KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.
Opinion
Lead Opinion
Hug, J.
I. Introduction
This case concerns the term “micro colors” 1 and who has the right to use it. *1065 Lasting Impression I, Inc., owns an incontestable, registered trademark which .consists of the term “micro colors,” set in white, within a black box. It is the registration for this composite mark that is the basis of this litigation.
K.P. Permanent Make-Up, Inc. (“KP”) uses the term “micro colors” on its products and brochures. Upon receiving a cease and desist letter from Lasting Impression I, Inc. in January 2000 demanding KP discontinue its use of the term “micro color,” KP brought this action for declaratory relief against the defendants Lasting Impression I, Inc., and its distributor, MCN International, Inc. (hereinafter collectively referred to as “Lasting”). KP asserted that Lasting did not have the exclusive right to use the term “micro colors” and that the term was generic and incapable of receiving trademark protection. Lasting counterclaimed, alleging that KP’s use of the term “micro color” infringed Lasting’s incontestable, registered mark. The parties filed cross motions for summary judgment and summary adjudication.