In Re: Jobdiva, Inc.
843 F.3d 936
Fed. Cir.2016Background
- JobDiva owned two service-mark registrations for JOBDIVA: one for “personnel placement and recruitment” and another covering that plus computer services (databases, resume tools) used via the Internet (SaaS).
- JobDiva offers an applicant-tracking/recruiting platform that harvests resumes, analyzes candidate fit, posts jobs, recommends openings, and facilitates candidate communications; much of this is delivered as cloud-hosted SaaS.
- Jobvite counterclaimed to cancel JobDiva’s registrations, alleging JobDiva did not actually render personnel placement and recruitment services and instead only provided software.
- The Trademark Trial and Appeal Board (TTAB) cancelled the registration for “personnel placement and recruitment” (and partially amended the other), reasoning JobDiva merely supplied software and did not separately render personnel placement/recruitment services.
- JobDiva sought rehearing; the TTAB reaffirmed its view that providing software that performs service-like functions is not enough—JobDiva needed to show it rendered the services apart from supplying software.
- The Federal Circuit reviewed and held the TTAB applied the wrong legal standard: whether JobDiva’s software performed the services and whether consumers associate the mark with those services (even if performed by software) is a factual question for the TTAB to decide in the first instance.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether JobDiva used its marks in connection with “personnel placement and recruitment” services when those functions are performed via SaaS software | JobDiva: its SaaS actually performs placement/recruitment functions and consumers associate the JOBDIVA mark with those services | Jobvite: JobDiva only sells/provides software; that alone does not constitute rendering placement/recruitment services | Vacated TTAB decision and remanded: whether consumers perceive the mark as identifying services performed (even if by software) is a factual question for the TTAB to decide |
| Whether providing software that performs service steps can constitute use of a mark for services | JobDiva: software-delivered functions can be the vehicle for rendering services; precedent supports software-based services being protectable | Jobvite: a mark identifying a computer program is not a service mark unless it also identifies the service itself distinct from the program | Court: software can provide services (citing AOL precedent); TTAB erred by requiring separate, independent non-software acts — must assess purchaser perception and context |
Key Cases Cited
- On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080 (Fed. Cir. 2000) (software-delivered functionality can identify and be equivalent to services)
- Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (Fed. Cir. 2012) (service-identification turns on purchaser perception)
- B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (U.S. 2015) (registrations’ recited usages are legally critical)
- In re Advert. & Mktg. Dev., Inc., 821 F.2d 614 (Fed. Cir. 1987) (use-of-mark-for-service is a factual determination)
- Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960 (Fed. Cir. 2015) (appellate review: legal conclusions de novo; TTAB factual findings for substantial evidence)