The CAFC vacated a TTAB ruling [here] that ordered, on the ground of abandonment, cancellation of a registration for the mark JOBDIVA, in standard character form, and partial cancellation of a registration for the mark in the design form shown below, for “personnel placement and recruitment” services. The Board appeared to apply a bright-line requiring the registrant to show that it performed these services in addition to its provision of SAAS software at its website. The CAFC rejected that standard and remanded the case to the Board for consideration of the following question: “whether purchasers would perceive JobDiva’s marks to identify ‘personal placement and recruitment’ services.” In re Jobdiva, Inc., Appeal No. 2015-1960 (Fed. Cir. December 12, 2016) [precedential].

JobDiva’s software provides a database of employment applications that a hiring manager or recruiter may use to fill a job opening. It employs “harvesters” to find job candidates by scraping job boards and aggregating resumes. It helps hiring managers post job openings in a particular candidate’s portal. And it assists job candidates by recommending potential openings. In many circumstances, JobDiva provides these offerings on a software-as-a-service (SAAS) basis to its customers.

JobDiva submitted screenshots of its website, along with a declaration from its CEO, in explaining its services, but the Board found the evidence insufficient because “[t]here was no reference … to [JobDiva’s] performance of personnel placement and recruitment services other than supplying [its] software.” Concluding that the marks had not been in use for the services in question, the Board issued its cancellation order on the ground of abandonment.

On reconsideration, the Board criticized JobDiva for “confus[ing] the service of providing a software solution for personnel placement and recruitment with actually rendering placement and recruitment services.” The Board required JobDiva to prove that “it is rendering personnel placement and recruitment as an independent activity distinct from providing its software to others.” The Board ultimately found that JobDiva had failed to establish “that it is rendering ‘personnel placement and recruitment’ services for others separate and apart from providing its software.” [Emphasis added by CAFC].

The CAFC observed that whether a mark has been used to identify a particular service is a question of fact, as is the question of abandonment.

The Board acknowledged that, in modern technology, the line between services and products sometimes blurs, and it is important to review the entire record to understand how a mark is used and how it will be perceived by customers. Nonetheless, the CAFC noted, the TTAB appeared to apply a bright-line rule requiring JobDiva to show that it performed the services in question in a way other other than having its software perform the services. “In holding JobDiva to that standard, the Board erred in its understanding of the law.”

Even though a service may be performed by a company’s software, the company may well be rendering a service. For example, in On-Line Careline, we held that AOL had used its ONLINE TODAY mark in connection with services even though those services were  provided by software. 229 F.3d at 1088. *** At bottom, we recognized that software may be used by companies to provide services. Id.

In determining whether a mark is used in connection with the identified services, “a key consideration is the perception of the user.”

The question 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.” In other words,  the question is whether the evidence of JobDiva’s use of its marks “sufficiently creates in the minds of purchasers an association between the mark[s] and [JobDiva’s personnel placement and recruitment] services.” Ancor Holdings, 2006 WL 1258813, at *3.

The CAFC pointed out that, on remand, the Board should consider the nature of the user’s interaction with JobDiva when using the software, as well as the location of the software host. If the software is sold to a customer who hosts the software on its own website and the user’s interactions appear to be with the customer, then it is unlikely that the user would associate the JOBDIVA mark with the service performed by JobDiva. However, if the software is hosted on JobDiva’s website “such that the user perceives direct interaction with JobDiva during operation of the software, a user might well associate JobDiva’s mark with personnel ‘placement and recruitment’ services performed by JobDiva.”

The ultimate question here is this: whether purchasers would perceive JobDiva’s marks to identify “personnel placement and recruitment” services. Because that question is a factual one, the Board must answer it in the first instance.

The appellate court remanded the case to the Board for further consideration in light of this opinion.