In Re: Jobdiva, Inc. , 843 F.3d 936 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: JOBDIVA, INC.,
Appellant
______________________
2015-1960
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in
No. 92050828.
______________________
Decided: December 12, 2016
______________________
DANIEL I. SCHLOSS, Greenberg Traurig LLP, New
York, NY, argued for appellant. Also represented by
MASAHIRO NODA.
MARY BETH WALKER, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for intervenor Michelle K. Lee. Also represented
by THOMAS W. KRAUSE, CHRISTINA HIEBER.
______________________
Before PROST, Chief Judge, DYK, and STOLL, Circuit
Judges.
STOLL, Circuit Judge.
In this trademark case, we must decide whether Job-
Diva, Inc. used its marks in connection with personnel
placement and recruitment services, or whether the
2 IN RE: JOBDIVA, INC.
Trademark Trial and Appeal Board correctly held that
JobDiva failed to do so because it used its marks on
software offerings, without more. The Board required
JobDiva to prove that it used its marks on more than just
software because its software sales alone could not, in the
Board’s view, constitute personnel and recruitment ser-
vices. We disagree with the Board’s approach. The
proper question is whether JobDiva, through its software,
performed personnel placement and recruitment services
and whether consumers would associate JobDiva’s regis-
tered marks with personnel placement and recruitment
services, regardless of whether the steps of the service
were performed by software. Because the Board must
visit that question in the first instance, we vacate its
decision and remand for further consideration.
BACKGROUND
I.
On June 8, 2004, the United States Patent and
Trademark Office issued Registration No. 2851917 (“the
’917 registration”) to JobDiva for the service mark
JOBDIVA for “personnel placement and recruitment”
services. On November 8, 2005, it issued Registration
No. 3013235 (“the ’235 registration”) to JobDiva for the
service mark shown below:
for “personnel placement and recruitment services; com-
puter services, namely, providing databases featuring
recruitment and employment, employment advertising,
career information and resources, resume creation, re-
sume transmittals and communication of responses
thereto via a global computer network.” J.A. 498; see also
J.A. 52–53.
IN RE: JOBDIVA, INC. 3
JobDiva uses its trademarks in connection with its
product and service offerings, which its website describes
as “the largest, ultimate, full service solution for the
staffing industry with an extensive suite of products &
tools, front to back end, covering all staffing needs.”
J.A. 117. JobDiva offers, in the words of its Chief Execu-
tive Officer, “an applicant tracking system for recruiting
departments, [and] for HR departments seeking to staff
people.” J.A. 212. JobDiva uses software to automatically
provide these offerings to clients.
JobDiva’s software generally provides a database of
employment applications that a hiring manager or re-
cruiter might use to fill a job opening. J.A. 223. The
software performs multiple functions to facilitate this job-
filling process. It employs automated “harvesters” to find
potential job candidates by automatically scraping job
boards and aggregating relevant resumes. J.A. 223, 461–
63. And it reviews and analyzes job candidates’ resumes
to determine if any candidate’s qualifications match the
job’s requirements. J.A. 393. It thus “replaces a tedious
manual search” previously performed by hiring managers
or recruiters. J.A. 462–63. JobDiva also helps hiring
managers directly communicate with job candidates. For
instance, it permits hiring managers to post job openings
in a job candidate portal. J.A. 221. This candidate portal
may also be embedded into a company’s website. J.A. 13.
The software further assists job candidates by recom-
mending potential openings to the candidates based on
skillsets and provides them automated resume feedback.
J.A. 221.
In many circumstances, JobDiva renders these offer-
ings on a software-as-a-service, or “SaaS,” basis to its
customers. As the Board explained, “Software as a Ser-
vice (SaaS) leverages software by delivering it over the
Internet.” JobDiva, Inc. v. Jobvite, Inc., Cancellation
No. 92050828, 2015 WL 3542849, at *1 (T.T.A.B. May 20,
2015) (“JobDiva Rehearing”). The Board noted that SaaS
4 IN RE: JOBDIVA, INC.
is “also known as cloud computing.” Id. at *2. “Cloud
computing,” according to the Board, “is defined as ‘compu-
ting operations carried out on servers that are accessed
through the Internet, rather than on one’s own personal
computers.’” Id. at *2 (quoting Dictionary of Computer
and Internet Terms 434 (11th ed. 2013)). By hosting its
software remotely, JobDiva provides its clients a product
without the need to download “cumbersome soft-
ware . . . onto office desktops or laptops.” J.A. 474.
As the Board explained, JobDiva’s SaaS model of
software delivery also changes the way that users interact
with JobDiva: “The users pay for the computing as a
service rather than owning the machines and software to
do it.” JobDiva Rehearing, 2015 WL 3542849, at *2
(quoting Dictionary of Computer and Internet Terms,
supra, at 434). Unlike a locally installed software pro-
gram, which might be downloaded from the Internet or a
disk, JobDiva’s software resides on remote servers and
customers access it via the Internet.
II.
The Board cancelled JobDiva’s marks in a proceeding
that JobDiva originally requested. JobDiva initially
petitioned the Board to cancel a registration owned by
Jobvite, Inc., which is no longer a party to this case.
JobDiva asserted, inter alia, a likelihood of confusion
between Jobvite’s and JobDiva’s service marks. To estab-
lish its claim, JobDiva asserted ownership of its two
marks introduced above.
Jobvite counterclaimed, petitioning the Board to can-
cel JobDiva’s trademark registrations by alleging that
JobDiva failed to perform personnel placement and re-
cruitment services. Jobvite requested that the Board
cancel the ’917 registration in whole and its ’235 registra-
tion in part. Notably, Jobvite did not submit affirmative
evidence of abandonment or challenge that JobDiva used
IN RE: JOBDIVA, INC. 5
the ’235 registration to identify the other services speci-
fied in its registration.
A.
The Board granted Jobvite’s counterclaim, cancelling
the ’917 registration in whole and the ’235 registration in
part. JobDiva, Inc. v. Jobvite, Inc., Cancellation
No. 92050828, 2015 WL 2170162 (T.T.A.B. Apr. 16, 2015).
The Board explained that under Section 45 of the Trade-
mark Act, “[a] mark shall be deemed to be ‘aban-
doned’ . . . [w]hen its use has been discontinued with
intent not to resume such use.” Id. at *7 (quoting 15
U.S.C. § 1125).
The Board started its analysis of JobDiva’s use of its
marks by defining the scope of JobDiva’s registrations for
“personnel placement and recruitment” services and
consulting dictionary definitions for each word. Id. at *6.
Combining these definitions, the Board found that “per-
sonnel placement and recruitment” meant “that [JobDiva]
is finding and placing people in jobs at other companies or
providing personnel staffing services for others.” Id.To prove its use of the marks in connection with per-
sonnel placement and recruitment, JobDiva had submit-
ted screenshots from its website and a declaration of its
CEO, Diya Obeid. But the Board found JobDiva’s evi-
dence insufficient, explaining that “[t]here [was] no refer-
ence . . . to Petitioner’s performance of personnel
placement and recruitment services other than supplying
Petitioner’s software.” Id. The Board concluded that,
“[s]ince there is no evidence of use of Petitioner’s marks in
connection with ‘personnel placement and recruitment’
services, there has been nonuse for three consecutive
years.” Id. The Board therefore cancelled the ’917 regis-
tration in whole and amended the ’235 registration to
delete “personnel placement and recruitment.” Id.6 IN RE: JOBDIVA, INC.
B.
JobDiva petitioned the Board to reconsider its judg-
ment, arguing that “the Board made erroneous findings of
fact because there is ‘abundant evidence of record’ that
shows Petitioner providing the service of ‘finding and
placing people in jobs at other companies or providing
personnel staffing services for others.’” JobDiva Rehear-
ing, 2015 WL 3542849, at *1. The Board again disagreed,
finding that JobDiva had failed to prove use of its marks
for “personnel placement and recruitment” services.
The Board explained that “[a] term that only identi-
fies a computer program does not become a service mark
merely because the program is sold or licensed in com-
merce.” Id. at *2. “Such a mark does not serve to identify
a service unless it is also used to identify and distinguish
the service itself, as opposed to the program.” Id. The
Board counseled, however, that “it is important to review
the record carefully to determine the manner of use of the
mark and the impression it is likely to make on purchas-
ers.” Id.The Board found JobDiva’s evidence of use insuffi-
cient because JobDiva only provided software, but not
additional “personnel placement and recruitment” ser-
vices. The Board explained that it “looked for evidence
that Petitioner was rendering ‘personnel placement and
recruitment services’ for others rather than merely
providing a software solution for clients to use in perform-
ing their ‘personnel placement and recruitment’ activi-
ties.” Id. The Board criticized JobDiva for “confus[ing]
the service of providing a software solution for personnel
placement and recruitment with actually rendering
personnel placement and recruitment services.” Id. at *3.
The Board repeatedly faulted JobDiva’s evidence as
proving only that JobDiva offered software for personnel
placement and recruitment, instead of providing that
software in addition to offering personnel placement and
IN RE: JOBDIVA, INC. 7
recruitment services. Id. at *3–4. Indeed, the Board
required JobDiva to prove that “it is rendering ‘personnel
placement and recruitment’ as an independent activity
distinct from providing its software to others.” Id. at *4(emphasis added).
The Board further made clear that JobDiva did not
use the marks for services, even though the software itself
could perform the “personnel placement and recruitment”
functions. JobDiva’s CEO had testified that JobDiva’s
software actually performs personnel placement and
recruitment services:
“JobDiva aggregates resumes for its clients, em-
ployers, from the job boards . . . they apply to job
boards to source candidates and that is usually a
manual exercise,” but JobDiva can “search the job
board’s sites and databases for candidates on be-
half of employers who are subscribing to these job
boards, so it’s almost like an outsource function
that JobDiva performs in the recruiting process.”
Id. at *3 (quoting J.A. 223). The Board dismissed this
evidence, however, because the testimony did “not provide
any evidence that Petitioner renders ‘personnel placement
and recruitment services’ other than by providing the
software that performs those functions.” Id. Thus, the
Board ultimately found that JobDiva had failed to estab-
lish “that it is rendering ‘personnel placement and re-
cruitment’ services for others separate and apart from
providing its software.” Id. (emphasis added).
The Board denied JobDiva’s request for reconsidera-
tion, and JobDiva appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(B).
DISCUSSION
Section 1(a) of the Lanham Act requires that an appli-
cation to register a trademark must include “specification
of . . . the goods in connection with which the mark is
8 IN RE: JOBDIVA, INC.
used.” 15 U.S.C. § 1051(a). The Supreme Court has
recognized that “[t]he usages listed in [an] application . . .
are critical” because of, inter alia, the legal rights that
trademark registration conveys. B & B Hardware, Inc. v.
Hargis Indus., Inc., 135 S. Ct. 1293, 1300 (2015). As such,
a registrant must use its mark in accordance with goods
and services recited in the registration. 15 U.S.C.
§ 1064(3); see also 15 U.S.C. § 1058(b)(1)(B).
A registration may be cancelled on grounds of aban-
donment when 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. 15 U.S.C. § 1127;
On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080,
1087 (Fed. Cir. 2000). Because service mark registrations
are presumed valid, the party seeking cancellation of such
registration must “establish[] a prima facie case of aban-
donment by showing proof of nonuse for three consecutive
years.” On-Line Careline, 229 F.3d at 1087. Whether a
mark has been used to identify a particular service is a
question of fact. In re Advert. & Mktg. Dev., Inc., 821 F.2d
614, 621 (Fed. Cir. 1987). Likewise, whether a trademark
holder has abandoned its use of a mark is a question of
fact. On-Line Careline, 229 F.3d at 1087. We review the
Board’s legal conclusions de novo and its factual findings
for substantial evidence. Princeton Vanguard, LLC v.
Frito-Lay N. Am., Inc., 786 F.3d 960, 964 (Fed. Cir. 2015).
We agree with the Board’s initial observation that,
with modern technology, the line between services and
products sometimes blurs. See JobDiva Rehearing, 2015
WL 3542849, at *2. As the Board correctly observed, “[i]n
today’s commercial context if a customer goes to a compa-
ny’s website and accesses the company’s software to
conduct some type of business, the company may be
rendering a service, even though the service utilizes
software.” Id. (quoting In re Ancor Holdings,
No. 76213721, 2006 WL 1258813 (T.T.A.B. April 28,
IN RE: JOBDIVA, INC. 9
2006)). But a mark used with a web-based offering may
equally identify the provision of software, rather than a
service. For these reasons, careful analysis is required to
determine whether web-based offerings, like those JobDi-
va provides, are products or services: “[I]t is important,”
as the Board properly noted, “to review all the infor-
mation in the record to understand both how the mark is
used and how it will be perceived by potential customers.”
JobDiva Rehearing, 2015 WL 3542849, at *2.
But while the Board rightly recognized that it is cru-
cial to carefully review the manner of use of the marks
and their likely impression on purchasers, id., it neverthe-
less appeared to apply a bright-line rule requiring JobDi-
va to show that it performed the “personnel placement
and recruitment” services in a way other than having its
software perform those services. It stated, for example,
that “there is no testimony or evidence that supports
[JobDiva’s] claim that it is rendering ‘personnel place-
ment and recruitment’ as an independent activity distinct
from providing its software to others.” Id. at *4 (emphasis
added). The Board repeatedly faulted JobDiva for failing
to prove that it offered personnel placement and recruit-
ment services in addition to its provision of software. Id.
at *3 (“The references on Petitioner’s web sites show that
Petitioner is supplying ‘personnel placement and recruit-
ment’ software, not that Petitioner itself is rendering
‘personnel placement and recruitment’ services for oth-
ers.”); id. at *4 (“Petitioner’s ‘harvesters’ are functions or
capabilities of the JobDiva software, not activities per-
formed by Petitioner for the purpose of offering ‘personnel
placement and recruitment services’ for others.”). In
holding JobDiva to that standard, the Board erred in its
understanding of the law.
Even though a service may be performed by a compa-
ny’s software, the company may well be rendering a
service. For example, in On-Line Careline, we held that
AOL had used its ONLINE TODAY mark in connection
10 IN RE: JOBDIVA, INC.
with services, even though those services were provided
by software. 229 F.3d at 1088. AOL had used its mark in
connection with software that “provided its users with
‘access’ to its service through on-screen menu items.” Id.We affirmed the Board’s finding that AOL used its mark
to identify the services described in the registration:
“providing access to online computer services offering
computer-industry news, commentary and product re-
views.” Id. We explained that, “[i]n a very literal sense,
the subject mark was the designation by which AOL
provides users access to the Internet news and infor-
mation service.” Id. At bottom, we recognized that soft-
ware may be used by companies to provide services. Id.Indeed, here the ’235 registration for “computer services,
namely, providing databases featuring recruitment and
employment, employment advertising, career information
and resources, resume creation, resume transmittals and
communication of responses thereto via a global computer
network,” remains unchallenged.
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. See Lens.com,
Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381–82 (Fed.
Cir. 2012). The question is whether a user would associ-
ate the mark with “personnel placement and recruitment”
services performed by JobDiva, even if JobDiva’s software
performs each of the steps of the service. 1 In other words,
1 We note that JobDiva, like any entity, may regis-
ter its marks to identify both software and services per-
formed by software. 37 C.F.R. § 2.86 (“In a single
application for a trademark, service mark, and/or collec-
tive mark, an applicant may apply to register the same
mark for goods, services, and/or a collective membership
organization in multiple classes.”). For example, JobDiva
IN RE: JOBDIVA, INC. 11
the question is whether the evidence of JobDiva’s use of
its marks “sufficiently creates in the minds of purchasers
an association between the mark[s] and [JobDiva’s per-
sonnel placement and recruitment] services.” Ancor
Holdings, 2006 WL 1258813, at *3.
This “is a factual determination that must be con-
ducted on a case-by-case basis,” and there are many case-
specific factors the Board might examine. Lens.com, 686
F.3d at 1381–82. For example, in this case, the Board
should consider the nature of the user’s interaction with
JobDiva when using JobDiva’s software, as well as the
location of the software host. If JobDiva sells its software
to a customer who hosts the software on its own website
and a third-party user’s interactions appear to be with the
customer (as opposed to JobDiva), it is unlikely that the
customer or the third-party user would associate the
JOBDIVA mark with a service performed by JobDiva.
But if the software is hosted on JobDiva’s website such
that the user perceives direct interaction with JobDiva
during operation of the software, a user might well asso-
ciate JobDiva’s marks with personnel “placement and
recruitment” services performed by JobDiva. The pur-
chasers’ acquiring ownership in JobDiva’s software likely
will preclude a finding that JobDiva has rendered ser-
vices, unless JobDiva’s activities after the sale create the
perception that JobDiva is in fact providing services.
The ultimate question here is this: whether purchas-
ers would perceive JobDiva’s marks to identify “personnel
placement and recruitment” services. Because that
question is a factual one, the Board must answer it in the
first instance.
might use its marks to identify software sold to some
customers, but those uses do not somehow negate other
uses of the same marks to identify service offerings.
12 IN RE: JOBDIVA, INC.
CONCLUSION
Because the Board applied the wrong legal standard,
we vacate its judgment and remand for further considera-
tion in light of this opinion.
VACATED AND REMANDED