KP PERMANENT MAKE-UP, INC. v. LASTING IMPRESSION I, INC., et al.

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Syllabus
KP PERMANENT MAKE-UP, INC. v. LASTING
IMPRESSION I, INC., et al.
certiorari to the united states court of appeals for
the ninth circuit
No. 03–409. Argued October 5, 2004—Decided December 8, 2004
Petitioner KP Permanent Make-Up, Inc., and respondents (collectively
Lasting) all use the term “micro color” (as one word or two, singular or
plural) in marketing permanent cosmetic makeup. The Court accepts
KP’s claim that it has used the single-word version since 1990 or 1991.
In 1992, Lasting registered a trademark that included the words “Micro
Colors” under 15 U. S. C. § 1051, and, in 1999, the registration became
incontestable, § 1065. When Lasting demanded that KP stop using the
word “microcolor,” KP sued for declaratory relief. Lasting counter-
claimed, alleging, inter alia, that KP had infringed Lasting’s trademark.
KP responded by asserting the statutory affirmative defense of fair use,
§ 1115(b)(4). Finding that Lasting conceded that KP used “microcolor”
only to describe its goods and not as a mark, the District Court held
that KP was acting fairly and in good faith because KP undisputedly
had employed the term continuously from before Lasting adopted its
mark. Without enquiring whether the practice was likely to cause con-
sumer confusion, the court concluded that KP had made out its affirma-
tive defense under § 1115(b)(4) and entered summary judgment for KP
on Lasting’s infringement claim. Reversing, the Ninth Circuit ruled
that the District Court erred in addressing the fair use defense without
delving into the matter of possible consumer confusion about the origin
of KP’s goods. The court did not pointedly address the burden of proof,
but appears to have placed it on KP to show the absence of such
confusion.
Held: A party raising the statutory affirmative defense of fair use to a
claim of trademark infringement does not have a burden to negate any
likelihood that the practice complained of will confuse consumers about
the origin of the goods or services affected. Pp. 117–124.
(a) Although § 1115(b) makes an incontestable registration “conclusive
evidence . . . of the registrant’s exclusive right to use the . . . mark,” it
also subjects a plaintiff ’s success to “proof of infringement as defined
in section 1114.” Section 1114(1) in turn requires a showing that the
defendant’s actual practice is “likely to cause confusion, or to cause mis-
take, or to deceive” consumers about the origin of the goods or services
in question, see, e. g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U. S.

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112 KP PERMANENT MAKE-UP, INC. v. LASTING
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763, 780. Thus, a plaintiff claiming infringement of an incontestable
mark must show likelihood of consumer confusion as part of the prima
facie case. This plaintiff ’s burden must be kept in mind when reading
§ 1115(b)(4), which provides the fair use defense to a party whose “use
of the . . . term . . . charged to be an infringement is a use, otherwise
than as a mark, . . . of a term . . . which is descriptive of and used fairly
and in good faith only to describe the goods or services.” It is evident
(1) that § 1115(b) places a burden of proving likelihood of confusion (that
is, infringement) on the party charging infringement even when relying
on an incontestable registration, and (2) that Congress said nothing
about likelihood of confusion in setting out the elements of the fair use
defense in § 1115(b)(4). It therefore takes a long stretch to claim that
a fair use defense entails any burden to negate confusion. It is not
plausible that Congress would have used § 1114’s phrase “likely to cause
confusion, or to cause mistake, or to deceive” to describe the require-
ment that a markholder show likelihood of consumer confusion, but
would have relied on § 1115(b)(4)’s phrase “used fairly” to give a defend-
ant the burden to negate confusion. See, e. g., Russello v. United
States, 464 U. S. 16, 23. Congress’s failure to say anything about a de-
fendant’s burden on this point was almost certainly not an oversight,
since the House Trademarks Subcommittee refused to forward a pro-
posal expressly providing likelihood to deceive the public as an element
of the fair use defense. Lasting argues unpersuasively that “used
fairly” in § 1115(b)(4) is an oblique incorporation of a likelihood-of-
confusion test developed in the common law of unfair competition.
While cases such as Baglin v. Cusenier Co., 221 U. S. 580, are consistent
with taking account of the likelihood of consumer confusion as one con-
sideration in deciding whether a use is fair, they cannot be read to make
an assessment of confusion alone dispositive or provide that the defense
has a burden to negate it entirely. Finally, a look at the typical course
of litigation in an infringement action points up the incoherence of plac-
ing a burden to show nonconfusion on a defendant. If a plaintiff suc-
ceeds in making out a prima facie case, including the element of likeli-
hood of confusion, the defendant may offer rebutting evidence to
undercut the force of the plaintiff ’s evidence on this element, or raise
an affirmative defense to bar relief even if the prima facie case is sound,
or do both. It would make no sense to give the defendant a defense of
showing affirmatively that the plaintiff cannot succeed in proving some
element (like confusion); all the defendant needs to do is to leave the
factfinder unpersuaded that the plaintiff has carried its own burden on
that point. Nor would it make sense to provide an affirmative defense
of no confusion plus good faith, when merely rebutting the plaintiff ’s

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case on confusion would entitle the defendant to judgment, good faith
or not. Pp. 117–121.
(b) Since the burden of proving likelihood of confusion rests with the
plaintiff, and the fair use defendant has no freestanding need to show
confusion unlikely, the Court recognizes (contrary to the Ninth Circuit’s
view) that some possibility of consumer confusion is compatible with fair
use. It would be improvident to go further here, for deciding anything
more would take the Court beyond the Ninth Circuit’s consideration of
the subject. Because the Court does not rule out the pertinence of the
degree of consumer confusion under the fair use defense, it does not
pass upon the Government’s position that § 1115(b)(4)’s “used fairly” re-
quirement demands only that the descriptive term describe the goods
accurately. Accuracy has to be a consideration in assessing fair use, but
the proceedings below have raised no occasion to evaluate other con-
cerns that courts might pick as relevant—e. g., commercial justification
and the strength of the plaintiff ’s mark—as to which the door is not
closed. Pp. 121–123.
(c) This Court reads the Ninth Circuit as erroneously requiring KP
to shoulder a burden on the confusion issue. P. 124.
328 F. 3d 1061, vacated and remanded.
Souter, J., delivered the opinion of the Court, in which Rehnquist,
C. J., and Stevens, O’Connor, Kennedy, Thomas, and Ginsburg, JJ.,
joined, in which Scalia, J., joined as to all but footnotes 4 and 5, and in
which Breyer, J., joined as to all but footnote 6.
Michael Machat argued the cause and filed briefs for
petitioner.
Patricia A. Millett argued the cause for the United States
as amicus curiae urging reversal. With her on the brief
were former Solicitor General Olson, Assistant Attorney
General Keisler, Deputy Solicitor General Hungar, An-
thony J. Steinmeyer, Anthony A. Yang, John M. Whealan,
Cynthia C. Lynch, and Nancy C. Slutter.
Beth S. Brinkmann argued the cause for respondents.
With her on the brief were Charles C. H. Wu, Mark H.
Cheung, Drew S. Days III, Edward W. Gray, Jr., Seth M.
Galanter, and J. Thomas McCarthy.*
*Briefs of amici curiae urging reversal were filed for the American
Intellectual Property Law Association by Michael P. Boudett, Denise W.
DeFranco, and Rick D. Nydegger; for the Private Label Manufacturers

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114 KP PERMANENT MAKE-UP, INC. v. LASTING
IMPRESSION I, INC.
Opinion of the Court
Justice Souter delivered the opinion of the Court.*
The question here is whether a party raising the statutory
affirmative defense of fair use to a claim of trademark in-
fringement, 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.
We hold it does not.
I
Each party to this case sells permanent makeup, a mixture
of pigment and liquid for injection under the skin to camou-
flage injuries and modify nature’s dispensations, and each has
used some version of the term “micro color” (as one word or
two, singular or plural) in marketing and selling its product.
Petitioner KP Permanent Make-Up, Inc., claims to have used
the single-word version since 1990 or 1991 on advertising
flyers and since 1991 on pigment bottles. Respondents
Lasting Impression I, Inc., and its licensee, MCN Interna-
tional, Inc. (Lasting, for simplicity), deny that KP began
using the term that early, but we accept KP’s allegation as
true for present purposes; the District and Appeals Courts
took it to be so, and the disputed facts do not matter to our
resolution of the issue.1 In 1992, Lasting applied to the
United States Patent and Trademark Office (PTO) under 15
U. S. C. § 1051 for registration of a trademark consisting of
Association by Arthur M. Handler; and for Malla Pollack et al. by
Ms. Pollack, pro se.
Robert A. Long, Jr., filed a brief for the Society of Permanent Cosmetic
Professionals et al. as amici curiae urging affirmance.
William D. Raman, Theodore H. Davis, Jr., and Olivia Maria Baratta
filed a brief for the International Trademark Association as amicus
curiae.
*Justice Scalia joins all but footnotes 4 and 5 of this opinion. Jus-
tice Breyer joins all but footnote 6.
1 We note that in its brief to the Court of Appeals, Lasting appears to
have conceded KP’s use of “microcolor” in the early 1990’s. Appellants’
Opening Brief in No. 01–56055 (CA9), p. 8.

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the words “Micro Colors” in white letters separated by a
green bar within a black square.2 The PTO registered the
mark to Lasting in 1993, and in 1999 the registration became
incontestable. § 1065.
It was also in 1999 that KP produced a 10-page advertising
brochure using “microcolor” in a large, stylized typeface, pro-
voking Lasting to demand that KP stop using the term. In-
stead, KP sued Lasting in the Central District of California,
seeking, on more than one ground, a declaratory judgment
that its language infringed no such exclusive right as Lasting
claimed.3 Lasting counterclaimed, alleging, among other
things, that KP had infringed Lasting ’s “Micro Colors”
trademark.
KP sought summary judgment on the infringement coun-
terclaim, based on the statutory affirmative defense of fair
use, 15 U. S. C. § 1115(b)(4). After finding that Lasting had
conceded that KP used the term only to describe its goods
and not as a mark, the District Court held that KP was act-
ing fairly and in good faith because undisputed facts showed
that KP had employed the term “microcolor” continuously
from a time before Lasting adopted the two-word, plural
variant as a mark. Without enquiring whether the practice
was likely to cause confusion, the court concluded that KP
had made out its affirmative defense under § 1115(b)(4) and
2 A trademark may be “any word, name, symbol, or device, or any combi-
nation thereof . . . used by a person . . . to identify and distinguish his or
her goods . . . from those manufactured and sold by others and to indicate
the source of the goods, even if that source is unknown.” 15 U. S. C.
§ 1127.
3 We summarize the proceedings in this litigation only as they are rele-
vant to the question before us. The District Court’s findings as to the
generic or descriptive nature of the term “micro color” and any secondary
meaning that term has acquired by any of the parties, see Case No. SA
CV 00–276–GLT (EEx) (CD Cal., May 16, 2001), pp. 3–5, 5–8, are not
before us. Nor are the Court of Appeals’s holdings on these issues. See
328 F. 3d 1061, 1068–1071 (CA9 2003). Nor do we address the Court of
Appeals’s discussion of “nominative fair use.” Id., at 1071–1072.

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Opinion of the Court
entered summary judgment for KP on Lasting’s infringe-
ment claim. See Case No. SA CV 00–276–GLT (EEx)
(May 16, 2001), pp. 8–9, App. to Pet. for Cert. 29a–30a.
On appeal, 328 F. 3d 1061 (2003), the Court of Appeals for
the Ninth Circuit thought 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
about the origin of KP’s goods. The reviewing court took
the view that no use could be recognized as fair where any
consumer confusion was probable, and although the court did
not pointedly address the burden of proof, it appears to have
placed it on KP to show absence of consumer confusion. Id.,
at 1072 (“Therefore, KP can only benefit from the fair use
defense if there is no likelihood of confusion between KP’s
use of the term ‘micro color’ and Lasting’s mark”). Since it
found there were disputed material facts relevant under the
Circuit’s eight-factor test for assessing the likelihood of con-
fusion, it reversed the summary judgment and remanded
the case.
We granted KP’s petition for certiorari, 540 U. S. 1099
(2004), to address a disagreement among the Courts of Ap-
peals on the significance of likely confusion for a fair use
defense to a trademark infringement claim, and the obliga-
tion of a party defending on that ground to show that its use
is unlikely to cause consumer confusion. Compare 328 F. 3d,
at 1072 (likelihood of confusion bars the fair use defense);
PACCAR Inc. v. TeleScan Technologies, L. L. C., 319 F. 3d
243, 256 (CA6 2003) (“[A] finding of a likelihood of confusion
forecloses a fair use defense”); and Zatarains, Inc. v. Oak
Grove Smokehouse, Inc., 698 F. 2d 786, 796 (CA5 1983) (al-
leged infringers were free to use words contained in a trade-
mark “in their ordinary, descriptive sense, so long as such
use [did] not tend to confuse customers as to the source of
the goods”), with Cosmetically Sealed Industries, Inc. v.
Chesebrough-Pond’s USA Co., 125 F. 3d 28, 30–31 (CA2 1997)
(the fair use defense may succeed even if there is likelihood

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of confusion); Shakespeare Co. v. Silstar Corp. of Am., Inc.,
110 F. 3d 234, 243 (CA4 1997) (“[A] determination of likely
confusion [does not] preclud[e] considering the fairness of
use”); Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64
F. 3d 1055, 1059 (CA7 1995) (finding that likelihood of confu-
sion did not preclude the fair use defense). We now vacate
the judgment of the Court of Appeals.
II
A
The Trademark Act of 1946, known for its principal propo-
nent as the Lanham Act, 60 Stat. 427, as amended, 15 U. S. C.
§ 1051 et seq., provides the user of a trade or service mark
with the opportunity to register it with the PTO, §§ 1051,
1053. If the registrant then satisfies further conditions
including continuous use for five consecutive years, “the
right . . . to use such registered mark in commerce” to desig-
nate the origin of the goods specified in the registration
“shall be incontestable” outside certain listed exceptions.
§ 1065.
The holder of a registered mark (incontestable or not) has
a civil action against anyone employing an imitation of it in
commerce when “such use is likely to cause confusion, or to
cause mistake, or to deceive.” § 1114(1)(a). Although an in-
contestable registration is “conclusive evidence . . . of the
registrant’s exclusive right to use the . . . mark in com-
merce,” § 1115(b), the plaintiff ’s success is still subject to
“proof of infringement as defined in section 1114,” ibid.
And that, as just noted, requires a showing that the defend-
ant’s actual practice is likely to produce confusion in the
minds of consumers about the origin of the goods or services
in question. See Two Pesos, Inc. v. Taco Cabana, Inc., 505
U. S. 763, 780 (1992) (Stevens, J., concurring); Lone Star
Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43
F. 3d 922, 935 (CA4 1995); Restatement (Third) of Unfair
Competition § 21, Comment a (1995) (hereinafter Restate-

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ment). This plaintiff ’s burden has to be kept in mind when
reading the relevant portion of the further provision for
an affirmative defense of fair use, available to a party whose
“use of the name, term, or device charged to be an in-
fringement 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 serv-
ices of such party, or their geographic origin . . . .”
§ 1115(b)(4).
Two points are evident. Section 1115(b) places a bur-
den of proving likelihood of confusion (that is, infringement)
on the party charging infringement even when relying on
an incontestable registration. And Congress said nothing
about likelihood of confusion in setting out the elements of
the fair use defense in § 1115(b)(4).
Starting from these textual fixed points, it takes a long
stretch to claim that a defense of fair use entails any burden
to negate confusion. It is just not plausible that Congress
would have used the descriptive phrase “likely to cause con-
fusion, or to cause mistake, or to deceive” in § 1114 to de-
scribe the requirement that a markholder show likelihood of
consumer confusion, but would have relied on the phrase
“used fairly” in § 1115(b)(4) in a fit of terse drafting meant
to place a defendant under a burden to negate confusion.
“ ‘[W]here Congress includes particular language in one sec-
tion of a statute but omits it in another section of the same
Act, it is generally presumed that Congress acts intention-
ally and purposely in the disparate inclusion or exclusion.’ ”
Russello v. United States, 464 U. S. 16, 23 (1983) (quoting
United States v. Wong Kim Bo, 472 F. 2d 720, 722 (CA5 1972);
alteration in original).4
4 Not only that, but the failure to say anything about a defendant’s bur-
den on this point was almost certainly not an oversight, not after the
House Subcommittee on Trademarks declined to forward a proposal to
provide expressly as an element of the defense that a descriptive use be

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Nor do we find much force in Lasting’s suggestion that
“used fairly” in § 1115(b)(4) is an oblique incorporation of a
likelihood-of-confusion test developed in the common law of
unfair competition. Lasting is certainly correct that some
unfair competition cases would stress that use of a term by
another in conducting its trade went too far in sowing confu-
sion, and would either enjoin the use or order the defendant
to include a disclaimer. See, e. g., Baglin v. Cusenier Co.,
221 U. S. 580, 602 (1911) (“[W]e are unable to escape the con-
clusion that such use, in the manner shown, was to serve the
purpose of simulation . . .”); Herring-Hall-Marvin Safe Co.
v. Hall’s Safe Co., 208 U. S. 554, 559 (1908) (“[T]he rights of
the two parties have been reconciled by allowing the use,
provided that an explanation is attached”). But the common
law of unfair competition also tolerated some degree of con-
fusion from a descriptive use of words contained in another
person’s trademark. See, e. g., William R. Warner & Co. v.
Eli Lilly & Co., 265 U. S. 526, 528 (1924) (as to plaintiff ’s
trademark claim, “[t]he use of a similar name by another 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 origin or ownership of the product”); Canal
Co. v. Clark, 13 Wall. 311, 327 (1872) (“Purchasers may be
mistaken, but they are not deceived by false representations,
and equity will not enjoin against telling the truth”); see also
3 L. Altman, Callmann on Unfair Competition, Trademarks
and Monopolies § 18:2, pp. 18–8 to 18–9, n. 1 (4th ed. 2004)
(citing cases). While these cases are consistent with taking
account of the likelihood of consumer confusion as one consid-
eration in deciding whether a use is fair, see Part II–B, infra,
they do not stand for the proposition that an assessment of
“ ‘[un]likely to deceive the public.’ ” Hearings on H. R. 102 et al. before
the Subcommittee on Trade-Marks of the House Committee on Patents,
77th Cong., 1st Sess., 167–168 (1941) (hereinafter Hearings) (testimony of
Prof. Milton Handler).

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confusion alone may be dispositive. Certainly one cannot
get out of them any defense burden to negate it entirely.
Finally, a look at the typical course of litigation in an
infringement action points up the incoherence of placing a
burden to show nonconfusion on a defendant. If a plaintiff
succeeds in making out a prima facie case of trademark
infringement, including the element of likelihood of consumer
confusion, the defendant may offer rebutting evidence to
undercut the force of the plaintiff ’s evidence on this (or any)
element, or raise an affirmative defense to bar relief even if
the prima facie case is sound, or do both. But it would make
no sense to give the defendant a defense of showing affirma-
tively that the plaintiff cannot succeed in proving some ele-
ment (like confusion); all the defendant needs to do is to
leave the factfinder unpersuaded that the plaintiff has car-
ried its own burden on that point. A defendant has no need
of a court’s true belief when agnosticism will do. Put an-
other way, it is only when a plaintiff has shown likely confu-
sion by a preponderance of the evidence that a defendant
could have any need of an affirmative defense, but under
Lasting’s theory the defense would be foreclosed in such a
case. “[I]t defies logic to argue that a defense may not be
asserted in the only situation where it even becomes rele-
vant.” Shakespeare Co. v. Silstar Corp., 110 F. 3d, at 243.
Nor would it make sense to provide an affirmative defense
of no confusion plus good faith, when merely rebutting the
plaintiff ’s case on confusion would entitle the defendant to
judgment, good faith or not.
Lasting tries to extenuate the anomaly of this conception
of the affirmative defense by arguing that the oddity reflects
the “vestigial” character of the fair use defense as a histori-
cal matter. Tr. of Oral Arg. 39. Lasting argues that, be-
cause it was only in 1988 that Congress added the express
provision that an incontestable markholder’s right to exclude
is “subject to proof of infringement,” Trademark Law Revi-
sion Act of 1988, § 128(b)(1), 102 Stat. 3944, there was no

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requirement prior to 1988 that a markholder prove likelihood
of confusion. Before 1988, the argument goes, it was sensi-
ble to get at the issue of likely confusion by requiring a de-
fendant to prove its absence when defending on the ground
of fair use. When the 1988 Act saddled the markholder with
the obligation to prove confusion likely, § 1115(b), the revi-
sion simply failed to relieve the fair use defendant of the
suddenly strange burden to prove absence of the very confu-
sion that a plaintiff had a new burden to show in the first
place.
But the explanation does not work. It is not merely that
it would be highly suspect in leaving the claimed element of
§ 1115(b)(4) redundant and pointless. Hibbs v. Winn, 542
U. S. 88, 101 (2004) (noting “rule against superfluities” in
statutory construction). The main problem of the argument
is its false premise: Lasting’s assumption that holders of in-
contestable marks had no need to prove likelihood of confu-
sion prior to 1988 is wrong. See, e. g., Beer Nuts, Inc. v.
Clover Club Foods Co., 805 F. 2d 920, 924–925 (CA10 1986)
(requiring proof of likelihood of confusion in action by holder
of incontestable mark); United States Jaycees v. Philadel-
phia Jaycees, 639 F. 2d 134, 137, n. 3 (CA3 1981) (“[I]ncon-
testability [does not] mak[e] unnecessary a showing of likeli-
hood of confusion . . .”); 5 J. McCarthy, Trademarks and
Unfair Competition § 32:154, p. 32–247 (4th ed. 2004) (“Before
the 1988 Trademark Law Revision Act, the majority of
courts held that while incontestability grants a conclusive
presumption of the ‘exclusive right to use’ the registered
mark, this did not relieve the registrant of proving likelihood
of confusion”).
B
Since the burden of proving likelihood of confusion rests
with the plaintiff, and the fair use defendant has no free-
standing need to show confusion unlikely, it follows (contrary
to the Court of Appeals’s view) that some possibility of con-
sumer confusion must be compatible with fair use, and so it

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is. The common law’s tolerance of a certain degree of confu-
sion on the part of consumers followed from the very fact
that in cases like this one an originally descriptive term was
selected to be used as a mark, not to mention the undesirabil-
ity of allowing anyone to obtain a complete monopoly on use
of a descriptive term simply by grabbing it first. Canal Co.
v. Clark, 13 Wall., at 323–324, 327. The Lanham Act adopts
a similar leniency, there being no indication that the statute
was meant to deprive commercial speakers of the ordinary
utility of descriptive words. “If any confusion results, that
is a risk the plaintiff accepted when it decided to identify
its product with a mark that uses a well known descrip-
tive phrase. ” Cosmetically Sealed Industr ies, Inc. v.
Chesebrough-Pond’s USA Co., 125 F. 3d, at 30. See also
Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U. S. 189,
201 (1985) (noting safeguards in Lanham Act to prevent com-
mercial monopolization of language); Car-Freshner Corp. v.
S. C. Johnson & Son, Inc., 70 F. 3d 267, 269 (CA2 1995) (not-
ing importance of “protect[ing] the right of society at large
to use words or images in their primary descriptive sense”).5
This right to describe is the reason that descriptive terms
qualify for registration as trademarks only after taking on
secondary meaning as “distinctive of the applicant’s goods,”
15 U. S. C. § 1052(f), with the registrant getting an exclusive
right not in the original, descriptive sense, but only in the
secondary one associated with the markholder’s goods, 2
McCarthy, supra, § 11:45, p. 11–90 (“The only aspect of the
mark which is given legal protection is that penumbra or
fringe of secondary meaning which surrounds the old de-
scriptive word”).
5 See also Hearings 72 (testimony of Wallace Martin, Chairman, Ameri-
can Bar Association Committee on Trade-Mark Legislation) (“Everybody
has got a right to the use of the English language and has got a right to
assume that nobody is going to take that English language away from
him”).

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While we thus recognize that mere risk of confusion will
not rule out fair use, we think it would be improvident to go
further in this case, for deciding anything more would take
us beyond the Ninth Circuit’s consideration of the subject.
It suffices to realize that our holding that fair use can occur
along with some degree of confusion does not foreclose the
relevance of the extent of any likely consumer confusion in
assessing whether a defendant’s use is objectively fair. Two
Courts of Appeals have found it relevant to consider such
scope, and commentators and amici here have urged us to
say that the degree of likely consumer confusion bears not
only on the fairness of using a term, but even on the further
question whether an originally descriptive term has become
so identified as a mark that a defendant’s use of it cannot
realistically be called descriptive. See Shakespeare Co. v.
Silstar Corp., 110 F. 3d, at 243 (“[T]o the degree that confu-
sion is likely, a use is less likely to be found fair . . .” (empha-
sis deleted)); Sunmark, Inc. v. Ocean Spray Cranberries,
Inc., 64 F. 3d, at 1059; Restatement § 28; Brief for American
Intellectual Property Law Association as Amicus Curiae
13–18; Brief for Private Label Manufacturers Association as
Amicus Curiae 16–17; Brief for Society of Permanent Cos-
metic Professionals et al. as Amici Curiae 8–11.
Since we do not rule out the pertinence of the degree of
consumer confusion under the fair use defense, we likewise
do not pass upon the position of the United States, as ami-
cus, that the “used fairly” requirement in § 1115(b)(4) de-
mands only that the descriptive term describe the goods ac-
curately. Tr. of Oral Arg. 17. Accuracy of course has to be
a consideration in assessing fair use, but the proceedings in
this case so far raise no occasion to evaluate some other con-
cerns that courts might pick as relevant, quite apart from
attention to confusion. The Restatement raises possibilities
like commercial justification and the strength of the plain-
tiff ’s mark. Restatement § 28. As to them, it is enough to
say here that the door is not closed.

543US1 Unit: $$U7 [03-06-07 12:52:45] PAGES PGT: OPIN
124 KP PERMANENT MAKE-UP, INC. v. LASTING
IMPRESSION I, INC.
Opinion of the Court
III
In sum, a plaintiff claiming infringement of an incontest-
able 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 likeli-
hood of any confusion in raising the affirmative defense that
a term is used descriptively, not as a mark, fairly, and in good
faith, § 1115(b)(4).
Because we read the Court of Appeals as requiring KP to
shoulder a burden on the issue of confusion, we vacate the
judgment and remand the case for further proceedings con-
sistent with this opinion.6
It is so ordered.
6 The record indicates that on remand the courts should direct their at-
tention in particular to certain factual issues bearing on the fair use de-
fense, properly applied. The District Court said that Lasting’s motion
for summary adjudication conceded that KP used “microcolor” descrip-
tively and not as a mark. Case No. SA CV 00–276–GLT (EEx), at 8, App.
to Pet. for Cert. 29a. We think it is arguable that Lasting made those
concessions only as to KP’s use of “microcolor” on bottles and flyers in the
early 1990’s, not as to the stylized version of “microcolor” that appeared
in KP’s 1999 brochure. See Opposition to Motion for Summary Judgment/
Adjudication in Case No. SA CV 00–276–GLT (EEx) (CD Cal.), pp. 18–19;
Appellants’ Opening Brief in No. 01–56055 (CA9), pp. 31–32. We also note
that the fair use analysis of KP’s employment of the stylized version of
“microcolor” on its brochure may differ from that of its use of the term on
the bottles and flyers.