A plaintiff's trademark is protected by federal law against infringement by use of colorable imitations of the mark which are likely to cause confusion, mistake, or deception. In determining whether there is a likelihood of consumer confusion for trademark infringement, the U.S. Court of Appeals for the Second Circuit applies the Polaroid eight-factor balancing test. The eight 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; and (8) sophistication of consumers in the relevant market.
Plaintiff-appellant International Information Systems Security Certification Consortium, Inc. filed suit against defendants-appellees Security University ("SU") and Sondra Schneider, alleging that defendants-appellees’ use of plaintiff-appellant’s certification mark violated the Lanham Act and constituted infringement, false designation of origin and false advertising, trademark dilution, and unfair competition. Following cross-motions for summary judgment, the district court granted summary judgment to defendants on all grounds, holding that defendants' use of the certification mark constituted nominative fair use under the Ninth Circuit's test, a valid defense to an infringement claim. The district court ruled that the only type of confusion relevant to an infringement claim was confusion as to source and that a certification mark could not be infringed by a duly certified individual.
Is nominative fair use an affirmative defense to a claim of infringement under the Lanham Act?
The Court held that nominative fair use is not an affirmative defense to a claim of infringement under the Lanham Act. As such, the Court determined that the district court erred by finding that the only type of relevant confusion was confusion as to source. The Court ruled that the proper test under 15 U.S.C.S. § 1114 was whether the company's use was likely to cause confusion not just as to source, but also as to sponsorship, affiliation, or connection. According to the Court, in cases involving nominative use, in addition to considering the Polaroid factors, courts are to consider 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. Courts also has to consider whether the defendant uses only so much of the plaintiff's mark as is necessary to identify the product or service; and 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. When considering these factors, the Court posited that courts must be mindful of the different types of confusion relevant to infringement claims, including confusion as to sponsorship, affiliation, or connection, as well as, when considering a certification mark, the various ways such a mark can be infringed.