In re Job Diva, Inc 2016 U.S. App LEXIS 21974 (Fed. Cir. Dec.

12,2016)

Bc0150028

R.SUBHASH

R.GOHUL

Case brief:

In this trademark case the main issue was that if the company Job Diva Inc used itstrade mark for
personnel placement and recruitment services, or if the ruling of the trademark trial and
appellate board was correct as it was nothing more than software usage that Job Diva had done
and nothing more. The appellate board in its decision held that it wanted proof from Job Diva
that it had used its trademark on not just its software and the sales of the same does not
contribute to personnel and recruitment services. It doesn’t matter the services were performed
by the said software.

Facts:
On June 8, 2004, the United States Patent and Trademark Office issued registration No. 2851917
("registration" 917 ") to JobDiva for the JOBDIVA service mark for the" placement and hiring of
personnel "services. On November 8, 2005, it issued Registration No. 3013235 (“the '235
registration”) to JobDiva for the service mark  “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.”
JobDiva uses its trademarks as part of its product and service offerings, which its website
describes as "the most complete and complete service solution for the personnel industry, with a
complete set of end-to-end products and toolswhich cover all staff needs. "

JobDiva uses software to automatically provide these offers to customers.

JobDiva software generally provides a database of job applications that a hiring manager or
recruiter could use to complete a job offer. . The software performs various functions to facilitate
this recruitment process. Use automatic "selectors" to find potential candidates by automatically
deleting job vacancies and grouping relevant curriculums. . And review and analyze candidates'
resumes to determine if a candidate's qualifications meet the requirements of the position. .
"Thus replacing a tedious manual search" previously carried out by a recruiter or recruiter.
JobDiva also helps hiring managers communicate directly with applicants. For example, it allows
hiring managers to publish open positions on a candidate portal. This candidate portal can also be
integrated into a company's website. The software also helps job applicants by recommending
potential openings to candidates based on their skills and by providing automatic CV feedback.

In many circumstances, JobDiva makes these offers on the basis of software as a service, or
"SaaS", to its customers. As the Council explains, "Software as a Service (SaaS) uses software
by distributing it on the Internet". JobDiva, Inc. v. Jobvite, Inc.According to the Board "cloud
computing" is defined as "processing operations carried out on servers accessible via the
Internet, rather than on personal computers themselves". By hosting the software remotely,
JobDiva offers its customers a product without the need to download "heavy software" to
desktop or laptop computers. "

The delivery model of JobDiva's SaaS software also changes the way users interact with
JobDiva: "Users pay for IT as a service instead of owning machines and software to do it."
Unlike locally installed software, which can be downloaded from the Internet or from a disk,
JobDiva software resides on remote servers and is accessible by clients on the Internet.

Litigation:

The Board canceled JobDiva's marks in a proceeding initially requested by JobDiva. Originally,
JobDiva asked the Board to cancel a list of properties of Jobvite, Inc., which is no longer a party
in this matter. JobDiva stated, among other things, that there was a likelihood of confusion
between the service marks Jobvite and JobDiva. To assert its claim, JobDiva claimed ownership
of its two marks.

Jobvite filed a counterclaim, asking the Board to clear JobDiva's hiring records, arguing that
JobDiva had failed to provide placement and hiring services. Jobvite asked the Council to cancel
registration "917 in its entirety and registration" 235 in part. In particular, Jobvite did not present
positive evidence of abandonment or dispute that JoabDiva used record 235 to identify the other
services specified in its record.

The Board accepted Jobvite's counterclaim, canceling the mark "917" and the mark "235" in its
entirety. JobDiva, Inc. v. Jobvite, Inc.

Arguments:
JobDiva has asked the board to reconsider its process, claiming that "the board has made false
findings since" extensive documentary evidence "exists which shows that the applicant provides
the" job search and placement service " with other companies. or provide "personal services" to
others. The Board again expressed its disagreement, considering that JobDiva has not
demonstrated the use of its brands for "placement and hiring" services.

The Board explained that “ term that uniquely identifies a computer program does not become a
service mark simply because the program is sold or marketed under license". . "This mark is used
to identify a service only if it is also used to identify and distinguish the service itself, as opposed
to the program." The Commission noted, however, that "it is important to carefully examine the
file to determine how the brand will be used and the impression it is likely to give to buyers".

The jury found that the evidence for the use of JobDiva was insufficient as JobDiva provided
only software, but not additional "staff placement and hiring" services. The Board explained that
"it was looking for evidence that the applicant provided" staff placement and recruitment
services "to third parties rather than simply providing a software solution that customers could
use during their" staff placement and recruitment “. The Board criticized JobDiva for "confusing
the service of providing a software solution for the placement and recruitment of personnel with
the actual supply of placement and recruitment services". The Board has repeatedly criticized
JobDiva for showing that JobDiva offered only recruitment and placement software, rather than
providing this software as well as providing recruitment and placement services. The Board
asked JobDiva to demonstrate that it "makes" placement and recruitment "an independent
activity in addition to providing its software to third parties."

CONCLUSION:

However the most important issue that has to be sorted out in this case is whether the consumers
of the product would be able to identify the “placement and recruitment” services as that of
Jobdiva’s or not. It is a question of factual importance which was neither raised or answered by
the board.