Second Circuit Applies Nominative Fair Use Doctrine | Practical Law

Second Circuit Applies Nominative Fair Use Doctrine | Practical Law

In International Information Systems Security Certification Consortium, Inc. v. Security University, LLC, the US Court of Appeals for the Second Circuit rejected the nominative fair use tests of other circuit courts and held that nominative fair use factors must be considered in the context of the traditional likelihood of confusion analysis under Polaroid Corp. v. Polarad Electronics Corp.

Second Circuit Applies Nominative Fair Use Doctrine

Practical Law Legal Update w-002-4532 (Approx. 4 pages)

Second Circuit Applies Nominative Fair Use Doctrine

by Practical Law Intellectual Property & Technology
Published on 19 May 2016 • USA (National/Federal)
In International Information Systems Security Certification Consortium, Inc. v. Security University, LLC, the US Court of Appeals for the Second Circuit rejected the nominative fair use tests of other circuit courts and held that nominative fair use factors must be considered in the context of the traditional likelihood of confusion analysis under Polaroid Corp. v. Polarad Electronics Corp.
On May 18, 2016, in International Information Systems Security Certification Consortium, Inc. v. Security University, LLC, the US Court of Appeals for the Second Circuit reversed-in-part and remanded the US District Court for the District of Connecticut's summary judgment that the defendant's use of the plaintiff's certification mark was nominative fair use ( (2d Cir. May 18, 2016)).
Plaintiff International Information Systems Security Certification Consortium, Inc. (ISC2) is a non‐profit organization that develops standards for the information security industry. ISC2 developed a certification program through which it authorizes information security professionals who pass an examination and meet certain competency standards to use the certification mark CISSP, an acronym for Certified Information Systems Security Professional. ISC2 registered the CISSP certification mark with the US Patent and Trademark Office.
Defendant Security University, LLC (SU), a for-profit company, provides information security training. Among other things, SU offered a class to prepare individuals for ISC2's CISSP certification examination. The parties did not dispute that:
  • SU is allowed to use the CISSP mark to indicate that its services are directed at preparing students for the CISSP certification examination.
  • SU's instructors may identify themselves as being CISSP‐certified if they comply with ISC2's regulations governing the use of the mark.
However, ISC2 objected to a number of SU's advertisements, which ISC2 claims used the term "Master" in conjunction with the CISSP certification mark in a way to falsely suggest the existence of a "Master" level of CISSP certification (for example, by referring to a particular instructor as "Master CISSP® Clement Depuis"). ISC2 asked SU to cease and desist from its alleged improper use of the CISSP certification mark, and SU refused.
ISC2 sued SU, alleging that SU's refusal was:
  • Infringement under 15 U.S.C. § 1114 because SU's improper use would cause confusion by suggesting that ISC2's certification program could be "mastered."
  • False designation of origin and false advertising under 15 U.S.C. § 1125(a) because SU's advertisements suggested that SU's training courses originated with, or were sponsored by, ISC2.
  • Trademark dilution under 15 U.S.C. § 1125(c).
  • Unfair competition under the Connecticut Unfair Trade Practices Act (CUTPA) (Conn. Gen. Stat. § 42‐110a).
The district court granted summary judgment to SU on all counts, finding that ISC2's claims of infringement and false designation of origin failed under the doctrine of nominative fair use because SU's alleged misuse of ISC2's certification mark could not confuse consumers to think that ISC2 is the source of SU's services. The district court did not assess whether SU's use of ISC2's mark was likely to cause confusion under the Second Circuit's eight‐factor balancing test from Polaroid Corp. v. Polarad Electronics Corp.(287 F.2d 492 (2d Cir. 1961)). Instead, it applied the US Court of Appeals for the Ninth Circuit's three-factor nominative fair use test to SU's advertisements, which in the Ninth Circuit replaces the multi-factor likelihood of confusion test that courts in that circuit ordinarily apply in trademark infringement cases.
The Second Circuit rejected the district court's reliance on the Ninth Circuit's nominative fair use test, holding that courts in the Second Circuit should always consider the traditional Polaroid factors, to the extent they are applicable, in addition to the nominative fair use factors considered by the Ninth and other circuits (the court also rejected the US Court of Appeals for the Third Circuit's test, which views nominative fair use as an affirmative defense to trademark infringement). Specifically, the court held that in nominative fair use cases, courts must assess the likelihood of confusion by considering the Polaroid factors and:
  • Whether the use of the plaintiff's mark is necessary to describe both the plaintiff's product or service and the defendant's product or service.
  • Whether the defendant uses only so much of the plaintiff's mark as is necessary to identify the product or service.
  • Whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder.
Further, the court held that the district court had erred by:
  • Limiting its consideration to whether consumers would be confused into believing that ISC2 is the source of SU's services. The Second Circuit clarified that the Lanham Act provides relief for any type of consumer confusion, including confusion regarding ISC2's affiliation with or sponsorship or endorsement of SU or its services.
  • Questioning whether an entity that meets the requirements for certification can infringe the certification mark. Citing to Trademark Trial and Appeal Board precedent, the Second Circuit held that:
    • a junior user's certification status is irrelevant to whether it is infringing; and
    • the relevant query in all infringement suits in the Second Circuit is whether the defendant is using the mark in a manner that is likely to confuse consumers.
The Second Circuit vacated the district court's summary judgment finding of non-infringement. It also vacated the district court's rulings on false designation of origin and the CUTPA, which were based on the same reasoning that the district court applied to the infringement claim. However, the Second Circuit affirmed the district court's ruling on ISC2's dilution claim because it was not challenged on appeal.