Tuesday, 13 December 2016 20:45

IC9 vs. IC42: Is It a Software or a Service?

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The Federal Circuit recently rejected the TTAB's holding in In re. JobDiva, which previously required for "something more" than selling software in order to protect a mark as a service. The court found that the appropriate legal standard to use was whether purchasers would perceive a mark to identify the indicated services, which is a factual determination to be conducted on a case-by-case basis.

In this case, JobDiva originally received a registration for the service mark JOBDIVA for "personnel placement and recruitment" services, which later became the subject of cancellation during a TTAB dispute. The Board found that the mark had been abandoned, because JobDiva failed to prove its use in commerce under the appropriate class. That is, the Board explained that "[a] term that only identifies a computer program does not become a service mark merely because the program is sold or licensed in commerce." Further, a prima facie case of abandonment was met by nonuse for three consecutive years.

On appeal however, the Federal Circuit vacated the TTAB's holding of abandonment, finding that the Board had used an incorrect legal standard re. JobDiva's use. Rather, the proper question to ask was "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."

As some general background, IC 9 is typically used for downloadable software, while IC 42 is appropriate for non-downloadable software (or software-as-a-service). 

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Because U.S. trademarks only protect the mark as actively used in commerce, it is therefore important to identify the appropriate classification at the outset.

Since the finding of abandonment of the original mark, JobDiva has (more narrowly) amended its Class 42 classification as "providing temporary use of online non-downloadable software for resume creation and transmission of resumes and responses thereto via the Internet".

For the full case and opinion -- http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1960.Opinion.12-8-2016.1.PDF

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Tony Guo

As a specialized technology counsel, Tony supports his clients in the high tech, creative, and online industries. His primary areas of practice include intellectual property protection, Internet law, and startups. Tony is a USPTO registered patent attorney, as well as a licensed lawyer in California and Florida. He comes from a background involving considerable hardware and software development experience, having worked in both development and IT roles in the tech and finance industries.