Saturday, June 18, 2016

Trademark Nominative Fair Use and Confusion

Trademark use and the element of fair use in business snags many businesses trying to market their service or product, while seemingly using a competitor’s trademark. Liability may not be avoided by relying on the fair use defense.  Words and their message are usually held to a standard regarding the possibility of consumer confusion.  There is also the element of misappropriation of a competitor’s product image, likeness, name, etc., that could lead to consumer confusion.  In the digital arena, this is prevalent.
An accepted response to an infringement trademark claim seeking to defend the use relies on the fairness of use when confusion is likely.  Standards vary in its defensive application, and of late, the Second Circuit weighed in on the debate.  The matter involved IISSCC[1] (ISC2) and Security University, LLC (SU).[2]  ISC2 had developed a certification program for information systems security training granting a certificate of achievement of the program.  The representation of the certification would connote that the individual is a recipient of a certification as a certified information systems security professional.  Such would as well represent satisfaction of course and testing requirements.
SU, as well, as ISC2 engages in a credentialed information systems security course program.  ISC2 found a reason to claim trademark infringement when it noticed that faculty members of SU were attributing their credentials to ISC2 nomenclature, i.e., using the acronym IISSCC.  The acronym IISSCC was using a qualifying word that ISC2 did not approve of nor did it offer.  Its use brought some confusion, as ISC2 claimed before the US District Court for the District of Connecticut.  The claimed advertisement described a certification that was higher than what ISC2 offered and they articulated that this would confuse consumers.  Nevertheless, the US District Court for the District of Connecticut granted summary judgment to SU hinging on its interpretation of nominative fair use which is underscored by SU’s reference to ISC2’s trademark.
The Second Circuit Court of Appeals reversed the District Court while analyzing the taxonomy set in previous cases, i.e. Polaroid Corp[3] and New Kids on the Block[4] out of the Second and Ninth Circuits respectively. Such criteria are necessary, the Second Circuit urges, in order to weigh the factors in the case. In its analysis, the Second Circuit weighed in on the factors to be screened, borrowed from the Polaroid case, to determine the likelihood of confusion in balance with the opportunity of fairly using a competitor’s trademark.  It underscored that the use of the defense of ‘nominative fair use’, in that the defendant has used the plaintiff’s trademark in its representations, is only plausible if there is the absence of consumer confusion between the two uses of the representations. A competitor would not be shielded from liability where is a reasonable likelihood of confusion.
The Second Circuit’s ruling is a clear indication of how strong the factor of ‘confusion’ plays in the marketplace.  The utility of the nominative fair use defense, though recognized throughout the circuits as a conditioned viable defense, will depend on the circuit where the case sits.  The element of confusion of one’s product or service with that of a competitor’s product or service should be carefully weighed before any product or service promoting campaign is launched.  The likelihood of success of the nominative fair use defense is uncertain despite its recognition and its articulation by the circuits.
[1] International Information Systems Security Certification Consortium, Inc.
[2] International Information Systems Security Certification Consortium, Inc. v. Security University, LLC, (2nd Cir. May 18, 2016).
[3] Polaroid Corp. v. Polarad Electronics Corp. (2d Cir. 1961).
[4] New Kids on the Block v. News Am. Publishing, Inc. (9th Cir. 1992).

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