On appeal from the Trademark Trial and Appeal Board (TTAB), the US Court of Appeals for the Federal Circuit reviewed the issue of trademark use in commerce and, more specifically, the extent to which certain services can be rendered through related computer software services. The court examined whether the trademark owner used its trademarks in commerce in connection with “personnel placement and recruitment services,” or whether (as the TTAB held) the trademark owner failed to use the marks in connection with services because its use was only in connection with software offerings. In re JobDiva, Inc., Case No. 15-1960 (Fed. Cir., Dec. 12, 2016) (Stoll, J).  

The appeal to the Federal Circuit followed the TTAB’s partial and full cancellation of two US trademark registrations for JOBDIVA owned by JobDiva, Inc., a company that provides employment application tracking and management solutions. After filing a cancellation action against a third-party’s trademark registrations for JOBVITE, which were registered for employment-related services, JobDiva found itself on the other end of Jobvite’s counterclaim for cancellation of the JOBDIVA trademarks. Jobvite alleged that JobDiva did not provide personnel “placement and recruitment services” and therefore had abandoned the use of its JOBDIVA marks in connection with those particular services. 

Granting the counterclaim, the TTAB cancelled the JOBDIVA trademarks to the extent that the registrations covered personnel placement and recruiting services. The TTAB came to this conclusion after it examined JobDiva’s evidence of use of the JOBDIVA marks and found that the evidence made no reference to JobDiva’s performance of personnel placement or recruitment services other than providing software-as-a-service offerings, including employment application databases and resume analysis, to hiring managers and recruiters. The TTAB indicated that JobDiva would need to demonstrate that it was rendering “personnel placement and recruitment services separate and apart from” providing its software services and licensing. Thus, the TTAB cancelled the marks for “non-use,” since US trademark law provides for cancellation of a trademark when it has not been used for the goods or services listed in the US trademark registration for at least three years with no intent to resume use of the mark. JobDiva appealed. 

On appeal, the Federal Circuit found that the TTAB erred in its understanding of the law when it required JobDiva to show that it was providing personnel placement and recruiting services in addition to its provision of software. The Court explained that “[e]ven though a service may be performed by a company’s software, the company may well be rendering a service,” citing a decision in which the court “at bottom . . . recognized that software may be used by companies to provide a service.”  

The Federal Circuit further explained that the perception of the consumer is key to assessing whether a mark is used in connection with the services described in the registration. Here, the issue was whether the evidence demonstrated that a user would associate the JOBDIVA mark with placement and recruiting services, even though JobDiva’s software ultimately performs the necessary steps of the services.

The Federal Circuit vacated and remanded the TTAB’s decision to consider the factual question of whether purchasers would perceive JobDiva’s marks to identify “personnel placement and recruitment services.”

Practice Note: JobDiva found itself defending the validity of its own trademarks after filing a cancellation petition against a JOBVITE registration. This case is a reminder that right holders should be prepared to support and defend their own trademarks if they challenge another party’s application or registration.