Cornerstone OnDemand, Inc.

Trademark Trial and Appeal Board

Jul 21, 2015

No. 85658195 (T.T.A.B. Jul. 21, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: July 21, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cornerstone OnDemand, Inc.
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Serial No. 85658195

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Jill M. Pietrini, Ryan S. Hilbert, and Susan Hwang of Sheppard Mullin Richter &
Hampton LLP for Cornerstone OnDemand, Inc.

Janet Lee, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Bucher, Greenbaum, and Masiello,
Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:
Cornerstone OnDemand, Inc. (“Applicant”) has filed an application for
registration on the Principal Register of the mark PERFORMANCE CLOUD in
standard characters for the following services:
Computer services, namely providing an online
community for employers and employees to track their
skills, individual development plans, succession plans,
career pathing, management capability, competency
assessments, employee reviews, goals, promotions, and
Serial No. 85658195
2
business objections [sic] and strategy, in International
Class 42.1
The Trademark Examining Attorney refused registration under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark
merely describes the identified services. When the refusal was made final,
Applicant appealed and requested reconsideration. The Examining Attorney denied
the request for reconsideration, and this appeal proceeded. The case is fully
briefed.2
Section 2(e)(1) of the Trademark Act provides for the refusal of registration of “a
mark which, (1) when used on or in connection with the goods of the applicant is
merely descriptive or deceptively misdescriptive of them.” 15 U.S.C. § 1052(e)(1). A
term is merely descriptive of services within the meaning of Section 2(e)(1) if it
forthwith conveys an immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the services. In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also, In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark is merely
descriptive is determined in relation to the services for which registration is sought
and the context in which the term is used, not in the abstract or on the basis of
guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words,

1 Application Serial No. 85658195 was filed on June 21, 2012 under Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), stating October 3, 2011 as the date of first use anywhere
and first use in commerce.
2 A refusal on grounds that Applicant’s specimen of use was unacceptable has been
withdrawn and is not before us. See Examining Attorney’s brief, 12 TTABVUE 3.
Serial No. 85658195
3
we evaluate whether someone who knows what the services are will understand the
mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med.
Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). A mark need
not immediately convey an idea of each and every specific feature of the services in
order to be considered merely descriptive; it is enough if it describes one significant
attribute, function or property of the services. See In re Gyulay, 3 USPQ2d at 1010;
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338
(TTAB 1973). Moreover, the mark need not describe all of the identified services.
Rather, a descriptiveness refusal is proper with respect to all of the identified
services in an International Class if the mark is descriptive of any of the services in
that class. In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re
Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). It is the
Examining Attorney’s burden to show that a term is merely descriptive of an
applicant’s goods or services. In re Gyulay, 3 USPQ2d at 1010; In re Accelerate s.a.l.,
101 USPQ2d 2047, 2052 (TTAB 2012).
Applicant’s services are, in relevant part, “computer services” that allow
“employers and employees to track their … management capability, competency
assessments, [and] employee reviews ….”
The Examining Attorney has made of record the following relevant definitions
from dictionaries and other language resources:
performance: the act of doing a job, an activity, etc.
the execution of an action
the ability to perform : EFFICIENCY
Serial No. 85658195
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Examples of PERFORMANCE
- A supervisor will evaluate each employee’s performance
- Employees with strong job performance
- Employees are given an annual performance assessment.3

cloud: the computers and connections that support cloud computing
4

cloud
computing: the practice of storing regularly used computer data on multiple
servers that can be accessed through the Internet5

cloud: a.k.a. the cloud Originally this was a term for the
unpredictable part of a network that data travels through on its
way to its final destination. …

It later morphed into “the cloud” – which refers to a style of
computing in which dynamic, scalable and virtual resources are
provided over the Internet. Known as cloud computing, it refers
to services that provide common business applications online,
which are accessed from a Web browser, while the software and
the data are stored on the servers.6

cloud
computing: Cloud computing is a type of computing that relies on sharing
computing resources rather than having local servers or
personal devices to handle applications. …

In cloud computing, the word “cloud” (also phrased as “the
cloud”) is used as a metaphor for “the Internet,” the phrase cloud
computing is used to mean a type of Internet-based computing,
where different services – such as servers, storage and
applications – are delivered to an organization’s computers and
devices through the Internet.7

3 Definition from , Office Action of December 20, 2013 at 5-6.
4 Id. at 10-11.
5 Id. at 17.
6 Entry for “cloud” at , Office Action of October 11, 2012 at 18.
7 Entry for “cloud computing” from , id. at 20.
Serial No. 85658195
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The Examining Attorney argues:
[Applicant’s mark] indicates that Applicant’s services
allow for the measurement of employee and business
performance via the cloud. Further, as shown in a page
from Applicant’s website …, Applicant “is a global leader
of cloud-based talent management software solutions.”
Applicant’s website also indicates that Applicant’s
services involve “performance management” and
identifying and tracking employee performance. The
website also lists “performance appraisals” and the
creation of “custom performance reviews & 360-degree
reviews” as features of Applicant’s services.8
[The mark] immediately indicates that the services
involve measuring and reviewing PERFORMANCE of the
employees in the CLOUD.9
Applicant argues that the Examining Attorney has impermissibly dissected
Applicant’s mark into its component words, basing her refusal “on separate
definitions for the word ‘performance’ and the word ‘cloud’ …”;10 that Applicant’s
mark is “an incongruous juxtapositioning of two unrelated words” and that “the
words ‘performance’ and ‘cloud’ are completely unrelated and non-sensical when
paired together”;11 and that “the proper determination would have been to show that
Applicant’s PERFORMANCE CLOUD mark as a whole is merely descriptive, not
merely that its individual components may have descriptive components in some
contexts.”12 Applicant contends that a consumer would “have to exert step-by-step

8 Examining Attorney’s brief, 12 TTABVUE 6. (Applicant’s reference to itself as a “global
leader of cloud-based talent management software solutions” is at p. 21 of the Office Action
of December 20, 2013.)
9 Id., 12 TTABVUE 7.
10 Applicant’s brief at 5, 10 TTABVUE 11.
11 Id. at 7, 10 TTABVUE 13.
12 Id. at 5, 10 TTABVUE 11.
Serial No. 85658195
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reasoning to determine what PERFORMANCE CLOUD could mean when used in
connection with Applicant’s services,” exemplifying the type of “mental leap” that is
indicative of a mark that is not descriptive, but suggestive.13
That a determination of mere descriptiveness must be made with respect to an
applicant’s mark as a whole is beyond question. However, it is not improper to
consider the meanings of the individual components of a mark:
In considering a mark as a whole, the Board may weigh
the individual components of the mark to determine the
overall impression or the descriptiveness of the mark and
its various components. In re Nat'l Data Corp., 753 F.2d
1056, 1058 [224 USPQ 749] (Fed. Cir. 1985). … However,
if those two portions individually are merely descriptive of
an aspect of appellant's goods, the PTO must also
determine whether the mark as a whole, i.e., the
combination of the individual parts, conveys any
distinctive source-identifying impression contrary to the
descriptiveness of the individual parts.
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir.
2004).
The dictionary definitions discussed above show that the word PERFORMANCE
describes the activity of an employee, and that the word may be used appropriately
to describe an “employee’s performance,” a “job performance,” and “an annual
performance assessment.”14 Applicant admits that “the ‘PERFORMANCE’ element
of Applicant’s mark suggest[s] that Applicant’s mark may have something to do
with employee or workplace productivity.”15 However, the dictionary evidence shows

13 Applicant’s reply brief at 3, 14 TTABVUE 3.
14 Definition from , Office Action of December 20, 2013 at 5-6.
15 Applicant’s brief at 8-9, 10 TABVUE 14-15.
Serial No. 85658195
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that the word PERFORMANCE, more than merely suggesting something about the
services, actually literally describes a feature of the services, inasmuch as one
purpose of the service is to assist with performance reviews and the tracking of the
job performance of employees and managers. In this regard, see Applicant’s original
specimen of use,16 which states that “Cornerstone helps identify and track high-
performing employees, [and] increase the quality of employee performance reviews.”
The specimen contains many other references to “performance reviews.”
Similarly, the evidence of the meaning of the word CLOUD demonstrates that
this term directly describes another feature of Applicant’s service, namely, that
Applicant makes available to its customers, over the Internet, software applications
and/or data that are stored remotely rather than on the customers’ own computers.
The evidence shows that this type of service, “provided over the Internet” and
“accessed from a Web browser,”17 is called “cloud computing”;18 and that in the
expression “cloud computing,” the word “cloud” refers to “the computers and
connections that support” this kind of service.19 Third parties have referred to this
type of service as “cloud service,”20 “cloud solution,”21 “cloud-based solution,”22 and

16 Filed June 21, 2012.
17 Entry for “cloud” from , Office Action of October 11, 2012 at 18.
18 Definition from , Office Action of December 20, 2013 at 17.
19 Id. at 10-11.
20 Advertisement of Oracle, Office Action of May 14, 2013 at 11.
21 Advertisement of Perfode, id. at 17.
22 Advertisement of Insperity, id. at 15
Serial No. 85658195
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“cloud-based platform.”23 Applicant’s own advertisements state that its services are
“delivered via the cloud.”24 Applicant has referred to its various services as “cloud
solutions,” and has stated, “Accessible through any web browser, our 100% cloud
enabled solution lowers the cost of ownership by minimizing the investments often
associated with traditional software solutions … .”25 It is clear on this record that
Applicant’s services are mediated through “the cloud,” and that CLOUD describes a
feature of Applicant’s services.
We must now consider the mark as a whole and ask whether the combination of
the component words of Applicant’s mark “conveys any distinctive source-
identifying impression contrary to the descriptiveness of the individual parts.” In re
Oppedahl & Larson, 71 USPQ2d at 1372. Applicant argues that the pairing of the
two nouns PERFORMANCE CLOUD is incongruous and nonsensical. However, in
standard English usage, it is commonplace to see two nouns combined, such that
the first noun modifies the second. Examples abound in the record before us, e.g.,
“Trademark Office”; “job performance”; “performance assessment”; Applicant’s
specimen of use refers to “goal alignment”; “performance measurement”; and
“development planning.” When Applicant’s mark is viewed as two nouns, the first of
which modifies the second, relevant customers would readily perceive it to mean a
“cloud” (i.e., a network of computers and connections) whose purpose relates to

23 Advertisement of PIEmatrix, id. at 21.
24 Office Action of May 14, 2013 at 8. See also the reference to “Cornerstone OnDemand’s
Software-as-a-Service (SaaS) delivery model.” Id. at 9.
25 Id. at 8.
Serial No. 85658195
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“performance.” To a person who knows what Applicant’s services are,26 it is clear
that the way in which this “cloud” relates to “performance” is that Applicant’s
software and data storage in the cloud are for the purpose of allowing customers to
track the performance of employees and otherwise facilitate performance
appraisals. We perceive no incongruity in the pairing of the words in Applicant’s
mark, as they are paired in a standard structure of English usage and are readily
intelligible. Nor do we find that a customer would have to make a mental leap or
engage in other multi-step reasoning in order to understand the meaning of the
mark. The mark immediately describes a cloud-based service relating to
performance. Even though the mark does not convey every specific detail of the
services, all is revealed when the mark is viewed in the context of the services,
inasmuch as the customer is offered an online service for facilitating performance
reviews of the customer’s employees and managers.
Applicant contends that its mark is not merely descriptive because it conveys
other meanings as well, arguing that “the word ‘performance’ in Applicant’s mark
suggests the sense of achievement one receives from using Applicant’s services,
while the word ‘cloud’ suggests the enveloping, ‘cloud-like’ nature of Applicant’s
services.”27 One must step far away from the context of Applicant’s services in order
to perceive these alternate meanings of the mark’s component words. That a term
may have other meanings in different contexts is not controlling, In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979), and will not avoid a finding of mere

26 See DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 103 USPQ2d at 1757.
27 Applicant’s brief at 11, 10 TTABVUE 17.
Serial No. 85658195
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descriptiveness when the words of the mark have clear, relevant meaning in the
context of the identified services.
Applicant points out that the Examining Attorney has not shown any use of the
words “performance cloud” by competitors of Applicant, nor demonstrated that
competitors need to use this term to describe their services. However, neither type
of showing is required in order to demonstrate that a mark is merely descriptive.
Being “the first and only one to adopt and use the mark sought to be registered does
not prove that the mark is not descriptive.” In re Bailey Meter Co., 102 F.2d 843, 41
USPQ 275, 276 (CCPA 1939). While a clear demonstration of competitive need
would reinforce a finding of mere descriptiveness, no such showing is required when
it is otherwise shown that the mark forthwith conveys an immediate idea of a
feature of the services, in accordance with the standard enunciated in In re
Chamber of Commerce of the U.S., 102 USPQ2d at 1219 and In re Gyulay, 3
USPQ2d 1009.
Applicant argues that “[t]he PTO has a history of registering marks that, like
Applicant’s mark, incorporate the element CLOUD incongruously with another
word or element”;28 and has made of record a number of third-party registrations
purportedly supporting this claim.29 However, the Board is not bound by prior
decisions made on different records and involving different marks. In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). “[A] mark
which is merely descriptive should not be registered merely because other such

28 Applicant’s brief at 8, 10 TTABVUE 14.
29 Applicant’s response of November 18, 2013 at 23-36.
Serial No. 85658195
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marks appear on the register.” In re Scholastic Testing Service, Inc., 196 USPQ 517,
519 (TTAB 1977). In any event, as discussed above we see no incongruity in the
combination of words in Applicant’s mark.
We find that the two component words of Applicant’s mark combine in a manner
that would be easily interpreted by persons familiar with the English language and
Applicant’s services. In this regard, the mark conveys an immediate idea of a
significant feature of the services. Accordingly, we find that Applicant’s mark is
merely descriptive of Applicant’s services within the meaning of Trademark Act
Section 2(e)(1).
Decision: The refusal to register is affirmed.