from the United States Patent and Trademark Office, Trademark
Trial and Appeal Board in No. 92050828.
I. SCHLOSS, Greenberg Traurig LLP, New York, NY, argued for
appellant. Also represented by MASAHIRO NODA.
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,
PROST, Chief Judge, DYK, and STOLL, Circuit Judges.
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.
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:
"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.
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.
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.
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, ...