Int'l Info. Sys. Sec. Certification Consortium v. Sec. Univ.

When a company uses a certification mark of another company in order to advertise training of the service registered under that mark, the Court applies a two-prong test to determine if there is trademark infringement.

International Information Systems Security Certification Consortium, Inc. (“Plaintiff”) began using the mark "CISSP®," which denotes a Certified Information Systems Security Professional who has met certain requirements and standards of competency in the information security field. CISSP® is a special type of trademark known as a "certification mark." A certification mark is specifically designed to be used by those other than its owner. Defendant Security University, LLC (“SU”), was formed to provide information security training. It has used the CISSP® mark in connection with certification-specific training courses since 2001. In some advertisements, SU stated that the CISSP® examination preparation course would be taught by "Master CISSP®" instructors. Plaintiff's counsel wrote to SU asking that it cease using the phrase "Master CISSP®" in SU's advertisements. SU refused. The First and Second Counts of Plaintiff’s claim alleged that SU infringed the CISSP® mark in violation of 15 U.S.C. § 1114 by using the mark in a way "likely to cause confusion, or to cause mistake, or to deceive." A claim of trademark infringement is analyzed under a two-prong test. The test looks first to whether the plaintiff's mark is entitled to protection, and second to whether the defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant's goods. Defendant claimed nominative fair use; nominative fair use applies when all three of the following requirements are met: (1) the product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. The Court found all three requirements to be satisfied. The Third and Fourth Counts of Plaintiff’s claim alleged a false designation of origin. Nominative fair use defeats a false designation of origin claim just as it does a trademark infringement claim. The Fifth and Sixth Counts of plaintiff’s claim alleged that SU’s actions diluted the distinctive qualities of the CISSP® mark, in violation of 15 U.S.C. § 1125(c). The statute sets forth two separate types of dilutive acts: (1) dilution by blurring, and (2) dilution by tarnishment. Dilution by blurring is "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark." Dilution by tarnishment is "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark." The fame of a plaintiff's mark is a threshold requirement for finding dilution under either a blurring or tarnishment theory. Although Plaintiff showed that it has significant annual revenue and that 80,000 individuals in more than 135 countries have obtained CISSP® certification, the Court determined this insufficient to demonstrate recognition by the general consuming public, rather than a niche industry.

The court GRANTED SU's Motion for Summary Judgment and DENIED Plaintiff's Motion for Summary Judgment.