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TTAB's Finding of No Use in Commerce for Web-Based Mark is Vacated for Not Focusing on Perception of User

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.

Copyright © 2021, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 17
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About this Author

Michael J. Block, Andrews Kurth, patent litigation lawyer, dispute resolution attorney
Associate

Michael is an Associate in the Intellectual Property section of the firm’s New York – Battery Park office. He focuses his practice on patent litigation and dispute resolution, especially in the field of electrical engineering.

Michael previously worked in-house at a company where he was engaged in the innovation, development, and monetization of intellectual property and mobile technologies. Michael also has experience in prosecuting patent applications and has written claims, responded to office actions, and participated in interviews with...

212-908-6407
 Vaibhav M. Sharma, Andrews Kurth, Trade Secret Enforcement Lawyer, Patent Litigation Attorney
Associate

Vaibhav is an Associate in the Intellectual Property section of the firm’s New York – Battery Park office. Intellectual property issues are critical to the success of any business, regardless of its size. Andrews Kurth Kenyon helps clients in virtually all industries obtain, protect and enforce patents, trademarks, copyrights, trade secrets and other intellectual property rights. Our IP lawyers have strong technical backgrounds and extensive legal and commercial experience as in-house IP counsel, patent and trademark examiners, engineers and scientists.

212-908-6250
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