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

Supreme Coun. US”

( FILED

APR 19 2004

No. 03-409 OFFICE OF THE CLERK

IN THE

Supreme Court of the United States

KP PERMANENT MAKE-UP, INC..,

Petitioner,

V.

LASTING IMPRESSION INC.

AND MCN INTERNATIONAL I, INC.,

Respondents.

On Writ of Certiorari to the

United States Court of Appeals for the Ninth Circuit

BRIEF OF AMICUS CURIAE

THE INTERNATIONAL TRADEMARK ASSOCIATION

IN SUPPORT OF PETITIONER

WILLIAM D. RAMAN*

THEODORE H. DAVIS, JR.

SHERRI L. EASTLEY

OLIVIA MARIA BARATTA

1133 Avenue of the Americas

New York, New York 10036-6710

(212) 768-9887

Counsel for Amicus Curiae

The International Trademark

*Counsel of Record Association

ij

4

19

PA

TABLE OF CONTENTS

STATEMENT OF INTEREST OF THE AMICUS

I.

Il.

th -

TABLE OF AUTHORITIES

PAGE(S)

Cases

Anti-Monopoly, Inc. v. Gen. Mills Fun Group, 684

F.2d 1316 (Seda Civ. BSGZ) ..cccccccccocccesesseesssiunssnniennannenann 3

Armstrong Paint & Varnish Works v. Nu-Enamel

Corp., 305 U.S. 32S (29SG) ....cccsesocsessesecessnnssaninanninn 8, 15

Bauer Lamp Co. v. Shaffer, 941 F.2d 1165 (11th

Cie. 1991) (Or CRTEREI) .0cccceccsceccsccsccescssnesenssnsinnnennennnan 17

Conopco, Inc. v. May Dep't Stores Co., 46 F.3d

1556 (Red. Cig. 1996 )...<00ccccccssesscsesoscocntessnsanasannininnnnninnnnnnn 3

Cosmetically Sealed Indus. v. Chesebrough-

Pond’s USA Co., 125 F.3d 28 (2d Cir. 1997)...............0008 18

Dastar Corp. v. Twentieth Century Fox Film

Corp. $39 U.S. 23 (20GB) ..00.:20cescerseseseesesenistensneniniannnnn 3

Del. & Hudson Canal Co. v. Clark, 80 U.S. (13

Well) 32.2 (2G 72)...c0ccccccccecescsessssssesconsnsnsneneannn passim

Dickinson v. Zurko, 527 U.S. 150 (1999) woo eeeeeeeeeeeees 3

Estate of P. D. Beckwith, Inc. v. Comm'r of

Parents, 252 U.S. S36 (1 DBR penevescsecccesccscresssennnanne 7

Fla. Prepaid Postsecondary Educ. Expense Bd. v.

College Sav. Bank, 527 U.S. 627 (1999) ......csccceseeseeseeeeees 3

Gen. Conf. Corp. of Seventh Day Adventists v.

Perez, 97 F. Supp. 2d 1154 (S.D. Fla. 2000)...............00... 18

In re Borden, Inc., 92 F.T.C. 669 (1978), aff'd sub

nom. Borden, Inc. v. Fed. Trade Comm'n, 674

F.2d 498 (6th Cir. 1982), vacated and

remanded, 461 U.S. 940 (1983)..........ccsssccseseessseeeesseeeneenees 3

K Mart Corp. v. Cartier, Inc., 486 U.S. 281 (1988) ..........2+ 3

il

Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366

EEL TL AE 9

Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111

A 8,9

KP Permanent Make-Up, Inc. v. Lasting

Impression I, Inc., 328 F.3d 1061 (9th Cir.

2003), cert. granted, 124 S. Ct. 981 (2004)... 17

Lawrence Mfg. Co. v. Tenn. Mfg. Co., 138 U.S.

LAE 9

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

SII ccsncensenuceneneonnsesonsccesocees 3

Nat'l Conf. of Bar Examiners v. Multistate Legal

Studies, Inc., 692 F.2d 478 (7th Cir. 1982) ..........cccccccceeseeees 9

Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469

EEL 9

Preferred Risk Mut. Ins. Co. v. United States, 86

a 3

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

EE SELL LD 3

Ralston Purina Co. v. On-Cor Frozen Foods, Inc.,

TC TE, [UTED cccscsscssseccsscessessesssssessssseeosecees 3

Real Estate Corp. v. Nev. Real Estate Advisory

Comm'n, 448 F. Supp. 1237 (D. Nev. 1978),

ee 3

Redd v. Sheil Oil Co., 524 F.2d 1054 (10th Cir.

ee 3

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

i eatncrnarcensescsananscnecs 15,17

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

“ne 7,11, 13

ill

TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532

aii Aa ear ccicnninitsicehiienieteiaciadeitemsacaahinmeitanaedniatnastaaaatiendiimaiiaiiiadses 3

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

Fae ei cvsecnsusiecnsenensinpinseectiaiiiaiiisieitainiuiiaaiaaiaiaiaataitaiiaiusiigeanial 3

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

TIT EITITETE cosccnercnemmtennieansuiniiaieniditinemniaaiemeiianaiiiiemibinainnaeas 3

WarnerVision Entm't Inc. v. Empire of Carolina,

Te OS se Ke 3

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

Sci: SI TITIIITID ircisesisstdenisitariantentimndannsmminsemeneidiea 7,11, 13,14

World Carpets, Inc. v. Dick Littrell’s New World

Carpets, 436 F.2d 482 (Sth Cir. 1971).......ccccccccsseeseeeeseeees 18

Statutes

hte PM 0 ee 8,9

BS ULE. 6 CEP CD ccccccnsstccnseniccenecscmnsenicmsesemessnennsees 9

o)th Ta. ee 5,10

DS CEE. 6 BOER Go cecsccscsccncsccscensccnessscssetsentiomnmnnses 9

Cpt i hi). 00 passim

oii id b> 5,10

BO TEBE. © BOTT Ge ceceenrncerescentncrsseneniciinmnnianniats 15

Other Authorities

134 Cong. Rec. $16974 (daily ed. Oct. 20, 1988)

(statement of Sen. DeComncimi)................cccccceeeeeereerrreeeeeeees 4

S. Rep. No. 100-515 (1988), reprinted in 1988

ADs HE ccccnccinsiscinciecataniiinsishiaiiapabiaebiiiiiiaegitiiiaadainaasil 16

Trademark Amendments Act of 1999, Pub. L. No.

Bb) FP EE 4

iv

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

100-667, 102 Stat. 3935 (1988) o.oo ccccccccccccccesceseeeeeceeesee.

Trademark Law Treaty Implementation Act, Pub.

L. No. 105-330, 112 Stat. 3064 (1998)

ihe 2 2

IN THE

SUPREME COURT OF THE UNITED STATES

No. 03-409

KP Permanent Make-Up, Inc.,

Petitioner,

—V ——

Lasting Impression Inc. and MCN International I Inc.,

Respondents.

ON WRIT OF CERTIORARI TO THE UNITED STATES

COURT OF APPEALS FOR THE NINTH CIRCUIT

BRIEF OF AMICUS CURIAE

THE INTERNATIONAL TRADEMARK ASSOCIATION

IN SUPPORT OF PETITIONER

INTRODUCTION

The International Trademark Association (“INTA”),'

having obtained written consent of the parties pursuant to

' This brief was not authored, in whole or in part, by counsel

to a party, and no monetary contribution to the preparation or

submission of this brief was made by any person or entity

other than the amicus curiae and its counsel. Neither peti-

tioner nor respondent is a member of, or otherwise affiliated

with, amicus curiae.

Rule 37.3 of the Rules of this Court,’ submits this brief as

amicus curiae. INTA believes that the Court of Appeals

erred in holding both that a full likelihood of confusion

analysis is required to evaluate the “fair use” defense and

that a defendant invoking the defense bears the burden of

demonstrating that confusion is unlikely. But, although it is

inappropriate to import the full likelihood of confusion

analysis into the fair use defense, certain evidence tradition-

ally considered in that analysis will often be relevant to the

inquiry into whether a junior use actually satisfies the de-

fense’s requirements.

Beyond the Court of Appeals’ general description,

INTA is not familiar with the details of the parties’ respec-

tive uses or products, nor with the evidence on which the

District Court and Court of Appeals relied. It thus does not

take a position on the merits of which of the parties enjoys

priority of rights, whether the respondents’ mark is descrip-

tive, whether the petitioner’s use qualifies as fair, or whether

a likelihood of confusion exists.

I. STATEMENT OF INTEREST

OF THE AMICUS CURIAE

INTA is a not-for-profit organization whose more

than 4,300 members have a special interest in trademarks.

They include trademark owners, law firms, advertising agen-

cies, package design firms, and professional associations

from the United States and 170 other countries. All share the

goals of emphasizing the importance of trademarks and

trademark protection, and of promoting an understanding of

the essential role trademarks play in fostering informed deci-

sions by consumers, effective commerce, and fair competi-

tion. INTA members frequently are participants in trademark

litigation, and therefore are interested in the development of

? The consents have been filed with the Clerk with this brief.

2

clear and consistent principles of trademark and unfair com-

petition law. INTA has substantial expertise in trademark

law and has selectively participated as an amicus curiae in

cases involving significant trademark issues.”

INTA was founded in 1878 as the United States

Trademark Association, in part to encourage the enactment

of federal trademark legislation after the invalidation on con-

Sstitutional grounds of this country’s first trademark act.

Since that time, INTA has been instrumental in making rec-

ommendations and providing assistance to legislators in con-

* Cases in which INTA has filed amicus briefs include: Das-

tar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23

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

(2003); TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532

U.S. 23 (2001); Wal-Mart Stores, Inc. v. Samara Bros., 529

U.S. 205 (2000); Fla. Prepaid Postsecondary Educ. Expense

Bd. v. College Sav. Bank, 527 U.S. 627 (1999); Dickinson v.

Zurko, 527 U.S. 150 (1999); Qualitex Co. v. Jacobson Prods.

Co., 514 U.S. 159 (1995); Two Pesos, Inc. v. Taco Cabana,

Inc., 505 U.S. 763 (1992); K Mart Corp. v. Cartier, Inc., 486

U.S. 281 (1988); WarnerVision Entm't Inc. v. Empire of

Carolina, Inc., 101 F.3d 259 (2d Cir. 1996); Preferred Risk

Mut. Ins. Co. v, United States, 86 F.3d 789 (8th Cir. 1996);

Conopco, Inc. v. May Dep't Stores Co., 46 F.3d 1556 (Fed.

Cir. 1994); Ralston Purina Co. v. On-Cor Frozen Foods,

Inc., 746 F.2d 801 (Fed. Cir. 1984); Anti-Monopoly, Inc. v.

Gen. Mills Fun Group, 684 F.2d 1316 (9th Cir. 1982), cert.

denied, 459 U.S. 1227 (1983); Jn re Borden, Inc., 92 F.T.C.

669 (1978), aff'd sub nom. Borden, Inc. v. Fed. Trade

Comm'n, 674 F.2d 498 (6th Cir. 1982), vacated and re-

manded, 461 U.S. 940 (1983); Redd v. Shell Oil Co., 524

F.2d 1054 (10th Cir. 1975), 425 U.S. 912 (1976); Century 2]

Real Estate Corp. v. Nev. Real Estate Advisory Comm'n, 448

F. Supp. 1237 (D. Nev. 1978), aff'd, 440 U.S. 941 (1979).

3

nection with federal trademark legislation, including the

Trademark Law Revision Act of 1988 (“TLRA”). See 134

Cong. Rec. $16974 (daily ed. Oct. 20, 1988) (statement of

Sen. DeConcini). Although many of its legislative initiatives

have been aimed at strengthening trademark protection,

INTA also has encouraged the enactment of statutory revi-

sions to restrict overreaching trademark claims. See Trade-

mark Amendments Act of 1999, § 5, Pub. L. No. 106-43, 113

Stat. 218, 220 (1999); Trademark Law Treaty Implementa-

tion Act, § 201(1)(2)-(5), Pub. L. No. 105-330, 112 Stat.

3064, 3069-70 (1998). This includes INTA’s support of an

amendment with a direct bearing on the outcome of this liti-

gation. See TLRA, § 30(1), Pub. L. No. 100-667, 102 Stat.

3935, 3944-45 (1988).

Il. SUMMARY OF ARGUMENT

The “fair use” defense codified in section 33(b)(4) of

the Lanham Act, 15 U.S.C. § 1115(b)(4) (2000), embodies a

fundamental principle of trademark law, which 1s to protect

consumers’ access to accurate information in the market-

place, especially information describing characteristics of the

goods and services being offered for sale. To that end, both

the common law and the Lanham Act require plaintiffs seek-

ing trademark protection for descriptive words as their

trademarks to demonstrate that the words have acquired a

“secondary meaning” apart from their primary one. Once a

descriptive term has achieved secondary meaning, it is fully

protectable against the use by another of the term as a mark

for the other’s goods. At the same time, both the common

law and the Lanham Act seek to ensure that the public can

still use descriptive terms fairly in their orginal descriptive

sense. Thus, the fair use defense provides that there is no

liability if the allegedly infringing use is other than as a

mark, and made fairly and in good faith only to descnbe the

individual name of the defendant or to describe its goods or

services or their geographic origin.

4

That a mark and registration may have obtained “in-

contestable” status does not change this analysis. This Court

has previously recognized that incontestability may excuse a

federal registrant from carrying what otherwise would be its

burden to prove the secondary meaning of its mark. Never-

theless, this statutory burden-shifting does not extend to the

test for liability itself—in this case, the likelihood of confu-

sion standard codified by sections 32 and 43(a) of the

Lanham Act. See 15 U.S.C. §§ 1114, 1125(a) (2000).

Rather, section 33(b)(4)} requires only that the challenged use

be (1) one other than as a trademark, (2) fair and in good

faith, and (3) only to describe the defendant’s goods and ser-

vices. Likelihood of confusion is not referenced by the stat-

ute, and a defendant asserting the fair use defense need not

prove the absence of likely confusion if the three statutory

prerequisites for the defense are met.

, In this case, the Court of Appeals erred by importing

the likelihood of confusion test into section 33(b)(4) and by

requiring petitioner to establish the absence of likely confu-

sion. That error, however, should not obscure the relevance

to the fair use inquiry of certain types of evidence that also

are relevant to the issue of likely confusion. For example, a

defendant’s clear intent to trade on the goodwill of a plain-

tiffs mark obviously would weigh against a finding that the

defendant’s use is in good faith. Likewise, actual confusion

in the marketplace may be probative evidence as to whether

the defendant has used the descriptive term as a trademark.

Consequently, INTA urges the Court not to adopt a reading

of section 33(b)(4) that would eliminate consideration of

evidence relevant to likelihood of confusion if that evidence

is also germane to the fair use defense.*

+

Although the statutory fair use defense, 15 U.S.C.

§ 1115(b)(4) (2000), encompasses personal names and geo-

graphic designations in addition to geographically descrip-

5

Ill. ARGUMENT

A. Fundamental Public Interests Compete When

Trademark Law is Applied to Descriptive Terms

Trademark law provides a legal framework govern-

ing the communication from providers of goods and services

to the consuming public of information relating to the source

and nature of those goods and services. Fundamental to this

framework is the premise that words, language, and features

that are descriptive of the characteristics or qualities of goods

or services remain in the public domain for use by all to de-

scribe or denote those characteristics or qualities. Equally

fundamental is the premise that a merchant may not mark its

goods or services with a name or feature that is likely to

cause confusion with the goods or services of another having

superior rights to that name or feature. An inherent conflict

arises between these two premises when a substantial portion

of the consuming public comes to associate a descriptive

term or feature with a single source. The issue then becomes

how to reconcile the public interest in maintaining descrip-

tive terms and features in the public domain for use by all in

their descriptive sense with the public interest in minimizing

or avoiding relevant consumer confusion. As discussed in

greater detail below, the fair use defense represents a com-

mon-law and statutory compromise of these competing inter-

ests that tolerates a likelihood of confusion, under limited

circumstances, in favor of the public’s interest in having ac-

cess to descriptive terms.

tive terms and merely descriptive terms, geographic designa-

tions and personal names are not at issue in this case. This

brief therefore addresses only the use of merely descriptive

terms, and INTA takes no position relating to the proper con-

struction of the fair use defense with regard to personal

names or geographic designations.

6

1. Descriptive Terms And Features Ordinar-

ily Are In The Public Domain For Use By

All In Their Primary Descriptive Sense

The rule developed long ago at common law that

terms that are descriptive of the qualities, ingredients, or

characteristics of a product cannot be appropriated by any

one person to the exclusion of all others:

It was settled long prior to the Trade-Mark Reg-

istration Act [of 1905] that the law would not se-

cure to any person the exclusive use of a trade-

mark consisting merely of words descriptive of

the qualities, ingredients or characteristics of an

article of trade. This for the reason that the func-

tion of a trade-mark is to point distinctively, ei-

ther by its own meaning or by association, to the

origin or ownership of the wares to which it is

applied, and words merely descriptive of quali-

ties, ingredients or characteristics, when used

alone, do not do this. Other like goods, equal to

them in all respects, may be manufactured or

dealt in by others, who, with equal truth, may

use, and must be left free to use, the same lan-

guage of description in placing their goods be-

fore the public.

Estate of P. D. Beckwith, Inc. v. Comm'r of Patents, 252

U.S. 538, 543-44 (1920); see also William R. Warner & Co.

v. Eli Lilly & Co., 265 U.S. 526, 528 (1924); Standard Paint

Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 454 (1911);

Del. & Hudson Canal Co. v. Clark, 80 U.S. (13 Wall) 311,

323 (1872).

This rule is necessary to promote competition by

enabling merchants access to terms that describe the nature,

qualities, ingredients, or characteristics of the goods or ser-

vices they offer. As this Court explained long ago:

7

No one can claim protection for the exclusive

use of a trade-mark or trade-name which would

practically give him a monopoly in the sale of

any goods other than those produced or made-by

himself. If he could, the public would be in-

jured rather than protected, for competition

would be destroyed. Nor can a generic name, or

a name merely descriptive of an article of trade,

of its qualities, ingredients, or characteristics, be

employed as a trade-mark and the exclusive use

of it be entitled to legal protection.

Del. & Hudson Canal Co., 80 U.S. (13 Wall) at 323. Asa

fundamental premise, therefore, trademark law strives to

keep descriptive terms in the public domain for use by eve-

ryone to describe their goods and services.

2. To Prevent Commercial Fraud And Con-

sumer Confusion, However, Trademark

Protection Is Afforded To Descriptive

Terms That Have Acquired A “Secondary

Meaning” Of Designating A Single Source

Notwithstanding the basic presumption that descrip-

tive terms should be free for all to use to describe their goods

and services, a descriptive term may function as a mark and

be protected as a mark when the descriptive term, through

extensive use and promotion (as a mark), acquires a meaning

among a significant portion of the relevant consuming public

that designates the particular merchant as the source for the

goods or services offered under the term. Armstrong Paint

& Varnish Works v. Nu-Enamel Corp., 305 U.S. 315 (1938);

see also Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 113

(1938); 15 U.S.C. § 1052(f) (2000). At common law, such a

mark is said to have achieved a “secondary meaning.” That

is, the primary significance of the descriptive term in the

minds of the consuming public is no longer its orginal, de-

8

scriptive meaning, but rather is a secondary, source-

identifying meaning. Kellogg, 305 U.S. at 113. Under sec-

tion 2(f) of the Lanham Act, a mark with secondary meaning

is said to have “acquired distinctiveness.” See 15 U.S.C.

§ 1052(f).

If a plaintiffs mark is not covered by a federal

trademark registration, the plaintiff bears the burden of prov-

ing that the mark is distinctive, and therefore protectable.

See, e.g., Nat'l Conf. of Bar Examiners v. Multistate Legal

Studies, Inc., 692 F.2d 478, 488 (7th Cir. 1982). A federal

registration less than five years old, however, is prima facie

evidence of the mark’s distinctiveness, which shifts the bur-

den of proving an absence of distinctiveness to the defendant.

See 15 U.S.C. §§ 1057(b), 1115(a); see also Keebler Co. v.

Rovira Biscuit Corp., 624 F.2d 366, 373 (1st Cir. 1980). Pro-

vided that the registrant complies with certain formalities, the

registration may become “incontestable” after its fifth anni-

versary, at which point it constitutes “conclusive” proof of the

underlying mark’s validity under section 33(b) of the Lanham

Act. See 15 U.S.C. § 1115(b). As this Court previously has

recognized, this burden shifting precludes a defendant from

arguing that the plaintiffs mark is merely descriptive and

without distinctiveness. See Park ‘N Fly, Inc. v. Dollar Park

& Fly, Inc., 469 U.S. 189, 205 (1985).

Whatever the means by which a descriptive term ac-

quires sufficient secondary meaning that it functions as a

mark for the first merchant, to allow a second merchant to

use the term as its own mark (to identify and distinguish,

rather than describe its similar or related goods or services)

would foster the potential for a fraud on the consuming pub-

lic. Accordingly, if the use by the second merchant of the

term as a mark causes a likelihood of confusion, trademark

infringement arses both under the common law, see Law-

rence Mfg. Co. v. Tenn. Mfg. Co., 138 U.S. 537, 546 (1891),

and under the two federal statutory causes of action asserted

9

by the respondents in this action. See 15 U.S.C. §§ 1114,

1125(a) (2000). Because the second merchant could use any

one of a myriad of other terms as ifs trademark, including

arbitrary, fanciful, or suggestive terms, the public interest in

preventing confusion overrides the public interest in allow-

ing use of descriptive terms, at least with regard to use of the

descriptive terms as marks.

The more difficult situation arises when the second

merchant uses the descriptive term to describe its goods or

services. rather than as a source-identifying designation for

its goods or services. If confusion results, this scenario cre-

ates the classic conflict between the public interest in pre-

serving a right to describe and the public interest in avoiding

consumer confusion. The fair use defense was developed at

common law and codified in the Lanham Act to address

these competing public interests.

B. The Fair Use Defense Reconciles The Competing

Interests That Arise Under Trademark Law With

Regard To Use Of Descriptive Terms

The fair use defense, developed at common law

through the decisions of this Court and other courts, sanc-

tions use of descriptive terms to describe and denote one's

products. As codified in section 33(b)(4) of the Lanham Act,

15 U.S.C. § 1115(b)(4), the defense has three basic Tequire-

ments: (1) that the use be other than as a mark, (2) fair and in

good faith, and (3) only to describe a defendant s goods and

services. As under the common law, likelihood of confusion

is not an issue, and a defendant asserting the fair use defense

need not prove its absence if the three statutory prerequisites

are met.

10

1. This Court Has Long Recognized A De-

fense Permitting The Non-Trademark And

Descriptive Use Of Descriptive Terms Re-

gardless Of Whether Confusion Exists

Three decisions of this Court firmly establish the fair

use defense under common law. See William R. Warner &

Co. v. Eli Lilly & Co., 265 U.S. 526 (1924); Standard Paint

Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446 (191 1); Del.

& Hudson Canal Co. v. Clark, 80 U.S. (13 Wall) 311 (1871).

In Delaware & Hudson Canal Co., the plaintiffs were pro-

ducers of coal from the Lackawanna Valley, and had adopted

the name “Lackawanna Coal” as a trademark for their coal.

The plaintiffs sought to preclude the defendant’s use of

“Lackawanna Coal” to describe its own coal, which also was

mined and produced in the Lackawanna Valley. See 80 U.S.

(13 Wall) at 320-22.

In affirming the denial of the plaintiffs’ claim, this

Court noted that as a general rule, no one can claim exclu-

sive rights to merely descriptive terms, id. at 323, and that

the defendant’s good faith use of “Lackawanna Coal” as a

descriptive term therefore did not constitute an attempt to

deceive the public:

It cannot be said that there is any attempt to de-

ceive the public when one sells as Kentucky

Hemp, or as Lehigh coal, that which in truth is

such, or that there is any attempt to appropriate

the enterprise or business reputation of another

who may have previously sold his goods with

the same description. It is not selling one man’s

goods as and for those of another.

Id. at 324-25. The Court thereby enunciated the basic prem-

ise that no actionable wrong occurs when a defendant uses

1]

descriptive terms fairly and only to describe the goods or ser-

vices associated with the terms.

The Court then made clear that so long as there is no

wrongful intent and so long as the words are used only to de-

scribe, the use is proper even if confusion is likely or actually

occurs:

It is only when the adoption or imitation of what

is claimed to be a trade-mark amounts to a false

representation, express or implied, designed or

incidental,, that there is any title to relief against

it. True it may be that the use by a second pro-

ducer, in describing truthfully his product, of a

name or a combination of words already in use

by another, may have the effect of causing the

public to mistake as to the ongin or ownership

of the product, but if it is just as true in its appli-

cation to its goods as it is to those of another

who first applied it, and who therefore claims an

exclusive mght to use it, there is no legal or

moral wrong done. Purchasers may be mis-

taken, but they are not deceived by false repre-

sentations, and equity will not enjoin against

telling the truth.

We are therefore of the opinion that the defen-

dant has invaded no nght to which the plaintiffs

can maintain a claim. By advertising and sell-

ing coal brought from the Lackawanna Valley

as Lackawanna coal, he has made no false rep-

resentation, and we see no evidence that he has

attempted to sell his coal as and for the coal of

the plaintiffs. If the public are led into mistake,

it is by the truth, not by any false pretense. If

the complainants’ sales are diminished, it is be-

cause they are not the only producers of Lacka-

12

wanna coal, and not because of any fraud of the

defendant.

Id. at 327-28. This Court therefore made clear that a defense

existed at common law to a claim of trademark infringement

— a Claim of likelihood of confusion — so long as the accused

use was fair, in good faith, and only to describe the goods or

services at issue.

This Court reiterated this holding forty years later in

Standard Paint, in which the plaintiff manufactured a roofing

material that it sold under the mark “Rubberoid.” The defen-

dant manufactured a similar material for which it used the

name “Rubbero.” In affirming the denial of relief, this Court

noted that “the essence of the wrong for the violation of a

trade-mark ‘consists in the sale of the goods of one manufac-

turer or vendor as those of another; and that it is only when

this false representation is directly or indirectly made that the

party who appeals to a court of equity can have relief.’” 220

U.S. at 453-54 (quoting Del. & Hudson Canal Co., 80 U.S.

(13 Wall) at 323). Stated differently, so long as a defendant

uses the accused terminology to describe its own products

truthfully and fairly, no wrong has occurred.

The Court again reiterated this basic premise in Wil-

liam R. Warner & Co:

A name which is merely descriptive of the in-

gredients, qualities or characteristics of an arti-

cle of trade cannot be appropriated as a trade-

mark and the exclusive use of it afforded legal

protection. The use of a similar name by an-

other to truthfully describe his own product does

not constitute a legal or moral wrong, even if its

effect be to cause the public to mistake the on-

gin or the ownership of the product.

265 U.S. at 529 (emphasis added). Because the defendant

had actively encouraged passing off and substitution, this

13

Court suggested that injunctive relief be entered on remand

requiring appropriate disclaimers and legends to preclude

such activity. Jd. at 532-33. The Court, however, did not

alter its basic application of the fair use defense.

2. The Common-Law Fair Use Defense Was

Codified In The Lanham Act With Three

Basic Requirements That Are Independent

Of Whether A Likelihood Of Confusion

Exists

The common-law fair use defense is codified as sec-

tion 33(b)4) of the Lanham Act, 15 USC.

§ 1115(b)(4)(2000), which recognizes as a defense in an in-

fringement action:

That the use of the name, term, or device

charged to be an infringement is a use, other-

wise than as a mark, of a party’s individual

name in his own business, or 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 geo-

graphic ongin.

Id. The statute therefore requires that a defendant prove only

three conditions to be entitled to rely on the fair use defense:

that the use be (1) other than as a trademark, (2) fair and in

good faith, and (3) only to describe the defendant’s goods

and services.

Consistent with the prior decisions of this Court, the

requirement that the use be “otherwise than as a mark” does

not mean that the descriptive terms at issue cannot be used as

part of a name or mark at all. Rather, it emphasizes that the

nature of the use of the descriptive terms must be to describe

the characteristics or qualities of the goods and services in-

14

stead of to “identify and distinguish’” the goods and services

as those of the defendant. This distinction is important for it

reconciles the concept of protecting descriptive terms that

have acquired secondary meaning (distinctiveness), see Arm-

strong Paint & Varnish Works, 305 U.S. at 335-36, with the

concept that a merchant has the right to use descriptive terms

fairly to describe its goods and services. See Del. & Hudson

Canal Co., 80 U.S. (13 Wall) at 327; see also Soweco, Inc. v.

Shell Oil Co., 617 F.2d 1178 (Sth Cir. 1980) (holding use of

“Jarvicide” in the names and marks “Rabon Oral Larvicide”

and “Shell Poultry Spray & Larvicide” to be a fair use, not-

withstanding the existence of an incontestable registration for

the term “Larvacide” for a grain fumigant). So long as the

use is Other than as a mark (not used to identify and distin-

guish), fair and in good faith, only to describe the defendant’s

goods and services, it is a fair use. Consistent with the com-

mon-law defense, the statute does not require the absence of

a likelihood of confusion.

The conclusive evidentiary presumptions attaching to

an incontestably registered mark such as that asserted by re-

spondents do not alter this conclusion. Rather, those address

the validity of the underlying mark, and are not relevant to

the separate issue of whether the mark has been infringed in

violation of sections 32 and 43(a) of the Act through the de-

fendant’s creation of a likelihood of confusion in the market-

place. Thus, section 33(b) expressly provides that an incon-

testable registrant’s “exclusive nght to use” its mark “shall

be subject to proof of infnngement,” i.e., proof by the regis-

trant of likely confusion. See 15 U.S.C. § 1115(b) (2000).

This statutory language is neither accidental nor inadvertent:

* As defined in 15 U.S.C. § 1127 (2000), a “trademark” or

“service mark” is a device that is used to “identify and dis-

tinguish” the goods or services of one person from the goods

or services of others.

15

_ Rather, Congress added it to section 33(b) in 1988 to

“make[] clear that incontestability does not relieve the owner

of an incontestable registration from the burden of proving

likelihood of confusion.” S. REP. No. 100-515 (1988), at 38,

reprinted in 1988 U.S.C.C.A.N. 5577, 5601.

To construe the statute as shifting the burden of proof

to the defendant to demonstrate an absence of likely confu-

sion, as did the Court of Appeals, is contradictory to the fun-

damental purpose of the defense. Both the common-law de-

fense and the statutory defense are intended to be defenses to

trademark infringement. By definition, therefore, they are

defenses that are effective when a likelihood of confusion

exists. It is counterintuitive to require a defendant to prove

that there is no likelihood of confusion because such proof

would demonstrate that there is no trademark infringement in

the first instance. In that event, the defendant would not

need the fair use defense at all.

Indeed, under such a construction of the statute, there

would be no incentive for a defendant ever to plead the fair

use defense. To do so would mean that the defendant would

not only assume the plaintiff's burden of proof with regard to

infringement, but it would also have to prove that its use is

other than as a mark, fair and in good faith, and only to de-

scribe its goods or services. If the defendant can prove non-

infringement, why would it ever assume the burden of prov-

ing the other elements of the defense? The engrafting of a

requirement to prove the absence of a likelihood of confu-

sion on the fair use defense effectively destroys the fair use

defense.

The fair use defense is a defense to the existence of a

likelihood of confusion. The defense must therefore be vi-

able even if a likelihood of confusion exists. A plaintiff who

chose as his mark a descriptive term cannot and should not

be heard to complain if the fair and truthful use by another of

16

the term to describe its products causes confusion. That is

the risk that the plaintiff assumed when it adopted the de-

scriptive term as its mark. Soweco, 617 F.2d at 1189 n.30.

3. Proper Application Of The Fair Use De-

fense Requires Consideration Of All Evi-

dence Truly Relevant To The Three Re-

quirements Enunciated In The Statute And

At Common Law

Although the fair use defense contemplates the exis-

tence of confusion or a likelihood of confusion, proper appli-

cation of the defense cannot ignore many of the types of evi-

dence that are germane to consideration of the multifactored

test for likely confusion.® For example, courts have long

recognized that a defendant’s deliberate adoption of a trade-

mark similar to that of a plaintiff is probative evidence that a

likelihood of confusion exists between the two marks. See,

e.g., Bauer Lamp Co. v. Shaffer, 941 F.2d 1165, 1172 (11th

Cir. 1991) (per curiam). In the fair use context, a defen-

dant’s intent to trade on the goodwill of the plaintiff by using

° In this case, the Court of Appeals directed the District

Court to take into account the following factors on remand

when determining whether a likelihood of confusion exists:

(1) the strength of the respondents’ mark; (2) proximity or

relatedness of the parties’ goods; (3) the similarity of the

terms used by the parties; (4) evidence of actual confusion;

(5) the marketing channels used by the parties; (6) the degree

of care used by customers when making purchases; (7) the

petitioner's intent; and (8) the likelihood of expansion into

other markets. See KP Permanent Make-Up, Inc. v. Lasting

Impression I, Inc., 328 F.3d 1061, 1073 (9th Cir. 2003), cert.

granted, 124 S. Ct. 981 (2004). Although the formulation

and enumeration of these factors varies from Circuit to Cir-

cuit, this test is consistent with that in other jurisdictions.

17

descriptive terms is directly relevant to the issue of whether

that use is a “fair” one made in good faith. See, e.g., Gen.

Conf. Corp. of Seventh Day Adventists v. Perez, 97 F. Supp.

2d 1154, 1163-64 (S.D. Fla. 2000). By the same token, a

defendant’s averment to the Patent and Trademark Office in

an application to register a challenged term that the defen-

dant is using, or intends to use, the challenged term as a

trademark obviously is relevant to section 33(b)(4)’s re-

quirement that the term be used “otherwise than as a mark.”

15 U.S.C. § 1115(b)(4) (2000). Evidence of bad faith or

predatory intent therefore may be probative of whether the

fair use defense is properly invoked, just as it would be rele-

vant to the issue of likely confusion. :

Similarly, certain types of actual confusion also may

be probative when considering the fair use defense. In the

infringement context, the existence of actual confusion is

compelling evidence that confusion is likely and that in-

fringement therefore has occurred. See, e.g., World Carpets,

Inc. v. Dick Littrell’s New World Carpets, 436 F.2d 482, 489

(5th Cir. 1971). In the fair use context, if the confusion is

shown to be confusion over whether the defendant is using

the term at issue as its mark, then such evidence once again

may indicate that consumers do not view the defendant’s use

as “otherwise than as a mark” under section 33(b)(4). Mere

confusion or misassociation that initially results from the ex-

istence in the plaintiffs mark of secondary meaning, how-

ever, should not be probative because this is exactly the type

of confusion that must be tolerated if the other requirements

of the fair use defense are met. See Cosmetically Sealed In-

dus. v. Chesebrough-Pond's USA Co., 125 F.3d 28, 31 (2d

Cir. 1997).

Thus, although the significance of actual confusion

in the fair use context differs from that in the infringement

context, a court applying section 33(b)(4) properly should

consider instances of actual confusion generated by the de-

18.

fendant’s use in its analysis, just as other evidence bearing

on the issue of likely confusion may also be probative of

whether a challenged use is fair. A failure to do so simply

because actual confusion also is probative evidence of in-

fringement would upset the balance struck by the fair use

defense.

CONCLUSION

The Court of Appeals erred in this case by importing

the likelihood of confusion test into section 33(b)(4) and by

requiring petitioner to establish the absence of likely confu-

sion. Recognition of that error, however, does not require a

holding that all evidence bearing on the possible likelihood

of confusion between the parties’ marks is irrelevant to sec-

tion 33(b)(4)’s fair use defense. On the contrary, certain

evidence traditionally considered in the likelihood of confu-

sion analysis will often be relevant to the inquiry into

whether a junior use actually satisfies the requirements of the

defense. INTA therefore urges the Court not to adopt an un-

duly expansive reading of section 33(b)(4) that would

threaten the free flow of accurate information in the market-

place that protection of trademarks facilitates.

Respectfully submitted,

Counsel for Amicus Curiae William D. Raman*

The International __ Theodore H. Davis Jr.

Trademark Association Shern L. Eastley

Olivia Maria Baratta

1133 Avenue of the Americas

New York, New York 10036

* Counsel of Record (212) 768-9887

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