JobDiva, Inc.v.Jobvite, Inc.

Trademark Trial and Appeal Board

May 4, 2017

No. 92050828 (T.T.A.B. May. 4, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 4, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

JobDiva, Inc.
v.
Jobvite, Inc.
_____

Cancellation No. 92050828
_____

Daniel I. Schloss of Greenberg Taurig, LLP for JobDiva, Inc.

Martin R. Greenstein of Techmark a Law Corporation for Jobvite, Inc.
_____

By The Board:

Pursuant to the Board’s March 27, 2017 Order, Respondent was allowed until
April 28, 2017 to show cause why the Board should not vacate its April 16, 2015 and
May 20, 2015 orders granting Respondent’s counterclaim to cancel Petitioner’s
Registration No. 2851917 on the ground of abandonment, and granting Respondent’s
counterclaim to partially cancel Petitioner’s Registration No. 3013235 on the ground
that Petitioner abandoned its mark when used in connection with “personnel
placement and recruitment” services.
By way of background, Petitioner appealed the Board’s decision cancelling its
pleaded registrations to the U.S. Court of Appeals for the Federal Circuit. Petitioner
Cancellation No. 92050828
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did not appeal the Board’s denial of its claims for likelihood of confusion under Section
2(d) or fraud. Respondent did not enter an appearance in the appeal.
On December 12, 2016, the Court of Appeals for the Federal Circuit vacated the
Board’s decision and remanded the case for further consideration of “whether
purchasers would perceive [Petitioner’s] marks to identify ‘personnel placement and
recruitment’ services.” In re JOBDIVA, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1127
(Fed. Cir. 2016).
Because Respondent did not make an appearance in the appeal before the Federal
Circuit, the Board issued the above-noted order to show cause why the Board should
not vacate the decisions cancelling Petitioner’s registrations for “personnel placement
and recruitment” services. Respondent did not respond to the Board’s order to show
cause.
In view thereof and Respondent’s lack of interest in this proceeding, the Board
vacates its April 16, 2015 and May 20, 2015 orders insofar as they granted
Respondent’s counterclaim to cancel Petitioner’s Registration No. 2851917 on the
ground of abandonment and granted Respondent’s counterclaim to partially cancel
Petitioner’s Registration No. 3013235 on the ground that Petitioner abandoned its
mark when for “personnel placement and recruitment” services, and now denies
Respondent’s counterclaims.
Although Petitioner did not appeal the Board’s resolution of its Section 2(d) and
fraud claims, dismissal of Respondent’s counterclaims on remand raises the issue of
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whether the Board should revisit Petitioner’s claim for likelihood of confusion.1 This
is so because the Board previously analyzed the claim only against the services
remaining in the partially-cancelled registration. In other words, the claim was not
analyzed in reference to “personnel placement and recruitment” services, the services
identified in the cancelled registration and those subject to cancellation in the
partially-cancelled registration. To the extent that Petitioner’s Section 2(d) claim is
revived, we again dismiss the claim for the reasons stated in our original decision.
That decision was bottomed on the lack of similarity of the marks and the high degree
of care prospective customers exercise in making a purchasing decision, and those
conclusions are not altered by considering the pleaded registrations in their entirety.
Moreover, such consideration does not alter our conclusion with regard to identity of
the services offered under the parties’ respective registered marks or our conclusions
with regard to any of the other du Pont factors that we discussed or declined to discuss
in our original decision.
To clarify the status of these proceedings, the petition to cancel Registration No.
3103253 on the ground of likelihood of confusion and fraud was and remains denied;
the counterclaim petition to cancel Registration No. 2851917 on the ground that
Petitioner JobDiva abandoned the mark therein is denied; and the counterclaim
petition to partially cancel Registration No. 3013235 on the ground that Petitioner
JobDiva abandoned the mark for “personnel placement and recruitment” services is
denied.

1 The fraud claim is unaffected by the dismissal of Respondent’s counterclaims.