing Displays, Inc.,

532 U.S. 23 (2001) 19

Transgo, Inc. v. Ajac Transmission Parts Corp.,

911 F.2d 363 (9th Cir. 1990) 19

VII

Cases Continued: Page

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.

763 (1992) 3, 5-6, 12, 17

United Drug Co. v. Theodore Rectanus Co., 248

US. 90 (1918) 22

United States v. Nordic Village, Inc., 503 U.S. 30

(1992) 18

United States v. Reese, 92 U.S. 214 (1875) 30

United States v. Ron Pair Enters., Inc., 489 US.

235 (1989) 13

Value House v. Phillips Mercantile Co., 523 F.2d 424

(10th Cir. 1975) 7

Vornado Air Circulation Sys., Inc. v. Duracraft

Corp., 58 F.3d 1498 (10th Cir. 1995), cert. denied,

516 U.S. 1067 (1996) 20

Wal-Mart Stores, Inc. v. Samara Bros., 529 US.

205 (2000) 3, 13, 29

William R. Warner & Co. v. Eli Lilly & Co., 265

U.S. 526 (1924) 27

Zatarains, Inc. v. Oak Grove Smokehouse, Inc.,

698 F. 2d 786 (5th Cir. 1983) 19

Treaties and statutes:

Agreement on Trade Related Aspects of Intellectual

Property Rights, Apr. 15, 1994, Annex 1C, Art. 17,

33 I. L. M. 1197 (1994) 15-16

Paris Convention for the Protection of Industrial

Property of Mar. 20, 1983, as revised on July 14,

1967, Art. 10(3)(1), 21 U.S. T. 1629, 828 U. N. T. S. 305 6

Trademark Act of 1946 (Lanham Act), ch. 540,

60 Stat. 427, (15 U.S.C. 105 1 et seg.) 1. 2

15 U.S.C. 105103 0D) 15

15 U.S.C. 1051(b(3)(D) 15

15 U.S.C. 1052(a) 5

15 U.S.C. 1052(b) 5

VIII

Statutes—Continued: Page

15 U.S.C, 1052(c) 6

15 U.S.C. 1052(d) 15

15 U.S.C. 1052(f) 4

15 U.S.C. 1057(b) 4

15 U.S.C. 1064(3) 3, 5, 7

15 U.S.C. 1065 4, 5, 8, 9, 10, la

15 U.S.C. 106504) 4, 2a

15 U.S.C. 1066 15

15 U.S.C. 1114 3a

15 U.S.C. 1114(1) 5, 6, 15, 17, 3a

15 U.S.C. 1115 7, 16, 8a

15 U.S.C. 1115(a) wee 4,6, 7, 17, 8a

15 U.S.C. 1115(b) passim

15 U.S.C. 1115(b)(1) 22, 9a

15 U.S.C. 1115(b)(2) 22, 9a

15 U.S.C. 1115(b)(3) 22

15 U.S.C. 1115(b)(1)-(3) 7, 8, 9a

15 U.S.C. 1115(6)(3) 2

15 U.S.C. 1115(b)(4) 1, 6, 13, 14, 21, 9a

15 U.S.C. 111505) 8, 23, 9a

15 U.S.C. 1115(b)(5)-(9) 8, 9a-10a

15 U.S.C. 1115(b)(6) 8, 10a

15 U.S.C. 1115(b)(7) 22, 10a

15 U.S.C. 1115(b)(8) 22, 10a

15 U.S.C. 11150009) 22, 23, 10a

15 U.S.C. 1122(a) ..... 2

15 U.S.C. 1125(a) 4

15 U.S.C. 1125(a)(1)(A) 6, 15, 17

15 U.S.C. 1127 2, 3, 14, 15, 20, 11a

Trademark Law Revision Act of 1988, Pub. L. No.

100-667, § 128(a)(4), 102 Stat. 3944 7

§ 128(b)(1), 102 Stat. 3945 7

Australian Trade Marks Act of 1995, as amended

in 2003, Sec. 122 16

European Council Regulation No. 40/94 on the

Community Trademark, Dec. 20, 1993, Art. 12 16

Miscellaneous: Page

Black’s Law Dictionary (5th ed. 1979) 17

134 Cong. Rec. (1988):

p. 11,073 7

p. 31,851 7

Stephen Elias, Patent Copyright and Trademark

(1996) 3

3 Jerome Gilson, et al., Trademark Protection and

Practice (2001) 20

Hearings on H.R. 102, H.R. 5461, and S. 895 Before

the Subcomm. on Trade-Marks of the House Comm.

on Patents, 77th Cong., Ist Sess. (1941) 23, 25, 26, 29

H.R. 5461, 77th Cong., Ist Sess. (1941) 25

H.R. Rep. No. 944, 76th Cong., Ist Sess. (1939) 2,9

H.R. Rep. No. 219, 79th Cong., Ist Sess. (1945) 2

http//www.kpmakeup.con/colorcharts.html 9

J. Thomas McCarthy, McCarthy on Trademarks

& Unfair Competition (2003):

Vol. 1 26

Vol. 2 19

Restatement (Third) of Unfair Competition

(1993) 4, 14, 20, 21, 27, 28

S. Rep. No. 515, 100th Cong., 2d Sess. (1988) 7

S. Rep. No. 1333, 79th Cong., 2d Sess. (1946) 2

Trade-marks: Hearings on H.R. 4744 Before the

Subcomm. on Trade-Marks of the House Comm. on

Patents, 76th Cong., Ist Sess. (1939) 5

Trademark Law Revision Act of 1987: Hearing on

S. 1883 Before the Subcomm. on Patents, Copyrights

and Trademarks of the Senate Comm. on the

Judiciary, 100th Cong., 2d Sess. (1988) 7

— ͤ— — : —

In the Supreme Court of the United States

No. 03-409

KP PERMANENT MAKE-UP, INC., PETITIONER

LASTING IMPRESSION, INC., ET AL.

ON WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

BRIEF FOR THE UNITED STATES AS

AMICUS CURIAE SUPPORTING PETITIONER

INTEREST OF THE UNITED STATES

This case concerns whether the Lanham Act’s fair use de-

fense in a trademark infringement case, 15 U.S.C. 1115(b)(4),

requires the defendant not only to prove the statutory

elements of the fair use defense, but also to demonstrate that

the defendant’s activity has no likelihood of causing con-

sumer confusion as to the source of goods or services. The

United States Patent and Trademark Office plays a central

role in the administration of the federal trademark system.

See 15 U.S.C. 1051 et seg. Further, the United States

government has a substantial interest in ensuring that

federal trademark protection comports with Congress’s

carefully calibrated approach in the Lanham Act to ad-

vancing consumer welfare through promoting competition,

enhancing the fairness and reliability of product information,

and protecting consumers against confusion in the marketing

of goods and services. In addition, the United States and its

1 While trademark infringement claims can be raised both by plaintiffs

and by defendants as counterclaims, for ease of reference, this brief refers

to the party asserting the trademark infringement claim as a “plaintiff”

and the party defending against that claim as a “defendant.”

agencies are subject to liability under the Lanham Art. 15

U.S.C. 1122(a), and thus enjoy the protections of the fair use

defense.

As explained below, in the government’s view, the court

of appeals erred in requiring defendants to prove the

absence of any likelihood of consumer confusion as part of

the fair use defense because (i) that factor makes no

appearance in the statutory text and (ii) interpolating such a

requirement cannot be reconciled with the structure and

purpose of the fair use defense.

STATEMENT

1. Legal Framework

Congress enacted the Trademark Act of 1946 (Lanham

Act), ch. 540, 60 Stat. 427, as amended, 15 U.S.C. 1051 et seq.,

to replace a “disorderly patchwork” of federal trademark

laws and to establish a uniform level of national protection

for trademarks used in interstate and foreign commerce.

H.R. Rep. No. 944, 76th Cong., Ist Sess. 1 (1939); id. at 4; see

S. Rep. No. 1333, 79th Cong., 2d Sess. 4-6 (1946); H.R. Rep.

No. 219, 79th Cong., Ist Sess. 3-4 (1945). The Lanham Act

ereated a comprehensive national registration system for

trademarks and put into place a federal administrative and

judicial framework for regulating the use of trademarks and

protecting them against infringement, dilution, and unfair

competition. Such Anlational protection of trademarks is

desirable * * * because trademarks foster competition and

the maintenance of quality by securing to the producer the

benefits of good reputation.” Park N Fly, Inc. v. Dollar

Park and Fly, Inc., 469 U.S. 189, 198 (1985); see 15 U.S.C.

1127 (stmn. of congressional intent).

Section 45 of the Lanham Act defines a trademark as “any

word, name, symbol, or device, or any combination thereof”

that is used “to identify and distinguish [a person's] goods

* * * from those manufactured or sold by others and to

indicate the source of the goods.” 15 U.S.C. 1127.2 Because

trademark law protects trademarks “only to the extent that

they give consumers information about the origin or quality

of products,” TMT North Am., Inc. v. Magic Touch GmbH,

124 F.3d 876, 882 (7th Cir. 1997), such marks are generally

grouped into five classes reflecting the relative potency of

the term or symbol used as a mark: (1) fanciful, (2) arbitrary,

(3) suggestive, (4) descriptive, and (5) generic. Two Pesos,

Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992); Aber-

crombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d

Cir. 1976). A “fanciful” mark is a uniquely created word or

symbol (e.g., “Kodak,” Xerox“). An “arbitrary” mark is the

use of a word or symbol the ordinary connotation of which

has no natural connection to the product (e.g., “Apple” Com-

puters, “Penguin” books). A “suggestive” mark requires the

use of imagination to connect the word or phrase with the

product (e.g., “L’eggs” hosiery). A “descriptive” mark sim-

ply describes the product or its characteristics (e.g., “Rich ‘N

Chip” cookies). Finally, a “generic” mark is a word or phrase

that is commonly used to describe an entire category or

genus of products or services (e.g., “Crab House,” cola).

Generic marks enjoy no protection under the Lanham Act or

at common law.

2 The Lanham Act also protects service marks, which identify service

providers (e.g., “Jiffy Lube”), certification marks, which identify the re-

gional origin or quality of goods (e.g., the “Good Housekeeping Seal of Ap-

proval”), and collective marks, which identify that a good or service is

provided by a particular association (e.g., ILGWU (International Ladies

Garment Workers Union)). See 15 U.S.C. 1127.

3 See 15 U.S.C. 1064(3), 1065(4); Park N Fly, 469 U.S. at 194. See

generally Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210-

211 (2000); Champions Golf Club, Inc. v. The Champions Golf Club, Inc.,

78 F.3d 1111, 1117 (6th Cir. 1996); Soweco, Inc. v. Shell Oil Co., 617 F.2d

1178, 1183-1184 (5th Cir. 1980), cert. denied, 450 U.S. 981 (1981); Aber-

crombie, 537 F.2d at 9; Stephen Elias, Patent Copyright & Trademark

347-351, 354-355 (1996).

Because descriptive marks identify characteristics or

qualities of a product that may apply broadly to many pro-

ducts and services, they are protected under the Lanham

Act only if they have acquired an established secondary

meaning for consumers that links the word to a particular

manufacturer or service provider (e.g., “Chunky” candy bars,

“Park N Fly”). See 15 U.S.C. 1052(f); Park N Fly, 469 U.S.

at 194. Even when a descriptive mark has acquired secon-

dary meaning and thus is eligible for protection under the

Lanham Act, the trademark embraces only that acquired

secondary meaning. The original and primary descriptive

meaning of the term remains available for others to use to

describe their products.’

While the Lanham Act provides protection against the

infringement of unregistered trademarks, see 15 U.S.C.

1125(a), the statute provides enhanced protection for feder-

ally registered trademarks. In particular, registration on

the principal register constitutes “prima facie evidence of

the validity of the registered mark and of the registration of

the mark, of the registrant’s ownership of the mark, and of

the registrant’s exclusive right to use the registered mark in

commerce.” See 15 U.S.C. 1057(b), 1115(a). Registration

thus substantially eases a trademark owner’s burden of

proof in an infringement action.

If a trademark is used in commerce, on or in connection

with the trademark holder’s goods, for five consecutive years

after its registration, the trademark can obtain “incontest-

able” status, see 15 U.S.C. 1065, which provides even more

protection for the mark. First, the right of the registrant “to

use [the] registered mark” in commerce on or in connection

4 See Restatement (Third) of Unfair Competition § 13 cmt. e, at 109

(1993) (“Protection extends, however, only to the secondary meaning that

has attached to the designation. The trademark owner acquires no ex-

clusive right to the use of the term in its original, lexicographic sense.”);

see also Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924) (a trademark

“does not confer a right to prohibit the use of the word or words”).

with the specified goods becomes “incontestable,” subject

only to specified statutory exceptions. Ibid. That provision

thus enables the registrant to defend against efforts by

others to prevent its own use of the mark.

Second, incontestable status constitutes “conclusive evi-

dence” of the “validity of the registered mark” and, most

significantly, of the registrant’s “exclusive right to use the

registered mark” in commerce. 15 U.S.C. 1115(b). That

evidentiary rule significantly strengthens the registrant’s

right to exclude others from using the mark. See Trade-

marks: Hearings on H.R. 4744 Before the Subcomm. on

Trade-Marks of the House Comm. on Patents, 76th Cong.,

Ist Sess. 105-107 (1939).° The incontestable status bestowed

by the Lanham Act thus effectively allows a registrant “to

quiet title in the ownership of his mark,” Park N Fly, 469

U.S. at 198, by substantially limiting the grounds on which

others may contest the registrant’s use or attempt their own

competing uses of the mark.

To deter and remedy trademark infringement, the Act

provides owners of both registered and unregistered trade-

marks with a federal cause of action for monetary and in-

junctive relief. See 15 U.S.C. 1114(1) (registered marks),

1125(a) (unregistered marks); see generally Two Pesos, 505

5 See also James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d

266, 273 n.15 (7th Cir. 1976) (construing “exclusive right”); Holiday Inn v.

Holiday Inns, Inc., 534 F.2d 312, 319 (C.C.P.A. 1976) (same).

6 The term “incontestable” is something of a misnomer. The regis-

trant’s right to use the mark remains subject to challenge “to the extent”

that it infringes on another’s valid state-law trademark right that arose

before the otherwise incontestable mark was registered. See 15 U.S.C.

1065. Likewise, an owner’s right to use the trademark may be challenged

if, among other things, the mark’s registration was obtained fraudulently

or the mark is a “generic” word or phrase, is functional, has been aban-

doned, is used to misrepresent the source of goods, consists of immoral,

deceptive, or scandalous matter, or consists of the United States flag, coat

of arms, or similar insignia. See 15 U.S.C. 1064(3), 1065; see also 15 U.S. C.

1052(a), (b) and (c).

U.S. at 768-769. A plaintiff asserting that its trademark has

been infringed carries the burden of establishing two distinct

elements. First, the plaintiff must prove that its mark is

valid and that it has the exclusive right to use the mark.

Second, the plaintiff must prove that the allegedly infringing

use of the mark by the defendant is “likely to cause confu-

sion, or to cause mistake, or to deceive” consumers. 15

U.S.C. 1114(1), 1115(a) and (b), 1125(a)(1)(A).'. A mark’s

registration and/or incontestable status will ease proof of the

first element, but it does not relieve the plaintiff of its

separate obligation to prove a likelihood of consumer con-

fusion. See 15 U.S.C. 1115(b); ef. Two Pesos, 505 U.S. at 769.

A party may defend against a claim of infringement by

establishing one of nine statutory affirmative “defenses or

defects.” 15 U.S.C. 1115(a) and (b). One such defense is the

fair use defense, which requires the defendant to prove

[t]hat the use of the name, term, or device charged to be

an infringement is a use, otherwise than as a mark, of the

party’s individual name in his own business, or of the

individual name of anyone in privity with such party, or

of a term or device which is descriptive of and used fairly

and in good faith only to describe the goods or services of

such party, or their geographic origin.

15 U.S.C. 1115(b)(4). The fair use defense thus allows a

defendant to use the term, not as a mark, but solely in a

descriptive manner to characterize fairly its own products or

services, even if the plaintiff has established that the term

See Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 428 (2003);

San Francisco Arts & Athletics, Inc. v. United States Olympic Comm.,

483 U.S. 522, 531 (1987); see also Paris Convention for the Protection of

Industrial Property of Mar. 20, 1883, as revised on July 14, 1967, Art.

10(3)(1), 21 U.S.T. 1629, 1648, 828 U.N.T.S. 305, 337 (defining unfair

competition as acts that “create confusion by any means whatever with

the establishment, the goods, or the industrial or commercial activities, of

a competitor”).

has acquired secondary meaning and functions as a trade-

mark with regard to the plaintiff's goods or services.“

The other “defenses or defects” are (1) that the mark’s

registration or incontestable status was obtained fraudu-

lently, (2) abandonment of the mark, (3) misrepresentative

use of the mark, (4) the defendant’s innocent and continuous

use of the mark within a limited area prior to registration by

the plaintiff, (5) prior registration within a limited area (e. g.,

under state or foreign law), (6) use of the mark in violation of

8 This Court’s decision in Park N Fly, supra, suggested in dicta that

the defenses and defects established in Section 1115(b) were not substan-

tive defenses on the merits, but served merely to rebut the otherwise

conclusive evidentiary effect of an incontestable mark’s registration. See

469 U.S. at 199 n.6. Congress’s subsequent amendments to Section 1115 in

1988, however, “codiflied] judicial decisions holding that the enumerated

defenses or defects to an action for infringement of an incontestable

registration * * * are equally applicable in actions for infringement of

marks which are not incontestable.” S. Rep. No. 515, 100th Cong., 2d Sess.

38 (1988); see also 134 Cong. Rec. 31,851 (1988) (Rep. Kastenmeier); cf.,

e.g., Value House v. Phillips Mercantile Co., 523 F.2d 424, 429-430 (10th

Cir. 1975); Forstmann Woolen Co. v. Murray Sices Corp., 10 F.R.D. 367,

370 (S.D.N.Y. 1950). To that end, Congress amended Section 33(a) to

provide that the substantive defenses and defects that apply in suits

involving unregistered trademarks, which also apply to lawsuits involving

registered marks by virtue of Section 33(a), ineludſe] thle defenses and

defects] set forth in Section 33(b). See Trademark Law Revision Act of

1988, Pub. L. No. 100-667, § 128(a)(4), 102 Stat. 3944. Because un-

registered trademarks have no evidentiary presumption for the defense to

rebut, the only role of the defenses in such cases is to defend against

substantive liability. The 1988 amendments also clarified that both the

mark’s incontestable status and the plaintiff’s proof of a likelihood of

confusion—the merits of the infringement elaim—“ shall be subject to the

following defenses or defects” enumerated in Section 1115(b). See Pub. L.

No. 100-667, § 128(b)(1), 102 Stat. 3945, codified at 15 U.S.C. 1115(b). The

1988 amendments thus rendered the “defenses or defects” in Section

1115(b) defenses to the merits of an infringement claim. See also Trude-

mark Law Revision Act of 1987: Hearing on S. 1883 Before the Subcomm.

on Patents, Copyrights & Trademarks of the Senate Comm. on the

Judiciary, 100th Cong., 2d Sess. 67, 141 & n.60 (1988) (views of U.S.

Trademark Ass’n); S. Rep. No. 515, supra, at 3 (adopting views of U.S.

Trademark Ass’n); 134 Cong. Rec. 11,073 (1988) (Sen. DeConcini) (same).

federal antitrust laws, (7) the mark is functional (e.g., cap-

tures an aspect of the product that contributes to its utility

or is necessary for effective competition), and (8) equitable

principles, such as laches, estoppel, and acquiescence. 15

U.S.C. 1115(b)(1)-(3) and (5-09).

2. Factual and Procedural Background

a. Permanent makeup, also referred to as “micro-

pigmentation,” involves the injection of pigment into the skin

to create an external visual effect, somewhat akin to

tattooing. Pet. App. 3a. Permanent makeup has both

medical and cosmetic applications and may, for example, be

used to conceal a scar, to enhance eyebrows, or to create

permanent eye liner. Ibid. Petitioner and respondents are

competitors in the permanent makeup industry. In 1990,

petitioner began using the term “microcolor” on its advertis-

ing flyers to identify and describe the range of colors and

shades of pigments that it offered for permanent makeup

services. In 1991, petitioner began placing the term “micro-

color” on its pigment bottles to refer to the color inside. /d.

at 3a-4a; Resp. Mot. for Summ. J. 13, 30; Resp. Reply Stmn.

of Uncontroverted Facts 4 para. 4. In 1999, petitioner used

the term “microcolor” on one page of a marketing brochure,

which offered an illustration of the pigment colors sold by

petitioner. Pet. App. 4a, 35a-45a. The word “microcolor”

appeared as part of a stylized graphical header that labeled

¥ Section 1115(b) appears to treat “defenses” and “defects” as inter-

changeable terms, according no legal significance to whether a particular

showing by a defendant operates as a pure legal defense applicable to the

particular defendant or more broadly serves to expose a defect in the

registration of the trademark itself. See 15 U.S.C. 1115(b)(5) and (6).

However, only some of the “defenses or defects” enumerated in Section

1115(b) also serve as grounds for cancellation of the registration.

Compare 15 U.S.C. 1064(3) (identifying fraudulent registration, abandon-

ment, and misrepresentation of goods or services as grounds for cancella-

tion), and 15 U.S.C. 1065 (valid and innocent prior use of mark under local

law may limit incontestable status), with 15 U.S.C. 1115(b\(1)-(3) and (5).

the page as petitioner’s “microcolor pigment chart.” Id. at

4a, 20a (App. B), 41a; see <http:/hwww.kpmakeup.com/color

charts.html> (color reproduction).

Respondents began using the term “micro colors” as a

trademark for their line of permanent makeup pigments in

1992 and subsequently registered a design and word mark on

the principal register in 1993. Pet. App. 3a. Respondents’

trademark consists of a solid black rectangle that contains

the words “micro” and “colors.” Jd. at 20a. Respondents’

trademark became incontestable in 1999. Id. at 3a.

b. In 2000, petitioner filed suit against respondents under

the Lanham Act seeking declaratory relief that its use of the

word “microcolor” was lawful. Respondents counter-claimed

for trademark infringement. Pet. App. 4a, 22a. The district

court granted summary judgment for petitioner. Id. at 22a-

3la. As relevant here, the district court ruled that peti-

tioner’s use of the word “microcolor” falls within the fair use

defense. Id. at 29a-30a. Respondents concede, the court

noted, that petitioner is using the word “microcolor” in its

descriptive sense and not as a trade or service mark. Id. at

26a, 29a. The court also cited petitioner’s undisputed and

continuous use of “microcolor” since 1990, which predated

respondents’ registration of their mark in 1993, as evidence

that petitioner has used “microcolor” fairly and in good faith.

Ibid. Because the district court found no issue of material

fact as to the fair use defense, ibid., the court concluded that

it “need not discuss any demonstration of likelihood of

confusion.” Id. at 30a.

c. The court of appeals reversed and remanded. Pet.

App. la-20a.. The court first held that no reasonable juror

10 See also Resp. Opp. to Pet. Mot. for Summ. J. 18-19; Resp. Mot. for

Summ. J. 30; Resp. Stmn. of Uncontroverted Facts 3 para. 4.

1! Because of its resolution of the case, the district court did not ad-

dress whether petitioner’s use of “microcolors” qualified as a prior use

protected by 15 U.S.C. 1065. See Pet. App. 29a.

could conclude that the term “micro color” is generic, id. at

10a-14a, and that the trademark’s incontestable status estab-

lished a conclusive presumption that the term “micro color”

had acquired secondary meaning. Id. at 14a-15a. The court

of appeals then reversed the grant of summary judgment in

petitioner’s favor on the fair use defense. Id. at 15a-19a. The

court held that, in order to avail itself of the fair use defense,

petitioner must prove that “there is no likelihood of confu-

sion between [its] use of the term ‘micro color’ and [respon-

dents’] mark.” Id. at 17a. In so ruling, the court relied on

circuit precedent stating that the fair use defense “only

complements the likelihood of customer confusion analysis.”

Ibid. (quoting Cairns v. Franklin Mint Co., 292 F.3d 1139,

1150 (9th Cir. 2002)). In the court of appeals’ view, “there

can be no fair use if there is a likelihood of confusion.” Pet.

App. 17a. The court then noted that “determining whether a

likelihood of confusion exists at the summary judgment

stage is generally disfavored because a full record is usually

required to fully assess the [relevant] facts” under the

court’s eight-factor test for evaluating consumer confusion.

Id. at 18a.

SUMMARY OF ARGUMENT

The court of appeals’ holding—that the fair use defense

requires proof that consumer confusion is unlikely—defies

the plain language of that defense, as well as its overall

statutory structure, the practicable functioning of the af-

firmative defense, congressional purpose, legislative history,

and the defense’s common-law antecedents. The statute

spells out the elements of the fair use defense, and proof of

non-confusion is not one of them.

Furthermore, judicially injecting that factor into the

defense ignores its structure and purpose. To prove a claim

of trademark infringement, plaintiffs must establish (1) the

validity of and exclusive right to use their trademark, and

(2) a likelihood of consumer confusion, mistake, or deception

caused by the defendant's use of the same or a similar mark.

The court of appeals thus would require defendants, in order

to avail themselves of the statutory fair use defense, to

disprove the very consumer confusion that the plaintiff must

prove as an element of its prima facie case. But the whole

point of an affirmative defense is that it absolves a defendant

of liability notwithstanding the plaintiff's prima facie proof of

its statutory claim. Affirmative defenses, by their nature,

generally do not require negativing a central element of the

plaintiffs case. The Lanham Act’s fair use defense is no

exception to that rule.

The court of appeals did not claim any textual anchor for

its reading of the fair use defense. Instead, the court rea-

soned that requiring proof of non-confusion was necessary to

protect consumers. The Lanham Act no doubt is concerned

with reducing consumer confusion, but that is not its sole

purpose. Like most laws, its terms reflect a balance of im-

portant but competing interests. By limiting a defendant’s

protected use of trademarked terms to purely descriptive

purposes, the fair use defense is calibrated both to minimize

consumer confusion and to enhance competition and con-

sumer information by permitting fair and accurate

descriptions of goods in the marketplace. Furthermore, the

fair use defense enforces, in practical terms, the distinction

between the secondary meaning a descriptive word has

acquired through use as a trademark and its ordinary, pri-

mary descriptive meaning, which cannot be subject to a

trademark and which remains in the public domain.

Whether there is confusion or not, the trademark holder

simply has no legal right to prevent the public from using

common, ordinary descriptive words in their original sense.

That is precisely what the fair use defense is designed to

protect.

ARGUMENT

THE FAIR USE DEFENSE TO TRADEMARK IN-

FRINGEMENT UNDER THE LANHAM ACT DOES

NOT REQUIRE PROOF THAT CONSUMERS ARE NOT

LIKELY TO BE CONFUSED

This Court has thrice before been presented with, and has

thrice before rejected, judicially crafted efforts to import

broad, extra-textual limitations into the trademark provi-

sions of the Lanham Act. In Park N Fly, Inc. v. Dollar

Park and Fly, Inc., 469 U.S. 189, 194 (1985), the Court

refused to create an extra-statutory limitation on the

offensive use of incontestable marks that are descriptive and

that the defendant alleged had not developed a secondary

meaning. The Court “searche[d] the language of the

Lanham Act in vain to find any support for the” proposed

limitation on descriptive marks, and noted that adopting that

limitation would “render meaningless” the express statutory

protection afforded incontestable marks. Id. at 196. Again,

in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992),

the Court rejected a general rule that trade dress—a

product’s total image and overall appearance, id. at 764

n. I could be protected only if it had developed a secondary

meaning. The Court explained that the proposed restriction

on trade dress protection lacked any “textual basis” and

“would undermine the purposes of the Lanham Act,” id. at

774; see also Qualitexr Co. v. Jacobson Prods. Co., 514 U.S.

159, 162 (1995) (refusing to adopt broad exclusion of colors

from trademark protection, because “[bJoth the language of

the Act and the basic underlying principles of trademark law

would seem to include color within the universe of things

that can qualify as a trademark”); cf. Moseley v. V Secret

Catalogue, Inc., 537 U.S. 418, 433 (2003) (refusing to judi-

cially modify the statutory standard for trademark dilution,

where the “text unambiguously requires a showing of actual

dilution, rather than a likelihood of dilution”). The Ninth

Circuit’s implication of an additional element of the fair use

defense should meet the same fate, because it equally “lacks

support in the words of the statute,” “renders meaningless”

the affirmative defense, and has no anchor in legislative

history or the defense’s common-law antecedents. Park N

Fly, 469 U.S. at 196-197."

A. The Text Of The Lanham Act’s Fair Use Defense Does

Not Require Proof By The Defendant Of The Absence

Of A Likelihood Of Confusion

The task of discerning the components of the fair use de-

fense “begins where all such inquiries must begin: with the

language of the statute itself.” United States v. Ron Pair

Enters., Inc., 489 U.S. 235, 241 (1989); see also Park M Fly,

469 U.S. at 194 (“Statutory construction [of the Lanham Act]

must begin with the language employed by Congress and the

assumption that the ordinary meaning of that language accu-

rately expresses the leg'slative purpose.“). Section 33 of the

Lanham Act identifies the constituent elements of a fair use

defense to trademark infringement. The defendant must

prove that its use of the

term[] or device charged to be an infringement is a use,

otherwise than as a mark, * * * of a term or device

which is descriptive of and used fairly and in good faith

only to describe the goods or services of such party, or

their geographic origin.

15 U.S.C. 1115(b)(4).*

2 Contrast Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205,

211 (2000) (adopting rule that unregistered product-design dress must

have developed secondary meaning, in part because the distinction be-

tween inherently distinctive marks and merely descriptive marks that are

protected only upon acquiring secondary meaning “has solid foundation in

the statute itself”).

13 The fair use defense takes on a simpler form when the mark consists

of an individual’s name and the defendant is simply using his own name (or

Congress thus specified three components of the fair use

defense. First, the defendant must prove that its use of the

term or device is “otherwise than as a mark” (ibid.)—that is,

the defendant must show that it is not using the otherwise

protected term or device as a means of identifying the source

of its own goods in the marketplace, see 15 U.S.C. 1127.

Second, the defendant must use the term or device descrip-

tively “only” to characterize or otherwise describe its own

goods or services. Third, the defendant’s descriptive use of

the term or device must be undertaken “fairly and in good

faith.“ 15 U.S.C. 1115(b)(4). The “fair[ness]” and “good

faith” factors consider, respectively, the objective manner

and subjective intent with which the defendant employs the

term to describe its products. See Restatement (Third) of

Unfair Competition (Restatement) § 28 emts. e and d, at 295-

296 (1992) (fairness of use considers, inter alia, where in

product packaging the term appears, its physical display,

and the commercial relevance of the term to the product;

good faith looks to whether the user intends to capitalize on

the goodwill of the trademark owner's product); EMI

Catalogue Partnership v. Hill, Holliday, Connors, Cos-

mopulos Inc., 228 F.3d 56, 66 (2d Cir. 2000)."*

The court of appeals’ requirement that the defendant

prove the absence of a likelihood of confusion makes no

the name of someone in privity with him) in his own business. See 15

U.S.C. 1115).

The question whether a term is being used “fairly * only to

describe the goods or services” (15 U.S.C. 1115(b)(4)) turns upon a factual

analysis of the physical manner and context in which the term is presented

and its objective fairness and accuracy. For that reason, the court of

appeals did not attempt to rely on that prong of the defense as the source

of its broad requirement that the defendant prove an absence of confusion

in order to establish the fair use defense. Nor, given the specificity with

which Congress elsewhere imposed proof requirements pertaining to

consumer confusion, see page 15 & n.15, infra, is there any reason to

conclude that Congress intended the phrase “fairly * * * describe(s]” to

carry that weight.

appearance in the statutory text. It simply is not one of the

elements of the fair use defense that Congress enacted, and

this Court “ordinarily resist{s] reading words or elements

into a statute that do not appear on its face.” Bates v.

United States, 522 U.S. 23, 29 (1997); see Lamie v. United

States Trustee, 124 S. Ct. 1023, 1032 (2004).

Such hesitation is particularly appropriate here, because

other provisions of the Lanham Act evidence that Congress

knows how to make consumer confusion relevant to trade-

mark claims when it wants to. See 15 U.S.C. 1051(a)(3)(D)

(application to register trademark requires averment that no

one else has the right to use the mark in a manner “as to be

likely * * * to cause confusion, or to cause mistake, or to

deceive”), and (b)(3)(D) (same for application based on bona

fide intention to use trademark). Where Congress

“includes particular language in one section of a statute but

omits it in another section of the same Act, it is generally

presumed that Congress acts intentionally and purposely in

the disparate inclusion or exclusion,” Beach v. Ocwen

Federal Bank, 523 U.S. 410, 418 (1998) (internal quotation

marks omitted), and the Court’s “duty [is] to refrain from

reading” such a requirement back “into the statute when

Congress has left it out,” Keene Corp. v. United States, 508

U.S. 200, 208 (1993).”°

15 See also 15 U.S.C. 1052(d) (prohibiting registration of trademarks

that “so resemblel]“ existing trademarks as “to cause confusion, or to

cause mistake, or to deceive”), 1066 (same for declaration of interference

with a registered trademark by the Patent and Trademark Office), 1114(1)

(proof of use in a manner “to cause confusion, or to cause mistake, or to

deceive” is an element of trademark infringement), 1125(a)(1)(A) (same for

proof of unfair competition claim), 1127 (same for definition of “colorable

imitation”).

16 The fair use defense, as designed by Congress, conforms with the

United States’ obligations under the World Trade Organization’s Agree-

ment on Trade-Related Aspects of Intellectual Property Rights, Apr. 15,

1994, Annex 1C, Art. 17, 33 I.L.M. 1197, 1204 (1994) (“Members may

provide limited exceptions to the rights conferred by a trademark, such as

B. The Context And Overall Structure Of The Lanham

Act’s Fair Use Defense Demonstrate That The Defen-

dant Need Not Prove The Absence Of A Likelihood Of

Confusion

“Language, of course, cannot be interpreted apart from

context.” Smith v. United States, 508 U.S. 223, 229 (1993).

The overall structure and design of Section 1115’s affirma-

tive defense provision reveals the unworkability of the court

of appeals’ non-textual requirement that defendants prove

an absence of likely confusion.

1. Requiring Proof Of Non-Confusion Would Render

The Affirmative Defense Superfluous ,

Section 1115(b) establishes a framework for proving and

defending against trademark infringement claims when a

trademark has attained incontestable status. That Section

imposes on the plaintiff the burden of establishing, first, its

right to exclude others from use of the registered mark (an

“exclusive right” that is conclusively proven by its

incontestable status), and, secondly, “proof of infringement

as defined in section 1114”—that is, proof that the defen-

dant’s use “is likely to cause confusion, or to cause mistake,

fair use of descriptive terms, provided that such exceptions take account

of the legitimate interests of the owner of the trademark and of third

parties.”). Other countries’ trademark laws similarly establish a fair use

exception, and they do not appear to include proof of non-confusion as an

element of the defense. See, e.g., European Council Regulation No. 40/94

on the Community Trade Mark, Dec. 20, 1993, Art. 12 (“Limitation of the

effects of a Community trade mark—A Community trade mark shall not

entitle the proprietor to prohibit a third party from using in the course of

trade: * * * (b) indications concerning the kind, quality, quantity,

intended purpose, value, geographical origin, the time of production of the

goods or of rendering of the service, or other characteristics of the goods

or service.”); Australian Trade Marks Act of 1995, as amended in

2003, Sec. 122 (LA] person does not infringe a registered trade mark

when: * * * (b) the person uses a sign in good faith to indicate: (i) the

kind, quality, quantity, intended purpose, value, geographical origin, or

some other characteristic, of goods or services.”).

or to deceive.” 15 U.S.C. 1115(b) (cross-referencing 15

U.S.C. 1114(1))." Once the plaintiff has met that burden,

Section 1115(b) instructs that the plaintiff's case “shall be

subject to the following [nine] defenses or defects,” one of

which is the fair use defense.

Because the party asserting an infringement claim must

always prove a likelihood of confusion in order to prevail,

neither the fair use defense nor any of the other defenses in

Section 1115(b) would be needed if there were no such

likelihood of confusion. The plaintiff’s case would fail on its

own terms. The defenses to trademark infringement estab-

lished by Congress are, by their very design, intended to

apply after the plaintiff has introduced prima facie proof of a

likelihood of confusion. Construing the statutory fair use

defense to require disproving the very predicate that trig-

gers application of the defense in the first place thus would

empty the defense of significance.” As the Fourth Circuit

explained in rejecting the Ninth Circuit’s augmentation of

the fair use defense:

It defies logic to argue that a defense may not be

asserted in the only situation where it even becomes

relevant. If a fair-use defense is not to be considered

when there is a likelihood of confusion, then it is never to

be considered. * * * A defense which can be considered

only when the prima facie case has failed is no defense at

all.

Shakespeare Co. v. Silstar Corp., 110 F.3d 234, 243 (4th Cir.

1997), cert. denied, 522 U.S. 1046 (1998); see also Soweco,

17 See also, e.g., 15 U.S.C. 1115(a), 1125(a)(1)(A); Two Pesos, 505 U.S. at

768, 769; Packman v. Chicago Tribune Co., 267 F.3d 628, 638 & n.8 (7th

Cir. 2001); Time, Inc. v. Petersen Publ’g Co., 173 F.3d 113, 117 (2d Cir.

1999).

18 See Black’s Law Dictionary 55 (5th ed. 1979) (defining “affirmative

defense” as a “new matter which, assuming the complaint to be true,

constitutes a defense to it”).

Inc. v. Shell Oil Co., 617 F.2d 1178, 1189 n.30 (5th Cir. 1980)

(Even if there were a likelihood of confusion, the defen-

dant would still be entitled to its fair-use defense, so long as

it had met the requirements of § 1115(b)(4). To hold other-

wise would effectively eviscerate the fair-use defense.”),

cert. denied, 450 U.S. 981 (1981); ef. Mil-Mar Shoe Co. v.

Shonac Corp., 75 F.3d 1153, 1161 n.17 (7th Cir. 1996) (state-

law fair use defense “would serve no purpose” if the

defendant had to prove no likelihood of confusion; under such

a scheme, “either there is a likelihood of confusion, which

would preclude the defense, or there is no likelihood of confu-

sion, in which case the defense is unnecessary”).

It is a “settled rule” that statutes “must, if possible, be

construed in such fashion that every word has some opera-

tive effect.” United States v. Nordic Village, Inc., 503 U.S.

30, 36 (1992). The court of appeals’ requirement that defen-

dants disprove any likelihood of confusion in order to estab-

lish the fair use defense, however, leaves that statutory de-

fense “with no job to do,” Doe v. Chao, 124 S. Ct. 1204, 1210

(2004), and it must therefore be rejected.

2. The Court Of Appeals’ Policy Rationale Fails

The court of appeals failed to explain why any defendant

who can prove that there is no likelihood of confusion, and

thus can defeat the plaintiffs case on its own terms, would

bother assuming the difficult task of proving the other

statutory elements of the fair use defense. Nor did it explain

19 See also Cosmetically Sealed Indus. v. Chesebrough-Pond’s USA

Co., 125 F.3d 28, 31 (2d Cir. 1997); Sun mark, Inc. v. Ocean Spray Cran-

berries, Inc., 64 F.3d 1055, 1059 (7th Cir. 1995). Even if the fair use

defense were deemed only to rebut the conclusive evidentiary effect of

registration, rather than to provide a substantive defense on the merits of

an infringement claim, see n. 8, supra, the court of appeals’ decision would

still render the defense superfluous. That is because it will always be

easier to rebut the plaintiff’s evidence of likely confusion with proof of

non-confusion than to prove all the elements of the fair use defense in

addition to proving non-confusion.

why Congress would enact an affirmative defense that, in

practice, “accomplishes nothing.” Doe v. Chao, 124 S. Ct. at

1210. The sole justification the court offered for supplement-

ing the fair use defense with an unwritten element is the

perceived need to prevent consumer confusion. The

authority for the court’s holding in that regard (Pet. App.

17a) traces back to the Fifth Circuit’s ruling in Zatarains,

Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (1983).”

Zatarains, in turn, simply cites and follows, without

elaboration or analysis, the interpretation of the fair use

defense advocated by Thomas McCarthy in his treatise on

trademark law. Id. at 791, 796. That treatise opines that a

use “should be deemed ‘fair’ only if it is non-confusing”

“(bjlecause a paramount goal of the law of trademarks is to

prevent likely confusion.” 2 J. Thomas McCarthy, McCarthy

on Trademarks & Unfair Competition (McCarthy) § 11:47,

at 11-95 (2003).

20 The court of appeals (Pet. App. 17a) cited and followed dicta in

Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir. 2002). Cairns,

in turn, relies on Transgo, Inc. v. Ajac Transmission Parts Corp., 911

F.2d 363 (9th Cir. 1990), and Lindy Pen Co. v. Bic Pen Corp., 725 F. 2d

1240, 1248 (9th Cir. 1984), cert. denied, 469 U.S. 1188 (1985). Lindy Pen

does not support Cairns’ dicta. See 725 F. 2d at 1248 (noting only that the

Ninth Circuit had yet to interpret the fair use defense to apply when a

likelihood of confusion is showy, and then denying the defense on alter-

native grounds). Transgo, however, does appear to hold that the fair use

defense will apply only if the challenged “‘use does not lead to consumer

confusion, relying entirely on Zatarains, without providing any further

analysis. See 911 F.2d at 365 n.2.

2 For its part, the Fifth Circuit has authored conflicting views on

whether the fair use defense applies when the challenged use gives rise to

a likelihood of confusion. Compare Zatarains, supra, with Soweco, 617

F.2d at 1189 n.30 (alternative holding that fair use defense would apply

“even if there were a likelihood of confusion”), Sugar Busters, LLC v.

Brennan, 177 F.3d 258, 271 (5th Cir. 1999) (dicta adopting Soweco view);

Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 545 n.12 (5th Cir. 1998)

(same), abrogated in part on other grounds, TrafFiz Devices, Inc. v.

Marketing Displays, Inc., 532 U.S. 23 (2001).

That assertion is simply too thin a reed on which to hang

judicial emendation of statutory text, as other authorities

have recognized.” First, while averting consumer confusion

is undoubtedly one important congressional purpose, see,

e.g., 15 U.S.C. 1127, “the Lanham Act * * * has never pro-

vided absolute protection against all consumer confusion.”

Vornado Air Circulation Sys., Inc. v. Duracraft Corp., 58

F.3d 1498, 1509 (10th Cir. 1995), cert. denied, 516 U.S. 1067

(1996). Indeed, no legislation “pursues its purposes at all

costs.” Rodriguez v. United States, 480 U.S. 522, 525-526

(1987) (per curiam). “Deciding what competing values will or

will not be sacrificed to the achievement of a particular

objective is the very essence of legislative choice.” Id. at

526; see also Director, Office of Workers’ Comp. Programs v.

Newport News Shipbuilding & Dry Dock Co., 514 U.S. 122,

136 (1995) (“Every statute proposes, not only to achieve

certain ends, but also to achieve them by particular means—

and there is often a considerable legislative battle over what

those means ought to be.“). To assume, as MeCarthy's trea-

tise and the Ninth Circuit did, “that whatever furthers the

statute’s primary objective must be the law,” ultimately

“frustrates rather than effectuates legislative intent,”

Rodriguez, 480 U.S. at 526, by failing to reserve for Con-

gress the policy compromises and trade-offs inherent in the

creation of any defense to trademark infringement.

Second, to the extent that the plaintiff has chosen to use a

descriptive word as a mark, the argument overlooks the fact

that the trademark in a descriptive term attaches only to the

specialized, secondary meaning that a word has acquired,

and not to its original, primary descriptive content. See

Qualiter, 514 U.S. at 171-172; Park “N Fly, 469 U.S. at 194;

= See 3 Jerome Gilson, et al., Trademark Protection and Practice

§ 11.08{3)[(d)[i)[D}, at 11-201 to -202 (2003) (the “modern trend” is “to hold

that fair use of a term should be protected even if some confusion is

likely”) (footnote omitted); Restatement, supra, § 28 cmt. a, at 295.

. — « *

Restatement § 13 cmt. e. The fair use defense gives practical

force to that distinction by protecting the public’s right to

continue using the primary descriptive value of words and

thus to use that aspect of a word that falls outside the scope

of the trademark. The central purpose of the fair use

defense, in other words, is to protect particular descriptive

usages that are not covered by the trademark and thus are

not, by definition, infringing uses. The trademark holder

should not be able to circumvent that inherent and essential

limitation on the scope of its mark merely by showing that

some consumers might be confused. Indeed, allowing the

mark holder to establish infringement based on the purely

descriptive use of a word would expand, rather than enforce,

the holder’s existing rights in the trademark. In any event,

if consumer confusion results from the word’s descriptive

use, “that is a risk the plaintiff accepted when it decided to

identify its product with a mark that uses a well known

descriptive phrase.” Cosmetically Sealed Indus. v. Chese-

brough-Pond’s USA Co., 125 F.3d 28, 30 (2d Cir. 1997).”

Third, if the Ninth Circuit were correct that preventing

consumer confusion were the controlling imperative of trade-

mark law, then one would expect that consumer confusion

would be a component of all, or at least some, of the other

eight defenses in Section 1115(b) as well. But it is not. Not a

The fair use defense is not restricted to alleged infringements of

descriptive marks. As long as the terms of Section 1115(b)(4) are satisfied

and, in particular, the defendant's use of a term is purely descriptive, the

defense is available regardless of whether the plaintiff's mark is char-

acterized as arbitrary, suggestive, or descriptive. That is because the fair

use defense focuses on how the defendant uses a term, not how the trade-

mark holder uses it. See Brother Records, Inc. v. Jardine, 318 F.3d 900,

907 (9th Cir.), cert. denied, 124 S. Ct. 155 (2008); Car-Freshner Corp. v.

S.C. Johnson & Son, Inc., 70 F.3d 267, 269 (2d Cir. 1995); but see Institute

for Scientific Information, Inc. v. Gordon & Breach, Science Publishers,

Inc., 981 F.2d 1002, 1010 (3d Cir.) (finding that mark was “clearly descrip-

tive * * * was necessary before deciding whether defendants could avail

themselves of the fair use defense”), cert. denied, 502 U.S. 909 (1991).

single one of the other defenses requires defendants to prove

an absence of consumer confusion.

Nor would such a requirement make sense, because the

listed defenses serve important public policy goals that stand

separate and apart from any generalized interest in pre-

venting consumer confusion. The strong public interest in

preventing fraud, misrepresentation, or violations of the

antitrust laws, see 15 U.S.C. 1115(b)(1), (3), and (7), out-

weighs any countervailing interest in protecting consumers

from confusion about the source of goods. Likewise, keeping

functional devices in play and opening abandoned marks to

new, beneficial uses, see 15 U.S.C. 1115(b)(2) and (8),

enhances competition and the information available to

consumers, even if those benefits come at the price of some

consumer confusion. The equitable defenses afforded by

subsection (b)(9)—laches, estoppel, and acquiescence—also

serve distinct policy goals and have not been construed by

courts to require a showing of non-confusion by the defen-

dant, despite their broad equitable nature.

Most tellingly, the protection afforded by the fifth and

sixth defenses for innocent use of a mark in a localized area

and for a prior valid use necessarily presupposes the exis-

tence of consumer confusion because it authorizes the

defendant’s use of a term or device that both could be

identical to the registered mark and used by the defendant

as a trademark. See, e.g., United Drug Co. v. Theodore

Rectanus Co., 248 U.S. 90, 97, 103-104 (1918) (acknowledging

the confusion that arises from dual usage of a mark even in a

limited geographical area); Thrifty Rent-A-Car Sys., Inc. v.

Thrift Cars, Inc., 831 F.2d 1177, 1184 (Ist Cir. 1987) (“([WJe

recognize that some consumer confusion may result.”).

Those two defenses thus, by their very nature, embody a

level of consumer confusion that Congress considered

tolerable in light of the competing interests in protecting

innocent uses.”

And so it is with the fair use defense. Like the other

defenses surrounding it, the fair use defense effectuates

important policy interests that Congress wanted to advance

in spite of, not just in the absence of, a likelihood of consumer

confusion. See Beecham v. United States, 511 U.S. 368, 371

(1994) (the fact that “several items in a list share an attribute

counsels in favor of interpreting the other items as

possessing that attribute as well”). The fair use defense

24 Underscoring that proof of non-confusion is not a part of the other

Section 1115(b) defenses, a number of courts have allowed plaintiffs to

respond to invocations of the valid local use (Section 1115(b)(5)) or equita-

ble defenses (Section 1115(b)(9)) with evidence of consumer confusion and

then have considered the existence of such confusion in framing remedial

decrees. In so holding, however, the courts have placed the burden of

proving such confusion squarely on the plaintiff, not on the defendant.

See, e.g., Resorts of Pinehurst, Inc. v. Pinehurst Nat'l Corp, 148 F.3d 417,

423 (4th Cir.) (“strong proof of likelihood of confusion” by the plaintiff

supports issuance of an injunction notwithstanding the defendant’s proof

of laches and acquiescence), cert. dismissed, 525 U.S. 1051 (1998); TMT

North America, Inc. v. Magic Touch GmbH, 124 F.3d 876, 886 (7th Cir.

1997) (“The law therefore allows the senior user’s claim to be revived from

estoppel if the senior user can show that ‘inevitable confusion’ would

result from dual use of the marks,” but the court should “structur(e] a

remedy” that minimizles] the hardship” on both parties) (emphasis

added); SunAmerica Corp. v. Sun Life Assurance Co., 77 F. ad 1325, 1335

(11th Cir.) (the registered user must “make out a prima facie case * * *

before consideration of affirmative defenses, such as acquiescence,” and, if

the defense is established, the registered user must provel] the

inevitability of confusion” if it wishes the court to employ “traditional

equitable principles when fashioning injunctive relief”), cert. denied, 519

U.S. 822 (1996); Thrifty Rent-A-Car, 831 F.2d at 1184 & n.9 (remedial

decree regulating use of mark by innocent local user, under Section

1115(b)\(5), adequately addressed plaintiff's allegation of “substantial

consumer confusion”); Burger King v. Hoots, 403 F.2d 904, 908-909 (7th

Cir. 1968) (remedial decree adequately addressed the plaintiffs’ concerns

about confusion arising from local use of mark permitted by Section

1115(bX5) by restricting the use to a “sufficiently distinct and geogra-

phically separate market{] so that public confusion would be reduced to a

minimum”).

reflects Congress’s judgment that there is a separate and

distinct value in allowing producers to provide and con-

sumers to receive accurate and meaningful descriptions of

goods and services and thus preserving for “the public

domain language that is merely descriptive.” Park Ml,

469 U.S. at 201 (citing Hearings on H.R. 102, H.R. 5461, and

S. 895 Before the Subcomm. on Trade-Marks of the House

Comm. on Patents (H.R. 102 Hearings), 77th Cong., Ist

Sess. 110-111 (1941) (testimony of Wallace Martin, Chair,

American Bar Ass’n Trade-Mark Comm.)); see also id. at 215

(Stevens, J., dissenting) (businesses should not be able to

“claim[] the exclusive right to use words or phrases that are

a part of our common vocabulary”). The fair use defense, “in

essence, forbids a trademark registrant to appropriate a

descriptive term for his exclusive use and so prevent others

from accurately describing a characteristic of their goods.”

Soweco, 617 F.2d at 1185; see Abercrombie, 537 F.2d at 12

(“When a plaintiff has chosen a mark with some descriptive

qualities, he cannot altogether exclude some kinds of com-

peting uses even when the mark is properly on the

other eight defenses, evidences that “the Lanham Act does

not require the complete elimination of all confusion,” where

extirpating such confusion would come at the expense of

competing public interests. Thrifty Rent-A-Car, 831 T Ad at

1184. “At bottom,” the Ninth Circuit’s elevation of consumer

confusion to a singularly controlling consideration in the fair

use defense “simply disagrees with the balance struck by

Congress.” Park “N Fly, 469 U.S. at 202.

C. No Other Considerations Justify Judicial Supple-

mentation Of The Fair Use Defense Enacted By

Congress

The language and context of Section 1115(b) provide a

“straightforward” answer to the question whether the fair

use defense includes an unwritten requirement that defen-

dants prove the absence of likely confusion, and with that

“straightforward application ready to hand, statutory inter-

pretation has no business getting metaphysical.” Lexecon

Inc. v. Milberg Weiss Bershad Hynes & Lerach, 523 U.S. 26,

37 (1998). But even were the Court to consider other factors,

such as legislative history and common-law practice, none of

them would support the court of appeals’ holding.

1. Legislative History

The Ninth Circuit’s requirement that non-confusion be

proven lacks any foundation in the legislative history of the

fair use provision. While the pertinent legislative history is

sparse, this Court recognized in Park N Fly that Congress

strove to balance the interest in avoiding consumer confu-

sion against the competing public interest in preserving

descriptive words for accurate and informative use in the

marketplace. 469 U.S. at 201. In adopting the fair use

defense, Congress considered “the public viewpoint,” not

just “the trade-mark owner’s viewpoint,” and thus ensured

that “[e]verybody has got a right to the use of the English

language and * * * to assume that nobody is going to take

that English language away from him.” H.R. 102 Hearings

72 (Wallace Martin). By allowing persons other than the

trademark owner to make a fair and good faith use of such

descriptive terms for the limited purpose of describing their

own goods, Congress preserved “the trade-mark ownerl's]

absolute and complete control over [the words] as a trade-

mark,” while allowing others “to use the same [words] in a

wholly incidental and descriptive manner in describing

the[ir) product[s].” Id. at 70 (testimony of Karl Pohl, U.S.

Trade Mark Ass’n); see also Park VF, 469 U.S. at 201

(fair use defense was designed to preserve for “the public

domain language that is merely descriptive”).

Indeed, had Congress wanted to make consumer confusion

an element of the fair use defense, it would have enacted one

of the earlier versions of the fair use defense, which required

a defendant to show that its descriptive use of the term was

“not likely to deceive the public.” H.R. 5461, 77th Cong., Ist

Sess. § 33(b)(4), at 28 (1941). Congress, however, rejected

that language. See H.R. 102 Hearings 38, 44, 61; see also id.

at 167-168 (unenacted proposals that fair use defense require

that the use be “made in a manner not calculated to deceive

the public” or “not likely to deceive the public”) (Prof. Milton

Handler). The court of appeals’ reading of the statute thus

accords with Congress’s “discarded draftſs j.“ John Hancock

Mut. Life Ins. Co. v. Harris Trust & Sav. Bank, 510 U.S. 86,

101 (1993). But it is the statutory text that Congress

actually adopted that establishes the elements of the fair use

defense.

2. Common Law

The court of appeals’ holding that the fair use defense

requires proof of non-confusion likewise lacks any foundation

in the common law. Indeed, the fair use defense itself has a

very limited common-law pedigree because the common law

generally did not afford trademark protection to descriptive

marks. See Armstrong Paint & Varnish Works v. Nu-

Enamel Corp., 305 U.S. 315, 335 (1938); 1 McCarthy, supra,

§ 5:3, at 5-8; see also Franklin Knitting Mills, Inc. v.

Fashionit Sweater Mills, Inc., 297 F. 247, 248 (S.D.N.Y.

1923) (Learned Hand, J.) (“[TJhe validity of the mark ends

where suggestion ends and description begins.”), aff'd, 4

F. 2d 1018 (2d Cir. 1925).

The common law, however, did afford limited trademark

protection to descriptive terms that had acquired a “secon-

dary meaning”—that is, descriptive terms that had devel-

oped a specialized public association between the word and

the trademark holder’s products. The protection afforded

such marks presaged the fair use defense of Section 1115(b)

by providing “protection against [the words’) unfair use as a

trade-mark” only. Armstrong Paint, 305 U.S. at 335. But

the common law did “not confer a monopoly on the use of

the words” themselves. Ibid.; ef. Thaddeus Davids Co. v.

Davids, 233 U.S. 461, 470 (1914) (descriptive trademarks

with secondary meaning recognized as marks only “in this

limited character”). Consequently, when “marks consist[ed]

of names or terms having double significance,” which were

“susceptible of legitimate uses with respect to their primary

[i.e., descriptive] sense,” this Court recognized that another’s

non-trademark use of such names or terms would constitute

infringement only if it was not undertaken in good faith. /d.

at 470 (unfair competition resulted only if use of the descrip-

tive term was “calculated to mislead the public with respect

to the origin or ownership of the goods and thus to invade

the right of the registrant”).

Consistent with the limited protection afforded descrip-

tive trademarks, this Court’s pre-Lanham Act decisions

indicate that a fair, descriptive use of language contained in a

mark is permissible regardless of whether it generates some

consumer confusion.

The use of a similar name by another to truthfully de-

scribe his own product does not constitute a legal or

moral wrong, even if its effect be to cause the public to

mistake the origin or ownership of the product.

William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526,

528 (1924); see Howe Scale Co. v. Wyckoff, Seamans, &

Benedict, 198 U.S. 118, 140 (1905) (Courts will not inter-

fere where the only confusion, if any, results from a similar-

ity of names, and not from the manner of the use. The

essence of the wrong in unfair competition consists in the

sale of the goods of one manufacturer or vendor for those of

another; and if defendant conducts its business as not to

palm off its goods as those of complainant, the action

fails.”).”

25 See also Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S.

446, 453 (1911) No one can appropriate as a trade-mark a generic name

or one descriptive of an article of trade, its qualities, ingredients, or

The Restatement of the Law of Unfair Competition con-

tinues that trend, specifically refusing to engraft onto the

fair use defense a requirement that the defendant prove non-

confusion. Quite the opposite, the fair use defense “can be

applicable even if the trademark owner presents evidence

sufficient to prove a likelihood of confusion.” Restatement,

supra, & 28 emt. b, at 295. As long as

the manner of use by the defendant is reasonable in light

of the commercial justification for the use, the possibility

or even certainty that some prospective purchasers will

perceive the term as an ind‘cation of source despite the

reasonableness of the defendant’s use is not sufficient to

deprive the defendant of the right to employ the term in

its descriptive sense.

Ibid. In short, “a defendant who uses a descriptive term

fairly and in good faith to describe its goods or services is not

liable for infringement even if some residual confusion is

likely.” Ibid.

The court of appeals thus erred in concluding, without

textual support, that Congress’s statutory protection for fair

use is more grudging than the common law. Cf. Green v.

Bock Laundry Machine Co., 490 U.S. 504, 521 (1989) (“A

party contending that legislative action changed settled law

has the burden of showing that the legislature intended such

a change.”).

Finally, the Ninth Circuit’s approach makes the litigation

of trademark infringement claims unduly cumbersome. As

the Ninth Circuit noted, determining whether there is a

likelihood of consumer confusion is a fact-intensive inquiry

that infrequently lends itself to summary adjudication. Pet.

characteristics, or any sign, word, or symbol which, from the nature of the

fact it is used to signify, others may employ with equal truth.“) but ef.

Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924) (“When the mark is

used in a way that does not deceive the public we see no such sanctity in

the word as to prevent its being used to tell the truth. It is not taboo.”).

App. 18a. If consumer confusion were to become a com-

ponent both of the plaintiff's opening case and the defen-

dant’s affirmative defense, summary judgment would

become a rare event in fair use cases. Indeed, the burden on

defendants would be particularly onerous because the

question not only is fact intensive, but also requires proof of

a negative—the absence of a likelihood of confusion. “Since

as a practical matter it is never easy to prove a negative, it is

hardly likely that conclusive factual data could ever be

assembled.” Elkins v. United States, 364 U.S. 206, 218

(1960). It is unlikely that Congress would legislate such an

unwieldy proof scheme in an Act designed to make

trademark protection “simplfer], less expensive and more

certain.” H.R. Rep. No. 944, 76th Cong., Ist Sess. 2 (1939);

see Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S.

205, 214 (2000) (noting the anti-competitive effects that

trademark litigation can have); H.R. 102 Hearings 67

(Wallace Martin) (the fair use defense should be easy to

resolve because “it ought not to be a very difficult thing for a

court to determine whether a word is merely descriptive and

is used in good faith”).

Nor is the risk of consumer confusion arising from genuine

fair uses so significant as to warrant imposition of a judicially

crafted remedy. The self-limiting terms of the fair use

defense ameliorate the risk of confusion by restricting the

defendant’s use of a term to a purely descriptive and non-

trademark function that is undertaken fairly and in good

faith. Because the use is circumscribed, most fair uses will

“be unlikely as a practical matter to create a likelihood of

_ confusion.” Restatement, supra, § 28 cmt. e, at 295. More-

over, evidence of consumer confusion introduced by the

plaintiff, when combined with evidence of a defendant’s par-

ticular manner of using or displaying a term, may indicate

that the defendant is using the term as a trademark and thus

that the fair use defense fails. See PACCAR, Inc. v. Tele-

Scan Techs., LLC, 319 F.3d 248, 255 (6th Cir. 2003);

Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d

1055, 1059 (7th Cir. 1995). But forcing defendants to prove

the absence of consumer confusion has no place in the

carefully crafted affirmative defense for fair use that Con-

gress enacted. “To limit this statute in the manner now

asked for would be to make a new law, not to enforce an old

one. This is no part of [the Court’s] duty.” United States v.

Reese, 92 U.S. 214, 221 (1875).

CONCLUSION

The judgment of the court of appeals should be reversed

and the case should be remanded for further proceedings

consistent with this Court’s decision.

Respectfully submitted.

THEODORE B. OLSON

Solicitor General

PETER D. KEISLER ,

JAMES A. TOUPIN — —

General Counsel THOMAS ee | N

JOHN M. WHEALAN 1 —

Solicitor ATRICIA A. *

Assistant to the Solicitor

CYNTHIA C. LYNCH —

NANCY C. SLUTTER ANTHONY J. STEINMEYER

Associate Solicitors ANTHONY A. YANG

Patent and Trademark Office Attorneys

APRIL 2004

—

APPENDIX

The Trademark Act of 1946, ch. 540, 60 Stat. 427, as

amended, provides in relevant part, as codified in Title 15,

United States Code:

§ 1065. Incontestability of right to use mark under

certain conditions

Except on a ground for which application to cancel may be

filed at any time under paragraphs (3) and (5) of section 1064

of this title, and except to the extent, if any, to which the use

of a mark registered on the principal register infringes a

valid right acquired under the law of any State or Territory

by use of a mark or trade name continuing from a date prior

to the date of registration under this chapter of such

registered mark, the right of the registrant to use such

registered mark in commerce for the goods or services on or

in connection with which such registered mark has been in

continuous use for five consecutive years subsequent to the

date of such registration and is still in use in commerce, shall

be incontestable: Provided, That—

(1) there has been no final decision adverse to regis-

trant’s claim of ownership of such mark for such goods or

services, or to registrant’s right to register the same or to

keep the same on the register; and

(2) there is no proceeding involving said rights pending

in the Patent and Trademark Office or in a court and not

finally disposed of; and

(3) an affidavit is filed with the Director within one year

after the expiration of any such five-year period setting forth

those goods or services stated in the registration on or in

connection with which such mark has been in continuous use

for such five consecutive years and is still in use in

(la)

commerce, and other matters specified in paragraphs (1) and

(2) of this section; and

(4) no incontestable right shall be acquired in a mark

which is the generic name for the goods or services or a

portion thereof, for which it is registered.

Subject to the conditions above specified in this section,

the incontestable right with reference to a mark registered

under this chapter shall apply to a mark registered under

the Act of March 3, 1881, or the Act of February 20, 1905,

upon the filing of the required affidavit with the Director

within one year after the expiration of any period of five

consecutive years after the date of publication of a mark

under the provisions of subsection (c) of section 1062 of this

title.

The Director shall notify any registrant who files the

above-prescribed affidavit of the filing thereof.

* * * * *

51114. Remedies; infringement; innocent infringement

by printers and publishers

(1) Any person who shall, without the consent of the

registrant—

(a) use in commerce any reproduction, counterfeit,

copy, or colorable imitation of a registered mark in

connection with the sale, offering for sale, distribution, or

advertising of any goods or services on or in connection with

which such use is likely to cause confusion, or to cause

mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate

a registered mark and apply such reproduction, counterfeit,

copy, or colorable imitation to labels, signs, prints, packages,

wrappers, receptacles or advertisements intended to be used

in commerce upon or in connection with the sale, offering for

sale, distribution, or advertising of goods or services on or in

connection with which such use is likely to cause confusion,

or to cause mistake, or to deceive,

shall be liable in a civil action by the registrant for the

remedies hereinafter provided. Under subsection (b) hereof,

the registrant shall not be entitled to recover profits or

damages unless the acts have been committed with

knowledge that such imitation is intended to be used to

cause confusion, or to cause mistake, or to deceive.

As used in this paragraph, the term “any person” includes

the United States, all agencies and instrumentalities thereof,

and all individuals, firms, corporations, or other persons

acting for the United States and with the authorization and

consent of the United States, and any State, any

instrumentality of a State, and any officer or employee of a

State or instrumentality of a State acting in his or her official

capacity. The United States, all agencies and

instrumentalities thereof, and all individuals, firms,

corporations, other persons acting for the United States and

with the authorization and consent of the United States, and

any State, and any such instrumentality, officer, or em-

ployee, shall be subject to the provisions of this chapter in

the same manner and to the same extent as any

nongovernmental entity.

(2) Notwithstanding any other provision of this chapter,

the remedies given to the owner of a right infringed under

this chapter or to a person bringing an action under section

1125(a) or (d) of this title shall be limited as follows:

(A) Where an infringer or violator is engaged solely

in the business of printing the mark or violating matter

for others and establishes that he or she was an innocent

infringer or innocent violator, the owner of the right

infringed or person bringing the action under section

1125(a) of this title shall be entitled as against such

infringer or violator only to an injunction against future

printing.

(B) Where the infringement or violation complained

of is contained in or is part of paid advertising matter in

a newspaper, magazine, or other similar periodical or in

an electronic communication as defined in section

2510(12) of Title 18, the remedies of the owner of the

right infringed or person bringing the action under

section 1125(a) of this title as against the publisher or

distributor of such newspaper, magazine, or other

similar periodical or electronic communication shall be

limited to an injunction against the presentation of such

advertising matter in future issues of such newspapers,

magazines, or other similar periodicals or in future

transmissions of such electronic communications. The

limitations of this subparagraph shall apply only to

innocent infringers and innocent violators.

owner of the right infringed or person bringing the

action under section 1125(a) of this title with respect to

an issue of a newspaper, magazine, or other similar

periodical or an electronic communication containing

infringing matter or violating matter where restraining

the dissemination of such infringing matter or violating

matter in any particular issue of such periodical or in an

electronic communication would delay the delivery of

such issue or transmission of such electronic

communication after the regular time for such delivery

or transmission, and such delay would be due to the

method by which publication and distribution of such

periodical or transmission of such electronic

communication is customarily conducted in accordance

with sound business practice, and not due to any method

or device adopted to evade this section or to prevent or

delay the issuance of an injunction or restraining order

with respect to such infringing matter or violating

matter.

(Did) A domain name registrar, a domain name

registry, or other domain name registration authority

that takes any action described under clause (ii)

affecting a domain name shall not be liable for monetary

relief or, except as provided in subclause (II), for

injunctive relief, to any person for such action,

regardless of whether the domain name is finally

determined to infringe or dilute the mark.

(II) A domain name registrar, domain name registry, or

other domain name registration authority described in

6a 7a

(iv) If a registrar, registry, or other registration

authority takes an action described under clause (ii)

subclause (I) may be subject to injunctive relief only if such

registrar, registry, or other registration authority has—

(aa) not expeditiously deposited with a court, in

which an action has been filed regarding the disposition

of the domain name, documents sufficient for the court

to establish the court’s control and authority regarding

the disposition of the registration and use of the domain

name;

(bb) transferred, suspended, or otherwise modified

the domain name during the pendency of the action,

except upon order of the court; or

(cc) willfully failed to comply with any such court

order.

(ii) An action referred to under clause (iI) is any

action of refusing to register, removing from registration,

transferring, temporarily disabling, or permanently

canceling a domain name—

(I) in compliance with a court order under section

1125(d) of this title; or

(II) in the implementation of a reasonable policy by

such registrar, registry, or authority prohibiting the

registration of a domain name that is identical to,

confusingly similar to, or dilutive of another’s mark.

(iii) A domain name registrar, a domain name

registry, or other domain name registration authority

shall not be liable for damages under this section for the

registration or maintenance of a domain name for

another absent a showing of bad faith intent to profit

from such registration or maintenance of the domain

name.

based on a knowing and material misrepresentation by

any other person that a domain name is identical to,

confusingly similar to, or dilutive of a mark, the person

making the knowing and material misrepresentation

shall be liable for any damages, including costs and

attorney’s fees, incurred by the domain name registrant

as a result of such action. The court may also grant

injunctive relief to the domain name registrant,

including the reactivation of the domain name or the

transfer of the domain name to the domain name

registrant.

(v) A domain name registrant whose domain name

has been suspended, disabled, or transferred under a

policy described under clause (ii II) may, upon notice to

the mark owner, file a civil action to establish that the

registration or use of the domain name by such

registrant is not unlawful under this chapter. The court

may grant injunctive relief to the domain name

registrant, including the reactivation of the domain

name or transfer of the domain name to the domain

name registrant.

(E) As used in this paragraph

(i) the term “violator” means a person who

violates section 1125(a) of this title; and ‘

(ii) the term “violating matter” means

matter that is the subject of a violation under section

1125(a) of this title.

§ 1115. Registration on principal register as evidence

of exclusive right to use mark; defenses

(a) Evidentiary value; defenses

Any registration issued under the Act of March 3, 1881, or

the Act of February 20, 1905, or of a mark registered on the

principal register provided by this chapter and owned by a

party to an action shall be admissible in evidence and shall be

prima facie evidence of the validity of the registered mark

and of the registration of the mark, of the registrant’s

ownership of the mark, and of the registrant’s exclusive

right to use the registered mark in commerce on or in

connection with the goods or services specified in the

registration subject to any conditions or limitations stated

therein, but shall not preclude another person from proving

any legal or equitable defense or defect, including those set

forth in subsection (b) of this section, which might have been

asserted if such mark had not been registered.

(b) Incontestability; defenses

To the extent that the right to use the registered mark

has become incontestable under section 1065 of this title, the

registration shall be conclusive evidence of the validity of the

registered mark and of the registration of the mark, of the

registrant’s ownership of the mark, and of the registrant’s

exclusive right to use the registered mark in commerce.

Such conclusive evidence shall relate to the exclusive right

to use the mark on or in connection with the goods or

services specified in the affidavit filed under the provisions

of section 1065 of this title, or in the renewal application filed

under the provisions of section 1059 of this title if the goods

or services specified in the renewal are fewer in number,

subject to any conditions or limitations in the registration or

in such affidavit or renewal application. Such conclusive

evidence of the right to use the registered mark shall be

subject to proof of infringement as defined in section 1114 of

this title, and shall be subject to the following defenses or

defects:

(1) That the registration or the incontestable right to use

the mark was obtained fraudulently; or

(2) That the mark has been abandoned by the registrant;

(3) That the registered mark is being used by or with the

permission of the registrant or a person in privity with the

registrant, so as to misrepresent the source of the goods or

services on or in connection with which the mark is used; or

(4) That the use of the name, term, or device charged to

be an infringement is a use, otherwise than as a mark, of the

party’s individual name in his own business, or of the

individual name of anyone in privity with such party, or of a

term or device which is descriptive of and used fairly and in

good faith only to describe the goods or services of such

party, or their geographic origin; or

(5) That the mark whose use by a party is charged as an

infringement was adopted without knowledge of the

registrant’s prior use and has been continuously used by

such party or those in privity with him from a date prior to

(A) the date of constructive use of the mark established

pursuant to section 1057(c) of this title, (B) the registration

of the mark under this chapter if the application for

registration is filed before the effective date of the

Trademark Law Revision Act of 1988, or (C) publication of

the registered mark under subsection (c) of section 1062 of

this title: Provided, however, That this defense or defect

shall apply only for the area in which such continuous prior

use is proved; or

10a

(6) That the mark whose use is charged as an

infringement was registered and used prior to the

registration under this chapter or publication under

subsection (e) of section 1062 of this title of the registered

mark of the registrant, and not abandoned: Provided,

however, That this defense or defect shall apply only for the

area in which the mark was used prior to such registration or

such publication of the registrant’s mark; or

(7) That the mark has been or is being used to violate the

antitrust laws of the United States; or

(8) That the mark is functional; or

(9) That equitable principles, including laches, estoppel,

and acquiescence, are applicable.

* * * * *

lla

§ 1127. Construction and definitions; intent of

chapter

In the construction of this chapter, unless the contrary is

plainly apparent from the context—

R X ee *

The term “trademark” includes any word, name, symbol,

or device, or any combination thereof

(1) used by a person, or

(2) which a person has a bona fide intention to use in

commerce and applies to register on the principal

to identify and distinguish his or her goods, including a

unique product, from those manufactured or sold by others

and to indicate the source of the goods, even if that source is

unknown. Titles, character names, and other distinctive

featuers of radio or television programs may be registered as

service marks notwithsanding that they, or the programs,

may advertise the goods of the sponsor.

E * * „

The intent of this chapter is to regulate commerce within

the control of Congress by making actionable the deceptive

and misleading use of marks in such commerce; to protect

registered marks used in such commerce from interference

by State, or territorial legislation; to protect persons

engaged in such commerce against unfair competition; to

prevent fraud and deception in such commerce by the use of

reproductions, copies, counterfeits, or colorable imitations of

registered marks; and to provide rights and remedies

stipulated by treaties and conventions respecting trade-

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marks, trade names, and unfair competition entered into

between the United States and foreign nations.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.