Permanent Litigation (KP, that is)

Amazing. Some lawyers have all the luck -- clients who actually want to litigate their trademark disputes up and down and all around the federal court system. I'm talking about the KP Permanent Make-Up case, which is back at the 9th Circuit after a remand from the Supreme Court.

In this round, the 9th Circuit re-analyzed the district court's summary judgment in favor of accused infringer KP. While the 9th Circuit had no trouble identifying lots of fact issues that required trial, the most important aspect of the 9th Circuit's decision is how it assessed the scope of enforceable rights that the plaintiff owned through its incontestable MICRO COLORS & design registration (which it called a "logo mark"). The 9th Circuit stated several times that the mark owner's rights from such a registration cover not only the whole design (including the words), but also the words "MICRO COLORS" alone, which the court said was appropriate because the words were, in its view, "most salient feature of the logo mark." Accordingly, the 9th Circuit wouldn't let the accused infringer challenge the words MICRO COLORS alone as merely descriptive and lacking secondary meaning.

This broad view that the incontestability of a design mark extends to the words alone if they are the most salient feature of the design mark is, in my view, more controversial than the 9th Circuit lets on. But this is certainly a weapon to remember in future cases.