Eight is Not Enough: Second Circuit Adopts Eleven Factor Nominative Fair Use Test in Certification Mark Case

Security ISCInternational Information Systems Security Certification Consortium (known as ISC2) is a non-profit organization that owns a registered certification mark for the term CISSP® (meaning “Certified Information Systems Professional”).  In 2010, ISC2 sued Security University, a for-profit company that provides training in this field, because Security University described its lead instructor as a “Master CISSP®” or a “CISSP® Master.”  Although these advertisements had disclaimers stating that the Security University classes were “not endorsed, sponsored or delivered by ISC2” and acknowledging ISC2’s ownership of the registered mark, ISC2 complained that the use of this combined term was muddying the waters by implying that there existed some higher form of “master” certification that does not exist.

A district court judge granted summary judgment to Security University, holding that the university had never implied that it was the source of the certifications in question, and that it could not be held liable where the instructor was in fact certified by ISC2.  In May 2016, the Second Circuit reversed this ruling.  The Court held that confusion as to source is not the only form of actionable confusion, and that Security University could be liable for implying that there was such a thing as a “Master CISSP®.” The court cited precedents involving infringement of the DARJEELING® certification mark by the term “Darjeeling Nouveau,” and infringement of the COGNAC® certification mark by the term “Canadian Mist and Cognac.”  In each case, the defendant had been using the genuine, certified product (DARJEELING® tea and COGNAC® spirits, respectively), but was still causing confusion concerning the certification mark.

The case also raised the question of nominative fair use, since Security University was using the term CISSP® to refer explicitly to the plaintiff’s certification.  Although the Second Circuit had addressed nominative fair use cases before, it had never articulated an analytical framework for such cases.  The briefing of the parties and various amici (including the USPTO) focused on whether the court should adopt the approach of the Ninth Circuit, which employs three factors to determine likelihood of confusion in such cases, or the Third Circuit, which treats nominative fair use as an affirmative defense even where there is a likelihood of confusion.

Rejecting both of these frameworks, the Second Circuit chose a new, hybridized approach:  it rejected the Third Circuit’s affirmative defense approach and approved the Ninth Circuit’s three factors, but it stated that these factors should be discussed in addition to the normal eight-factor likelihood of confusion test (which in the Second Circuit are referred to as the Polaroid factors).  The Court reached this result even though it acknowledged that some of the original eight factors are a “bad fit” in nominative fair use cases.  The net result is that practitioners active in the Second Circuit – perennially one of the busiest circuits for trademark cases – can look forward to briefing a total of eleven factors, not three or eight, in disputes involving nominative fair use. These factors are:

  1. Strength of the trademark;
  2. Similarity of the marks;
  3. Proximity of the products and their competitiveness with one another;
  4. Evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product;
  5. Evidence of actual consumer confusion;
  6. Evidence that the imitative mark was adopted in bad faith;
  7. Respective quality of the products;
  8. Sophistication of consumers in the relevant market;
  9. 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, that is, whether the product or service is not readily identifiable without use of the mark;
  10. Whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service; and
  11. Whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or accurate relationship between the parties’ products or services.

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