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In re JobDiva, Inc.

United States Court of Appeals, Federal Circuit

December 12, 2016

IN RE: JOBDIVA, INC., Appellant

         Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 92050828.

          DANIEL I. SCHLOSS, Greenberg Traurig LLP, New York, NY, argued for appellant. Also represented by MASAHIRO NODA.

          MARY BETH WALKER, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor Michelle K. Lee. Also represented by THOMAS W. KRAUSE, CHRISTINA HIEBER.

          Before PROST, Chief Judge, DYK, and STOLL, Circuit Judges.

          STOLL, Circuit Judge.

         In this trademark case, we must decide whether Job-Diva, Inc. used its marks in connection with personnel placement and recruitment services, or whether the Trademark Trial and Appeal Board correctly held that JobDiva failed to do so because it used its marks on software offerings, without more. The Board required JobDiva to prove that it used its marks on more than just software because its software sales alone could not, in the Board's view, constitute personnel and recruitment services. We disagree with the Board's approach. The proper question is 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. Because the Board must visit that question in the first instance, we vacate its decision and remand for further consideration.

         Background

         I.

         On June 8, 2004, the United States Patent and Trademark Office issued Registration No. 2851917 ("the '917 registration") to JobDiva for the service mark JOBDIVA for "personnel placement and recruitment" services. On November 8, 2005, it issued Registration No. 3013235 ("the '235 registration") to JobDiva for the service mark shown below:

         (Image Omitted)

         for "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." JA. 498; see also J.A 52-53.

         JobDiva uses its trademarks in connection with its product and service offerings, which its website describes as "the largest, ultimate, full service solution for the staffing industry with an extensive suite of products & tools, front to back end, covering all staffing needs." J.A. 117. JobDiva offers, in the words of its Chief Executive Officer, "an applicant tracking system for recruiting departments, [and] for HR departments seeking to staff people." J.A. 212. JobDiva uses software to automatically provide these offerings to clients.

         JobDiva's software generally provides a database of employment applications that a hiring manager or recruiter might use to fill a job opening. J.A. 223. The software performs multiple functions to facilitate this job-filling process. It employs automated "harvesters" to find potential job candidates by automatically scraping job boards and aggregating relevant resumes. J.A. 223, 461-63. And it reviews and analyzes job candidates' resumes to determine if any candidate's qualifications match the job's requirements. J.A. 393. It thus "replaces a tedious manual search" previously performed by hiring managers or recruiters. J.A. 462-63. JobDiva also helps hiring managers directly communicate with job candidates. For instance, it permits hiring managers to post job openings in a job candidate portal. J.A. 221. This candidate portal may also be embedded into a company's website. J.A. 13. The software further assists job candidates by recommending potential openings to the candidates based on skillsets and provides them automated resume feedback. J.A. 221.

         In many circumstances, JobDiva renders these offerings on a software-as-a-service, or "SaaS, " basis to its customers. As the Board explained, "Software as a Service (SaaS) leverages software by delivering it over the Internet." JobDiva, Inc. v. Jobvite, Inc., Cancellation No. 92050828, 2015 WL 3542849, at *1 (T.T.A.B. May 20, 2015) ("JobDiva Rehearing'). The Board noted that SaaS is "also known as cloud computing." Id. at *2. "Cloud computing, " according to the Board, "is defined as 'computing operations carried out on servers that are accessed through the Internet, rather than on one's own personal computers.'" Id. at *2 (quoting Dictionary of Computer and Internet Terms 434 (11th ed. 2013)). By hosting its software remotely, ...


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