On December 12, 2016, the Federal Circuit vacated and remanded a Trademark Trial and Appeal Board (TTAB) ruling concerning the registrability of software-as-a-service (SaaS) trademarks in In re JobDiva, Inc., No. 15-1960 (Fed. Cir. Dec. 12, 2016). As a result of the Federal Circuit's holding, a SaaS trademark registrant may be able to increase the scope of its federal protection by registering its SaaS mark in additional trademark classes without having to demonstrate evidence independent of its software services.

SaaS is a method of software delivery which allows users to utilize software programs without having to download or store software applications on their own hardware devices. Instead, users often access SaaS through the Internet via cloud computing. JobDiva's SaaS allows its users to fill job openings, find potential job candidates, review and analyze resumes, and communicate with potential employers and job candidates, among other things. See id. at *3.

Analyzing JobDiva's SaaS, the Federal Circuit disagreed with the TTAB's ruling that the software company's trademark could not be registered as a service mark for "personnel placement and recruitment services." Rejecting the TTAB's bright-line test requiring JobDiva to prove that it rendered "personnel placement and recruitment" independent of its software services, the Federal Circuit held that the perception of the user should be the focus in determining the registrability of a SaaS trademark. Specifically, "whether a user would associate the mark with 'personnel placement and recruitment' services" is the correct inquiry for determining the SaaS's registrability as a "personnel placement and recruitment service" mark, even if those services were performed by JobDiva's software. See id. at *10-11.

Whether there is a sufficient association in the mind of a consumer is debatable, but the Federal Circuit indicated that when users access the SaaS from a third-party website, sufficient association is unlikely. Id. at *11. In contrast, when users access the SaaS directly from the trademark registrant, sufficient association with the service is more likely in the minds of consumers. Id.

The Federal Circuit's holding focusing on user perception may provide more alternatives to SaaS registrants when they are trying to determine which services are viable trademark registration options. If consumers access the SaaS directly from the trademark registrant, the registrant might be able to increase its trademark protection by registering its mark in additional trademark classes.