IN RE: JOBDIVA: Dec 12, 2016. Before Prost, Dyk, and Stoll.                                                  

The Takeaway

To determine use in commerce for a trademark used with a web-based offering, the Board should focus on the perception of the user, and not solely on how the mark is used.

Procedural Posture

The T.T.A.B. cancelled JobDiva’s trademark because it found that JobDiva failed to use its marks in connection with software-based personnel placement and recruitment services. JobDiva appealed. The CAFC vacated and remanded.

Analysis

• Use in commerce: Because the Board applied the wrong legal standard, the CAFC vacated the judgment and remanded. A mark used with a web-based offering may equally identify with products or services, and it is important to understand both how the mark is used and how it will be perceived by potential customers. The Board erred by applying a bright-line rule requiring JobDiva to show that it performed the “personnel placement and recruitment” services in a way other than having its software perform those services. Rather the Board should have focused on the perception of the user, and answered the question, “whether purchasers would perceive JobDiva’s marks to identify ‘personnel placement and recruitment’ services.” Because the question is factual, the CAFC remanded for Board to answer in the first instance.