The decision, which overturned a 9th U.S. Court of Appeals ruling, could be significant for online adult companies that maintain series of words are “trademarkable.”
For instance, a company called Hotsexmama.com would have a harder time suing another online adult company using the words “hot sex mama” in an advertisement, website or other marketing tool.
In Wednesday’s case, the 9-0 opinion involved the niche industry of permanent makeup inks and whether one company's trademark for the term "micro color" prevents a competitor from also using the words.
The decision said a company defending itself against a trademark-infringement claim can say it fairly used the disputed terms without having to prove consumers weren't confused by those ads.
Justice Souter, writing the opinion for the court, said that the burden of proving confusion falls on the company alleging trademark infringement. Both fair use and confusion are key components of trademark law.
"A plaintiff claiming infringement of an incontestable mark must show likelihood of consumer confusion," Souter wrote. "The defendant has no independent burden to negate the likelihood of any confusion."
The case is KP Permanent Make-Up Inc. vs. Lasting Impression I Inc., 03-409.