CAFC Vacates TTAB, Refuses Bright-Line Rule to Distinguish Software from Services Rendered

In re JobDiva, Inc.,  (Fed. Cir. Dec. 12, 2016) (Before Prost, Dyk, and Stoll, C.J.) (Opinion for the court, Stoll, J.)

The Federal Circuit vacated the Trademark Trial and Appeal Board’s (“Board”) cancellation of two JobDiva service mark registrations—one in whole and the other in part—and remanded for further consideration.

The two JOBDIVA service marks were registered for “personnel placement and recruitment” services and for “personnel placement and recruitment services; computer services, namely, providing databases featuring recruitment and employment, employment advertising, career information and resources, resume creating, resume transmittals and communication of responses thereto via a global computer network.”

JobDiva uses its marks in connection with product and services offerings, in the form of software that automatically provides “an applicant tracking system for recruiting departments, and for HR departments seeking to staff people.”  (internal quotations and punctuation omitted).

JobDiva originally petitioned the Board to cancel a registration owned by Jobvite, Inc., asserting a likelihood of confusion between Jobvite’s and JobDiva’s service marks.  Jobvite counterclaimed, arguing that JobDiva’s registrations should be canceled because JobDiva failed to perform personnel placement and recruitment services.  The Board granted Jobvite’s counterclaim despite the fact that Jobvite did not provide any affirmative evidence of abandonment.  In spite of JobDiva’s evidence that its software actually performs personnel placement and recruitment services, the Board faulted this evidence for failing to show that JobDiva offered the “software in addition to offering personnel placement and recruitment services.” (emphasis in original).

“Section 1(a) of the Lanham Act requires that an application to register a trademark must include specification of . . . the goods in connection with which the mark is used.” (internal quotation marks omitted).  Thus, “a registrant must use its mark in accordance with goods and services recited in the registration.”  If “the mark has not been used for the goods or services specified in the registration for at least three years and there is no showing of an intent to resume use of the mark for those goods or services,” a registration may be deemed abandoned and canceled.

The Court agreed with “the Board’s initial observation that, with modern technology, the line between services and products sometimes blurs.”  The Court rejected, however, the Board’s bright-line rule requiring JobDiva to prove that it provided personnel placement and recruitment services in a way other than by its software alone.  In such cases, the Court warned that a case-by-case determination must be made, and “careful analysis is required to determine whether web-based offerings, like those JobDiva provides are products or services.”  The Court clarified that “[e]ven though a service may be performed by a company’s software, the company may well be rendering a service.”  According to the Court, “[t]he question is whether a user would associate the mark with ‘personnel placement and recruitment’ services performed by JobDiva, even if JobDiva’s software performs each of the steps of the service.”

Because the Board applied the wrong legal standard, the Court vacated the Board’s decision and remanded for further consideration.

As the Court pointed out in its opinion, JobDiva could have avoided the issues in this case by initially registering “marks to identify both software and services performed by software.”  Practitioners should take care to register a mark for all goods and services for which the mark may be used.

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