543 U.S. 111 (2004)
KP Permanent Make-Up, Inc. and Lasting Impression I, Inc., along with its licensee MCN International, Inc., both sell permanent makeup.1 This is a mixture of pigment and liquid for injection under the skin to camouflage injuries and modify nature's dispensations. KP claims to have used the single-word version of “micro color” since 1990 or 1991 on advertising flyers and since 1991 on pigment bottles.2
In 1992, Lasting applied to the United States Patent and Trademark Office for registration of a trademark consisting of the words “Micro Colors” in white letters separated by a green bar within a black square.3 The PTO registered the mark to Lasting in 1993, and in 1999 the registration became incontestable.4
In 1999, KP produced a 10-page advertising brochure using “microcolor” in a large, stylized typeface.5 Lasting demanded that KP stop using the term.6 KP sued Lasting in the Central District of California seeking a declaratory judgment that its language infringed no such exclusive right as Lasting claimed.7 Lasting counterclaimed alleging that KP had infringed Lasting’s “Micro Colors” trademark.8
KP sought summary judgment on the infringement counterclaim based on the statutory affirmative defense of fair use.9 The District Court found that Lasting had conceded KP used the term only to describe its goods and not as a mark.10 It held that KP was acting fairly and in good faith because it had employed the term continuously from a time before Lasting adopted the mark. The court entered summary judgment for KP without enquiring whether the practice was likely to cause confusion.11
On appeal, the Court of Appeals for the Ninth Circuit held it was error for the District Court to have addressed the fair use defense without delving into the matter of possible confusion on the part of consumers.12 The Ninth Circuit reversed the summary judgment and remanded the case.13 The Supreme Court granted KP’s petition for certiorari.14
Whether a party raising the statutory affirmative defense of fair use to a claim of trademark infringement, 15 U.S.C. § 1115(b)(4), has a burden to negate any likelihood that the practice complained of will confuse consumers about the origin of the goods or services affected?15
The plaintiff claiming infringement of an incontestable mark must show likelihood of consumer confusion as part of the prima facie case, 15 U.S.C. § 1115(b), while the defendant has no independent burden to negate the likelihood of any confusion in raising the affirmative defense that a term is used descriptively, not as a mark, fairly, and in good faith, 15 U.S.C. § 1115(b)(4).16
No. Section 1115(b) places a burden of proving likelihood of confusion on the party charging infringement even when relying on an incontestable registration.17 Congress said nothing about likelihood of confusion in setting out the elements of the fair use defense in § 1115(b)(4).18 In this case, KP raised the fair use defense on summary judgment after Lasting counterclaimed for infringement of its incontestable “Micro Colors” mark based on KP's use of the term in its 1999 brochure.19 The District Court correctly granted summary judgment to KP without inquiring into confusion because the undisputed facts established descriptive use in good faith from before Lasting's registration.20
The burden to prove any likelihood of confusion rested solely with Lasting as the counterclaimant.21 The Ninth Circuit's reversal improperly imposed on KP an obligation to negate confusion as part of the fair use defense.22
No, a party raising the statutory affirmative defense of fair use has no burden to negate any likelihood of consumer confusion.23