September 26, 2016 Top Story

Circuit Split Widens on Nominative Use of Certification Mark

Court remands case to district court to apply elevated standard for trademark infringement

Kelso L. Anderson

The nominative fair use of a certification mark is not an affirmative defense to an infringement claim under the Lanham Act, according to a recent federal appellate court decision. The decision continues a circuit split as to whether nominative fair use is an affirmative or substantive defense to a claim of trademark infringement. Litigants in undecided circuits involving nominative fair use may benefit from emphasizing the circuit split that exists among the courts to argue in favor of one position or the other, say ABA Section of Litigation leaders.

Infringement of Certification Mark?

In International Information Systems Security Certification Consortium Inc. v. Security University LLC, the plaintiff, a nonprofit organization created to develop standards for the information security industry, filed a lawsuit against Security University and its principal, alleging that the defendants infringed the plaintiffs' mark, among other violations, by misusing the plaintiff's certification mark. The plaintiff developed the certification mark, CISSPĀ®, to denote a "Certified Information Systems Security Professional" who has met certain requirements and standards of competency in the information security field, including passing the CISSPĀ® certification examination that the plaintiff administers.

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