The United States Court of Appeals for the Federal Circuit had to determine if JobDiva Inc. (“Appellant” or “JobDiva”) used its trademark JOBDIVA in conjunction with the services registered in its registration, “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.” The Court started out by citing the general principle that a registrant must use its mark in accordance with goods and services recited in the trademark registration. For more details pertaining to service marks, see our webpage entitled, What Is A Service Mark And How Can It Be Protected?
The Board summarized the offerings of JobDiva as “Software-as-a-Service”. In other words, JobDiva allows users to access its software over the Internet. By hosting the software remotely, there is no need to download the software onto one’s own personal computer. The Board reviewed dictionary definitions for JobDiva’s services and decided that JobDiva had to show that it was finding and placing people in jobs at other companies. There was evidence in the record via testimony from JobDiva’s CEO that JobDiva’s software performed personnel placement and recruitment functions. After JobDiva presented its evidence, the Board held that it only provided software, and not additional personnel placement and recruitment services. The Board demanded that JobDiva prove it placed clients in jobs independent of the activity performed through the software. The Federal Circuit disagreed with the Board’s approach. See In re JobDiva, Inc., 1122 (Fed. Cir. 2016) [precedential].
The Federal Circuit Court pointed out that a trademark that is used with a web-based offering will require careful analysis to determine whether the offering is a product or a service or potentially both a product and a service. In fact, the Court held that the Board erred in understanding the law when requiring that JobDiva produce evidence that it provided personnel placement and recruitment services independent of the offering of its software. The Court further held that even though a service may be performed by a company’s software, the company may still be rendering a service. See also, On-Line Careline Inc. v. Am. OnLine Inc., 229 F.3d 1080 (Fed. Cir. 2000), where this Court held that AOL used its trademark ONLINE TODAY in connection with services, even though the services were provided by software. In that case, the Federal Circuit recognized that software may be used by companies to provide services. Indeed, a trademark applicant may file a trademark application wherein it identifies both goods and services under the same mark. See 37 C.F.R. §2.86.
To determine if the mark is used in connection with services, it is critical to examine the perception of the user. For example, if JobDiva’s website hosted the software, then it is likely that the user of the software will perceive JobDiva as performing services. However, if JobDiva instead sells its software to a customer and that customer hosts JobDiva’s software on its own website then, it is unlikely that the user of the JobDiva software will perceive JobDiva as performing services. Therefore, if the software is not hosted on the applicant’s website, but instead the software is sold and hosted on a third party’s site, then unless there are activities performed by the trademark applicant after the sale of software, the user’s perception will probably not include use of the mark with the applicant’s services.
The Court concluded that since the Board utilized the wrong legal standard, it vacated the Board’s decision and remanded the matter. The Board will now have to address the issue of whether purchasers would perceive JobDiva’s marks to identify personnel placement and recruitment services. This is a very interesting decision and should prove helpful to trademark applicants. Hopefully, this decision will guide the Board in understanding that a web based offering requires particular attention when determining if the mark brands goods, services or goods and services. If you have questions regarding whether your trademark is properly identifying your goods and services, please contact our office to schedule a courtesy consultation.