Docket Nos. 2015-1960
PROST, DYK, STOLL
December 12, 2016
Brief Summary: Board decision cancelling service marks for software vacated and remanded because it did not answer the question of whether users would perceive the web-based software as providing the service of “personnel placement and recruitment”.
Summary: JobDiva appealed TTAB decision requiring it “to prove that it used its marks on more than just software because its software sales alone could not…constitute personnel and recruitment services.” JobDiva’s service marks (Reg. Nos. 2851917 and 3013235, each of which registered for “personnel placement and recruitment” (‘235 also included, e.g., “computer services”)) were cancelled in a proceeding originally requested by JobDiva in which it requested cancellation of a registration owned by Jobvite, Inc. due to an alleged likelihood of confusion. Jobvite’s counterclaimed by petitioning the Board to cancel JobVite’s marks (‘917 in whole, ‘235 in part) for its alleged failure to perform personnel placement and recruitment services. The Board granted Jobvite’s counterclaim under Section 45 of the TM Act (“[a] mark shall be deemed abandoned’…[w]hen its use has been discontinued with intent not to resume such use.” 15 USC § 1125) The Board consulted dictionaries with respect to each word in JobDiva’s registration, finding “personnel placement and recruitment’ meant ‘that [JobDiva] is finding and placing people in jobs at other companies or providing personnel staffing services for others”, found “there has been nonuse for three consecutive years”, and made the cancellations. The Board held its position after JobDiva’s petition for reconsideration, explaining that “[a] term that only identifies a computer program does not become a service mark merely because the program is sold or licensed in commerce” (“[must] actually render personnel plalcement and recruitment services”, not “in addition” to it). This was found to be so “even though the software itself could perform the ‘personnel placement and recruitment’ functions” and JobDiva’s CEO testified that it actually does so. The FC panel first explained that it “agree[s] with the Board’s initial observation that, with modern technology, the line between services and products sometimes blurs.” Thus, “careful analysis is required to determine whether web-based offerings, like those JobDiva provides, are products or services” (“how the mark is used and how it will be perceived by potential customers”). It found that while the Board agreed with this point, it “appeared to apply a bright-line rule requiring JobDiva to show it peformed the ‘personnel placement and recruitment’ services in a way other than having its software perform those services.” It noted that “[e]ven though a service may be performed by a company’s software, the company may well be rendering a service” (On-Line Careline, FC 2000). In making that determination, “a key consideration is the perception of the user” (Lens.com, FC 2012), the proper question being “whether the evidence of…use of [the] marks ‘sufficiently creates in the minds of purchasers an association between the mark[s] and…[the] services” (Ancor Holdings, TTAB 2006). It found the Board did not answer that question “in the first instance” and therefore vacated and remanded the decision.