This article first appeared here in the INTA Bulletin on March
15, 2017 and was reprinted with permission from the International
Trademark Association (INTA).
* * *
"With modern technology, the line between services and
products sometimes blurs." This blurring of the line led to
the Federal Circuit's recent decision vacating and remanding
the cancellation of two service marks by the U.S. Trademark Trial
and Appeal Board (TTAB).
In re JobDiva, Inc., 843 F.3d 936 (Fed. Cir. 2016). The
marks at issue were JOBDIVA, for "personnel placement and
recruitment" services (U.S. Reg. No. 2851917), and , to the extent that the mark covers
"personnel placement and recruitment services" (U.S. Reg.
No. 3013235), both owned by JobDiva, Inc. The case arose out of a
cancellation proceeding initially brought by JobDiva against the
registrant of the mark JOBVITE. That registrant counterclaimed and
petitioned the TTAB to cancel JobDiva's registrations on the
ground that JobDiva did not perform personnel placement and
recruitment services under its mark. The TTAB granted that petition
and canceled JobDiva's registrations, finding that that
JobDiva's use of its marks on software did not constitute use
in connection with personnel placement and recruitment services.
(The TTAB did not cancel that portion of '235 registration that
covered "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
At issue was JobDiva's use of its JOBDIVA marks on
"software-as-a-service" or "cloud computing"
software products that perform multiple functions to facilitate the
job-filling process, including by automating some aspects of the
process of matching hiring managers and/or recruiters with
jobseekers looking for new positions. The TTAB considered whether
JobDiva actually offered "personnel placement and recruitment
services" outside of its software product. In other words, in
order to maintain its registrations, the TTAB required JobDiva to
provide that "it is rendering 'personnel placement and
recruitment' as an independent activity distinct from
providing its software to others" (emphasis added in Federal
Court decision). The TTAB found that, because JobDiva did not use
its JOBDIVA marks in connection with "personnel placement and
recruitment" services other than through its software, the
marks could not serve as service marks and were therefore
On review, the Federal Circuit held that the TTAB considered the
wrong question. Instead, the TTAB should have asked the
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 Federal Circuit initially agreed with the TTAB on two
points: (1) that in this day and age, the line between services and
products "sometimes blurs"; and (2) accordingly,
"[i]t is important to review all the information in the record
to understand both how the mark is used and how it will be
perceived by potential customers." However, the court noted
that rather than asking both parts of the question, the TTAB only
considered the former, namely, how the mark is used (and
specifically whether JobDiva was using its mark in connection with
"personnel placement and recruitment services" outside of
The Federal Circuit disagreed with the TTAB's approach,
recognizing that even if a service is performed only through a
company's software, the company may nevertheless be rendering a
service for purposes of supporting a statement of use. Thus, the
question the TTAB should have asked, in addition to how the mark is
used, is "whether a user would 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." Given the factual nature of the question, the
court vacated and remanded the TTAB decision for further
consideration of that issue.
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