In Re: Jobdiva, Inc.

Citations: 843 F.3d 936; 121 U.S.P.Q. 2d (BNA) 1122; 2016 U.S. App. LEXIS 21974; 2016 WL 7187434Docket: 15-1960

Court: Court of Appeals for the Federal Circuit; December 11, 2016; Federal Appellate Court

Original Court Document: View Document

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The United States Court of Appeals for the Federal Circuit reviewed JobDiva, Inc.'s appeal regarding the Trademark Trial and Appeal Board's (Board) decision on the use of its trademarks in connection with personnel placement and recruitment services. The Board concluded that JobDiva did not adequately demonstrate use of its marks beyond software offerings, ruling that software sales alone could not qualify as personnel and recruitment services. However, the Court disagreed, asserting that the critical issue is whether JobDiva's software facilitates personnel placement and recruitment services and if consumers associate its marks with these services, regardless of the software's role. The Court vacated the Board's decision, remanding the case for further examination of these questions.

Background information includes that JobDiva holds two service mark registrations for personnel placement and recruitment services and utilizes its trademarks in conjunction with a comprehensive suite of staffing solutions. JobDiva's software automates recruitment processes, including job candidate searches, resume analysis, and direct communication between hiring managers and candidates, often delivered via a Software as a Service (SaaS) model. The Court highlighted the software's ability to streamline traditional manual hiring processes and enhance candidate interaction, underscoring its relevance to the recruitment services industry.

Cloud computing is defined as operations performed on remote servers accessed via the Internet, as opposed to personal computers. JobDiva employs a Software as a Service (SaaS) model, allowing clients to use its software without local installations. JobDiva initially petitioned the Board to cancel a trademark registration held by Jobvite, asserting a likelihood of confusion between their service marks. In response, Jobvite counterclaimed, alleging JobDiva was not performing personnel placement and recruitment services, leading to a request for cancellation of JobDiva's registrations. The Board granted Jobvite's counterclaim by cancelling JobDiva's ’917 registration entirely and partially cancelling the ’235 registration.

The Board determined that a trademark is considered abandoned if its use is discontinued with no intent to resume, referencing Section 45 of the Trademark Act. The Board analyzed JobDiva's trademarks, concluding that "personnel placement and recruitment" implies active engagement in staffing services. Although JobDiva provided website evidence and a declaration from its CEO, the Board found this insufficient to demonstrate active use of the marks for the claimed services. Consequently, the Board ruled that JobDiva had not used its marks in connection with the specified services for three consecutive years, leading to the cancellations. JobDiva's petition for reconsideration was rejected, as the Board maintained that merely identifying a software program does not qualify it as a service mark in commerce.

A mark must identify and distinguish a service to qualify for trademark registration, not merely the software used to provide that service. The Board determined that JobDiva's evidence was inadequate because it only demonstrated the provision of software, not actual personnel placement and recruitment services. The Board emphasized the necessity of proving that JobDiva was rendering these services independently, rather than just supplying software to facilitate clients' recruiting activities. Despite JobDiva’s CEO asserting that their software performs personnel placement functions, the Board dismissed this as insufficient, reiterating that the evidence did not show JobDiva rendered those services apart from the software. Consequently, JobDiva failed to establish that it was providing personnel placement and recruitment services, leading to the denial of its request for reconsideration and an appeal. 

The legal framework under Section 1(a) of the Lanham Act mandates that trademark applications specify the goods or services associated with the mark. The Supreme Court has underscored the importance of these specifications due to the legal rights conferred by trademark registration. Failure to use the mark in line with the registered goods or services can lead to cancellation due to abandonment, particularly if there is no use for three years and no intent to resume. The burden of proving abandonment lies with the party seeking cancellation, and whether a mark has been used for a service is treated as a factual question.

A trademark holder's abandonment of a mark is a factual question, and the Board's legal conclusions are reviewed de novo, while its factual findings are assessed for substantial evidence. The distinction between products and services has become increasingly ambiguous due to modern technology. A company's web-based offerings may be perceived as either services or products, necessitating careful analysis of how a mark is used and its potential customer perception. The Board's error lay in imposing a rigid requirement on JobDiva to demonstrate that it provided personnel placement and recruitment services distinctly from its software offerings. The Board criticized JobDiva for not proving it rendered these services independently, despite the understanding that software could facilitate service delivery. This is supported by precedent where services were deemed to be provided via software, as illustrated by AOL's use of its mark for services accessed through software. Ultimately, the ’235 registration for various computer services remains unchallenged, indicating that software can indeed be utilized to provide services.

Determining the connection between a mark and the services described in its registration hinges on user perception, as established in Lens.com, Inc. v. 1-800 Contacts, Inc. The focus is on whether users associate JobDiva's mark with "personnel placement and recruitment" services, despite the functionality of its software. JobDiva can register marks for both software and the services it enables, as permitted under 37 C.F.R. 2.86, allowing for the same mark to identify goods and services across multiple classes. The key issue is whether consumers perceive JobDiva's marks to identify the specified services, which is a factual determination for the Board to resolve. The previous judgment was vacated and remanded due to the application of an incorrect legal standard.