A Software-As-A-Service offering can count as a product that can acquire a trademark

In Re: JobDiva, Inc.

In Re: JobDiva, Inc., the Appeals Court found that determining "whether a mark is used in connection with the services described in the registration, a key consideration is the perception of the use."

In 2004, the U.S. Patent and Trademark Office issued a trademark to JobDiva, but when JobDiva tried to enforce their trademark against JobVite a counterclaim from JobVite caused the Board to cancel JobDiva's trademark. The Board found that, "since there is no evidence of use of [JobDiva's] marks in connection with 'personnel placement and recruitment' services, there has been nonuse for three consecutive years." This decision bears on section 45 of the Trademark Act, which provides two circumstances under which a mark will be considered "abandoned", the first of which reads, "when its use has been discontinued with intent not to resume such use. Intent not to use may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment." Lanham (Trademark) Act.

JobDiva offers personnel placement and recruitment services using a software-as-a-service (SaaS) model. The issue faced by the board was whether the delivery of a software that performed the activities that the trademark was issued for still counted towards its intended use and found that by providing software JobDiva was not providing "personnel placement and recruitment" and thus cancelled the trademark. Ultimately, the appeals court found that the "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."

Both the Board and the Appeals Court agreed that with the advents of modern technology the distinctions previously made between products and services needed to be amended. What the Appeals Court decided for was to approach these questions from the view point of the consumer, should the consumer feel that they are receiving what the company has registered the trademark for, then the trademark is in use. "Even though a service may be performed by a company's software, the company may well be rendering a service."

This article is provided for informational purpose only and is not intended as a form of legal advice. If you have any questions on the subject matter of this article, call the Law Offices of Roland Tong, at 949-298-6867 or email Mr. Tong at roland@rtlawoffices.com. Mr. Tong has been obtaining patent, trademark, copyright, and trade secret protections for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies in a wide range of industries.