The appellant petitioned the Trademark Trial and Appeal Board (TTAB) for review of two service marks. The marks are for “personnel placement and recruitment” services and are used in connection with the appellant’s job application processing software. The TTAB canceled the marks on grounds of abandonment due to non-use for three consecutive years because the use of the marks to identify computer software does not become a service mark because the software is sold or licensed. The TTAB denied the appellant’s request for reconsideration and the appellant appealed.

The TTAB applied a bright-line rule requiring the appellant to show it performed “personnel placement and recruitment” services in addition to providing its software. The TTAB found that the appellant failed to establish that “it is rendering ‘personnel placement and recruitment’ services for others separate and apart from providing its software.” After finding no evidence, the appellant used the marks in connection with “personnel placement and recruitment” services, the TTAB held that the marks were abandoned.

The Federal Circuit rejected the TTAB’s bright-line rule: “Even though a service may be performed by a company’s software, the company may well be rendering a service.” The Federal Circuit held the proper question is whether the appellant performed “personnel placement and recruitment” services through its software and whether consumers would associate the appellant’s marks with those services—regardless of whether the service was performed by software. Since this is a factual determination, the Federal Circuit remanded the case to the TTAB with instructions to apply the correct legal standard.