Trademark Description: Does job placement software render the service of professional placement and recruitment?December 22, 2016

In 2004 JobDiva registered the service mark JOBDIVA (U.S. Registration 2,851,917, hereinafter ‚¬Ëœ917) for “personnel placement and recruitment”services. In 2005, JobDiva registered the service mark JOBDIVA (plus design) (U.S. Registration 3,013,235, hereinafter ‚¬Ëœ235) for “personnel placement and recruitment services; 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.‚¬

JobDiva utilizes the above referenced trademarks in connection with software designed to replace the tedious manual search generally performed by a hiring manager or recruiter. The software is capable of providing a database of employment applications, identifies potential candidates by analyzing resumes and determining if the candidate meets the job’s qualifications in order to facilitate the job filling process. JobDiva typically provides the services included in their software on a software-as-a-service (SaaS) basis. Software-as-a-service is a software licensing and delivery model in which software is licensed on a subscription basis. It is typically accessed by users using a thin client via a web browser.

In a proceeding initiated by JobDiva to cancel a registration owned by Jobvite, Inc., Jobvite counter claimed to cancel JobDiva’s marks on the basis that JobDiva failed to perform “personnel placement and recruitment”services. The Trademark Trial and Appeal Board (TTAB) cancelled JobDiva ‚¬Ëœ917 mark in whole and the ‚¬Ëœ235 mark in-part. The TTAB stated that “[a] mark shall be deemed to be ‚¬Ëœabandoned’ … [w]hen its use has been discontinued with intent not to resume such use.”JobDiva, Inc. v. Jobvite, Inc. (T.T.A.B. Apr. 16, 2015), (quoting 15 U.S.C. § 1125). Based on the description of the services included in each mark, the TTAB found that “personnel placement and recruitment”meant “finding and placing people in jobs at other companies or providing personnel staffing services for others.”However, the evidence provided by JobDiva failed to show performance of personnel placement and recruitment services beyond supplying software to the consumers. The TTAB took the position that JobDiva confused the service of providing “a software solution for personnel placement and recruitment with actually rendering personnel placement and recruitment services.”Based on non-use of the mark in connection with the services described in the registration, the TTAB cancelled the marks. 

On appeal, the Federal Circuit overturned the TTAB’s cancellation of the marks ‚¬Ëœ917 and ‚¬Ëœ235, holding that “[e]ven though a service may be performed by a company’s software, the company may well be rendering a service.”It is important to consider the perception of the user when attempting to determine whether a mark is used in connection with the services described in the registration. In the present matter, the question is “whether a user would associate the mark with ‚¬Ëœpersonnel placement and recruitment’ services performed by JobDiva.”This is a factual determination that must be conducted on a case-by-case basis. Therefore, the Federal Circuit remanded the case back to the TTAB for an initial determination of this issue. 

The full opinion can be found here.

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