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Circuit Split Widens on Nominative Use of Certification Mark

By Kelso L. Anderson, Litigation News Associate Editor – September 26, 2016

The nominative fair use of a certification mark is not an affirmative defense to an infringement claim under the Lanham Act, according to a recent federal appellate court decision. The decision continues a circuit split as to whether nominative fair use is an affirmative or substantive defense to a claim of trademark infringement. Litigants in undecided circuits involving nominative fair use may benefit from emphasizing the circuit split that exists among the courts to argue in favor of one position or the other, say ABA Section of Litigation leaders.

Infringement of Certification Mark?
In International Information Systems Security Certification Consortium Inc. v. Security University LLC, the plaintiff, a nonprofit organization created to develop standards for the information security industry, filed a lawsuit against Security University and its principal, alleging that the defendants infringed the plaintiffs' mark, among other violations, by misusing the plaintiff's certification mark. The plaintiff developed the certification mark, CISSP®, to denote a "Certified Information Systems Security Professional" who has met certain requirements and standards of competency in the information security field, including passing the CISSP® certification examination that the plaintiff administers.

Defendant Security University is a for-profit company formed by its principal, a CISSP® certified individual, to provide information security training. Security University offers various classes, including a class to prepare individuals for the plaintiff's CISSP® certification examination. From its inception, Security University has used the CISSP® mark in connection with certification-specific training for individuals who take the plaintiff's certification exam. More recently, in connection with its security training, Security University used the phrase "Master CISSP®" and "CISSP® Master" in its advertisements to the public to describe one of its security training instructors. The plaintiff does not offer a "Master CISSP®" certification; however, the defendants maintained that, since their instructor was "a male teacher," the use of the term "Master" before the CISSP® certification mark was appropriate. The plaintiff unsuccessfully sued the defendants in the U.S. District Court for the District of Connecticut alleging, among other claims, trademark infringement.

Expanding Polaroid Test for Infringement
In rejecting the district court's conclusion that the defendants' use of the "Master CISSP®" mark was not infringement, the U.S. Court of Appeals for the Second Circuit acknowledged that certification marks, unlike traditional trademarks, are supposed to be used by those other than their owners, to indicate the quality, accuracy, or other traits of the goods or services. Nonetheless, the appellate court indicated that despite "the differences between certification marks and other types of marks, the Lanham Act provides that certification marks are generally entitled to the same protection from infringement as are trademarks."

Previously, in Polaroid Corp. v. Polarad Electronics Corp., the Second Circuit set forth an eight-part disjunctive test to determine whether there is a likelihood of consumer confusion for trademark infringement. Although no single Polaroid element is dispositive, courts are to engage in an analysis of each to determine its relevance to the facts of a case. The district court did not apply the Polaroid test, but instead applied the Ninth Circuit's nominative fair use test as announced in New Kids on the Block v. News America Publishing, Inc., which permits a defendant to make nominative fair use of a plaintiff's trademark so long as such use does not "imply sponsorship or endorsement by the trademark owner." Nominative fair use, the Second Circuit explained, is "use of another's trademark to identify, not the defendant's goods or services, but the plaintiff's goods or services." While the Ninth Circuit's test is not an affirmative defense to an infringement claim, other circuits, including the Third, have adopted analogous nominative fair use tests and treated them as affirmative defenses.

Here, the Second Circuit rejected the district court's conclusion that the only type of confusion relevant to determining infringement is confusion as to source. Instead, the court noted that confusion as to sponsorship, affiliation, or connection should also be considered. The court remanded the case to the district court to consider and apply the Polaroid factors and the nominative fair use tests adopted by the Third and Ninth Circuits—though it rejected the former's use of the test as an affirmative defense to an infringement claim.

Arguing Nominative Fair Use Going Forward
Section of Litigation leaders believe the International Information Systems court compounded the circuit split that already exists as to nominative fair use of certification marks. "Litigants in cases involving nominative fair use may benefit from emphasizing the circuit split that exists among the courts to have adopted the doctrine in their treatment thereof," says Lesley M. Grossberg, Philadelphia, PA, cochair of the Website Subcommittee of the Section of Litigation Intellectual Property Committee. "In the many jurisdictions where there is not yet binding authority adopting the principles of nominative fair use or setting forth the precise analysis to be undertaken, defendants will want to emphasize the Ninth and Third Circuits' approaches, while plaintiffs may point to the lack of binding jurisprudence or Congressional action to argue that the doctrine should not be recognized at all," she suggests.

"For nominative fair use in general, the best argument is usually that it would be unfair to the defendant to be precluded from comparing his product or service to his competitors.' Verizon, for example, will say that it needs to be able to discuss the specific reasons it is different from Sprint and T-Mobile in order to compete in the marketplace," explains Marcus R. Chatterton, Birmingham, AL, cochair of the Copyright Subcommittee of the Section's Intellectual Property Committee.

Keywords: fair use, trademark, certification mark, infringement, likelihood of confusion, information security

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