The federal courts of appeals have split as to how to apply the doctrine of nominative fair use in trademark infringement cases. Last week, the Second Circuit endorsed the nominative fair use factors used by the Ninth and Third Circuits. At the same time, however, the court rejected the manner in which the Ninth and Third Circuits evaluate these factors, instead adopting a third approach.

The decision is Int’l Info. Sys. Security Cert. Consortium Inc. v. Sec. Univ. LLC, No. 14-3456 (2d Cir. May 18, 2016) (decision available here). The plaintiff ISC developed a certification for information security professionals, marketed as the CISSP certification program. A party who passes the program can identify itself as CISSP certified.

The defendant, Security University, passed the program and therefore was able to identify itself with the CISSP certification mark. However, Security University chose to advertise itself as “Master CISSP” and “CISSP Master.” ISC objected to Security University’s use, arguing that it incorrectly suggested that the defendant had obtained some higher level of certification. As the lawsuit suggests, Security University declined to comply with ISC’s request.

For the casual trademark fan, it is worth noting that trademark law has two general types of “fair use.” Classic fair use, or descriptive fair use, has been recognized for a longer time. If a trademark consists of a descriptive word, consumers and competitors are free to use that mark in its original, descriptive meaning. The second category of nominative fair use is more recent. The doctrine provides that if a person is using a mark to identify the products of the trademark owner, then it is not an infringement (for more background, click here and here).

Not all circuit courts have adopted the nominative fair use doctrine. Those that have don’t agree on how to apply it. The Third Circuit considers nominative fair use to be an affirmative defense to a trademark infringement claim. Under Ninth Circuit case law, a court is required to identify whether the claim of infringement involves nominative fair use. If not, the traditional likelihood of confusion factors apply. If the complained of use does qualify as “nominative fair use,” then the likelihood of confusion factors are replaced by a different set of factors.

The Second Circuit rejected both of these approaches. In rejecting the Third Circuit’s view, it concluded that Congress did not intend for there to be an affirmative defense of nominative fair use because Congress chose not to include it with the other enumerated affirmative defenses. In rejecting the Ninth Circuit’s approach, the Second Circuit recognized that many of the likelihood of confusion factors are “a bad fit” to evaluate nominative fair use. Yet the Second Circuit saw “no reason” to replace the traditional test. Instead, the Second Circuit held that a court should consider the traditional likelihood of confusion factors, the Ninth Circuit’s nominative fair use factors, and the Third Circuit’s nominative fair use factors.

Instead of providing clarification regarding application of the nominative fair use doctrine, the Second Circuit’s decision seems to add another layer of disagreement. If the parties to the lawsuit aren’t already sick of litigation, perhaps the district court can provide some clarification on remand.