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For a few excruciating minutes during a recent U.S. Supreme Court oral argument in a key trademark case, it appeared that Beth Brinkmann had fallen into one of the worst traps an advocate can stumble into: agreeing with her adversary. When both sides agree on what seems to be a central point in a case, justices start wondering out loud why they agreed to review it, since they were placed on this earth to referee disagreements. Grumpily, they start looking around the courtroom for people to blame for wasting their time. The lawyer in front of them can be one target for their wrath, but often there might be a sheepish law clerk sitting in the far corner of the court chamber reassessing his or her career plans, because it was that clerk’s memo that persuaded the justices to grant review in the first place. Brinkmann, a partner in the D.C. office of Morrison & Foerster, had just acknowledged that it was the burden of her client company, Lasting Impression I Inc., to prove that her adversary, KP Permanent Makeup Inc., had likely caused consumer confusion when it prominently used the term “micro color” to describe its products — a phrase that Lasting Impression had registered as a trademark for similar products. Her adversary, Michael Machat, had earlier said the same thing on a point of Lanham Act law that was contained in the question that the Supreme Court had agreed to answer. Suddenly it seemed that the case was evaporating. “Now, I’m confused,” Justice Stephen Breyer told Brinkmann. “That’s the end of the case, isn’t it? That’s what we took it to decide, and you agree with it, and they agree with it, so everybody’s happy. We don’t even have to write an opinion.” Strategically, Brinkmann could have helped her client most by agreeing with Breyer, sitting down and packing up her papers. If the court were to dismiss the case as “improvidently granted,” which the court usually does once or twice a term, the ruling by the 9th U.S. Circuit Court of Appeals that sided with Brinkmann’s client would be allowed to stand; she, in effect would win. But Brinkmann, once a high court law clerk for the late Justice Harry Blackmun and formerly with the solicitor general’s office, knew she had a higher duty to be straight with the court. She explained to the justices that her adversary’s formulation of the question before the court was a “misnomer,” for complicated reasons relating to the posture of the case. In other words, even though both sides agreed on who had the burden of proving likely confusion, Brinkmann made it clear there were plenty of disagreements left for the justices to resolve. Justices still grumbled for a bit. “This is really quite confusing, Ms. Brinkmann,” Chief Justice William Rehnquist fumed. But Brinkmann stayed the course. Eventually the court settled down. The case involves an industry you might not have heard of: permanent makeup. It’s a kind of tattooing, actually, in which pigments are injected into the skin. But it has medical and cosmetic uses including “scar revision” as well as creating permanent eyeliner and enhancing eyebrows. When KP adopted the term “micro color” to describe its pigments, it argued that it was making “fair use” of a descriptive term, which it claims is allowed by the Lanham Act — even if some measure of consumer confusion results. Justice Antonin Scalia challenged KP’s lawyer Machat to “give me a clear example” of how someone else’s mark could be used fairly and in good faith if it also causes confusion. Machat, a hesitant first-time advocate before the court, nonetheless had a quick response to Scalia’s request. Machat offered a hypothetical store named “Mark’s Electronics” that he said ought to be able to advertise that it has “the best buy in consumer electronics,” even if using the phrase “best buy” might make consumers think of the big-box store of the same name. Confusion is tolerated, he said, so that companies cannot lock up descriptive terms for their own use. The solicitor general’s office also came out in favor of a little consumer confusion. Even when Justice Anthony Kennedy posited a case where a competing company deliberately mimics a trademark “just to get more customers away from the trademark holder,” assistant to the solicitor general Patricia Millett’s response was, “There’s nothing wrong in the marketplace with wanting to increase your business and to use descriptive terms descriptively to do that.” Ralph Nader, where are you? Kennedy pressed her further, and she conceded a line could be crossed if the alleged trademark infringer is using the phrase as a trademark to describe a product inaccurately, just as any other deceptive advertising is illegal. “I can describe Twinkies as a sugary snack,” Millett said. “I can’t fairly describe Twinkies as a healthy food.” As if the makers of Twinkies did not have enough trouble — they filed for bankruptcy protection in September — now the government is dissing Twinkies too. Oddly, Millett seemed intent on making it clear that she is not familiar with the permanent makeup industry, and she shied away from stating whether the phrase “micro color” is in fact a generic or descriptive term. “Well, you have to weigh in on it,” Scalia told her, and Millett did finally say that Congress intended to allow broad use of descriptive terms like micro color “for the marketplace, for competition.” The free market argument seemed to win Scalia back. “In other words, if you choose to use a descriptive term as your logo, you take your chances.” So Brinkmann had her work cut out for her even without the temporary meltdown of her case. But she repeated her mantra that the likelihood of confusion defeats the fair-use defense every time. And she insisted that “micro” is not a real or descriptive word. Breyer pushed her back on that point, asserting that it “describes very well what it is; it’s a tiny, teeny-weeny weeny bit of color.” He also said the phrase “micro pigment” would not be a good alternative. “I think of a farm animal,” Breyer said, perhaps thinking too hard about the problem. Breyer also asked whether under Brinkmann’s theory, IBM could have forever kept the word “computer” for its exclusive use. Brinkmann’s quick response was that Congress allows for the cancellation of trademarks — like elevator and aspirin — when they become generic. Afterward, Brinkmann wisely shied away from predictions. Trademark cases often turn out to be like “a parlor game,” she said, with endless hypotheticals that bolster one point or another. In a case that turns on the confusion of consumers — and, it turns out, the confusion of the justices — it could be anyone’s win.

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