If a defendant in a trademark case uses the plaintiff’s trademark, not to identify the defendant’s own products, but rather to refer accurately to the plaintiff’s products, is that trademark infringement? Called “nominative fair use” because it is a use of a trademark to “name” the real owner of the mark, an illustrative example would be an advertisement by the Acme Travel Agency that it books trips to Disneyland. Acme would be making a nominative use of the Disneyland mark because the mark is not being used to identify Acme’s travel services, but rather to refer to the actual theme park. The question of whether and when nominative use constitutes trademark infringement has bedeviled the courts for many years.

The Court of Appeals for the Second Circuit recently entered the fray in International Information Systems Security Certification Consortium, Inc. v. Security University, LLC, articulating a standard for determining whether a nominative use of a trademark is likely to cause confusion and therefore constitute infringement.

The plaintiff in the case, known as ISC², is a non-profit organization that developed a certification program for the information security industry.  ISC² adopted the registered certification mark CISSP to identify a “Certified Information Systems Security Professional.” Individuals who have met specified standards of competency in the information security field, including passing a certification exam administered by ISC², are authorized to use the CISSP mark. The defendant Security University (“SU”) is a for-profit company that offers classes to prepare individuals for ISC²’s certification examination. Plaintiff ISC² did not dispute that SU could use the CISSP certification mark to indicate that SU directs its services to preparing students for the CISSP examination. Nor did ISC² challenge the right of SU instructors to identify themselves as being CISSP-certified, so long as that representation was accurate.

However, ISC² objected to advertising claims that it believed misleadingly suggested that one of SU’s instructor had attained a higher level of certification as a “Master CISSP.” ISC² brought suit, and the district court granted summary judgment to SU on ISC²’s claims of infringement and false designation of origin based on the doctrine of nominative fair use. The Second Circuit vacated the grant of summary judgment and remanded the matter back to the district court for further proceedings.

The Second Circuit acknowledged that it had not yet squarely ruled on the standard that should be used to evaluate likelihood of confusion when nominative fair use is at issue. Accordingly, it looked at the differing approaches taken by the Third and Ninth Circuits. In the Third Circuit, nominative fair use is an affirmative defense that may be asserted by the defendant notwithstanding a finding of likelihood of confusion. To prevail on the defense, the defendant must show that: (1) the use of plaintiff’s mark is necessary to describe both the plaintiff’s product or service and the defendant’s product or service; (2) the defendant uses only so much of the plaintiff’s mark as is necessary to describe the plaintiff’s product; and (3) the defendant’s conduct or language reflect the true and accurate relationship between the plaintiff and defendant’s products or services.

In the Ninth Circuit, by contrast, nominative fair use is not an affirmative defense because it does not protect a defendant from liability if there is, in fact, a finding of likelihood of confusion. Rather, when nominative use is at issue, the Ninth Circuit replaces its standard multi-factor test for evaluating likelihood of confusion with a specifically designed three-part standard that is similar in substance to the affirmative defense factors used by the Third Circuit: (1) whether the plaintiff’s product or service is one that is not readily identifiable without using the trademark; (2) has the defendant used only as much as is reasonably necessary to identify the plaintiff’s product or service; and (3) whether the defendant has done anything to suggest sponsorship or endorsement by the plaintiff.

After considering these two different appellate approaches, the Second Circuit decided to go its own way. It rejected the Third Circuit’s affirmative defense analysis because nominative fair use is not one of the enumerated affirmative defenses to infringement set forth in Section 1115(b) of the Lanham Act. It also saw no need to replace the Second Circuit’s standard eight-factor test of likely confusion (known as the “Polaroid factors”), as the Ninth Circuit had done with its own standard multifactor test of likelihood of confusion. Rather, because the Polaroid factors are non-exclusive, the Second Circuit held that district courts should consider both the Ninth Circuit’s specially-designed factors for evaluating the likelihood of confusion caused by a nominative use and the Third Circuit’s affirmative defense nominative fair use factors, as well as the Polaroid factors. At first blush, that would seem like a lot of factors to consider (3 from the Ninth Circuit + 4 from the Third Circuit + 8 Polaroid factors, for a total of 15 factors). But the Second Circuit conceded that many of the standard Polaroid factors for assessing likely confusion would be a “bad fit” when nominative fair use is at issue. The court also distilled the substantially similar Third and Ninth Circuit factors into the following three:

1. 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;
2. Whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service; and
3. 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 plaintiff’s and defendant’s products or services.

The Second Circuit also directed district courts, when evaluating the third factor above, to consider not only the likelihood of confusion as to the source of the defendant’s products, but also likely confusion as to affiliation, sponsorship or endorsement by the mark holder.

Applying this standard to the hypothetical Acme Travel Agency cited at the outset of this post, it would likely be problematic for Acme to use a picture of Mickey Mouse to advertise its services, or the distinctive Disneyland logo, because that would be more than is absolutely necessary to identify the Disneyland theme park. Nor would it be acceptable for Acme to proclaim that it was an “authorized” Disneyland vacation booker (unless that was in fact the case). But it would be acceptable to use the word “Disneyland” to refer to the trip destination services offered by Acme.

The ISC² decision provides further valuable guidance about evaluating likelihood of confusion when infringement of a certification mark is alleged. The interesting certification mark issues explored by the Second Circuit will be the subject of a further post on The TMCA.