In the case of In re: JobDiva, Inc., 2015-1960 (Fed. Cir. 2016) (Available here), the Federal Circuit held that in connection with proving use of JobDiva’s mark for “personnel placement and recruitment,” the proper question is whether JobDiva, through its software, performed personnel placement and recruitment services and whether consumers would associate JobDiva’s registered marks with personnel placement and recruitment services, regardless of whether the steps of the service were performed by software.
The case was appealed to the Federal Circuit from the Trademark Trial and Appeal Board’s (“Board”) decision cancelling JobDiva’s marks because the Board found that JobDiva failed to perform personnel placement and recruitment services. The Board said the services for “personnel placement and recruitment” meant that JobDiva is required to prove that it is finding and placing people in jobs at other companies or providing personnel staffing services for others.
In fact, JobDiva offers an applicant tracking system for recruiting departments seeking to staff people. JobDiva uses software accessible from its website and renders these offerings on a software-as-a-service basis to its customers. The Board found JobDiva’s evidence was insufficient in that there was no reference to JobDiva’s performance of personnel placement and recruitment services other than supplying the software. Thus, the Board found non-use and cancelled the mark for the respective services.
The Federal Circuit disagreed with the Board and determined that even though a service may be performed by a company’s software, the company may well be rendering a service. To determine whether a mark is used in connection with the services described in the registration, a key consideration is the perception of the user. For example, would a user 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.
The Court found that this a factual determination that must be conducted on a case-by-case basis. For example, what is the nature of the user’s interaction with JobDiva when using JobDiva’s software? If the software is hosted on JobDiva’s website, a user might well associate JobDiva’s marks with personnel placement and recruitment services performed by JobDiva. Accordingly, the Court remanded the case to the Board for further consideration in light of the Court’s opinion.