Salesforce.com, Inc.v.Edataforce Consulting, LLC

Trademark Trial and Appeal Board

Aug 25, 2014

No. 92054039 (T.T.A.B. Aug. 25, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 25, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Salesforce.com, Inc.
v.
Edataforce Consulting, LLC
_____

Opposition No. 91199539
Cancellation No. 92054039
(consolidated)

_____

John L. Slafsky of Wilson Sonsini Goodrich & Rosati
for Salesforce.com, Inc.

Kavitha Akula of Akula & Associates, P.C.
for Edataforce Consulting, LLC.
_____

Before Bucher, Taylor, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Salesforce.com, Inc. (“Salesforce”) petitions to cancel Registration No. 3898834
for the mark edataforce (in standard characters) for “Computer software
development and computer programming development for others” in International
Class 42,1 owned by Edataforce Consulting, LLC (“Edataforce”).

1 The registration issued January 4, 2011.
Opposition No. 91199539 and Cancellation No. 92054039
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Salesforce also opposes Edataforce’s application to register the same mark for
services described as “Customized software development services; Design and
development of computer hardware and software; Research, development, design
and upgrading of computer software” in International Class 42.2
As the pleaded ground in both the cancellation and opposition, Salesforce claims
likelihood of confusion with its FORCE and FORCE-formative marks, including an
asserted “family” of FORCE marks, which it alleges have been used in commerce on
software and in association with software-related services “well before any date of
first use upon which [Edataforce] can rely.” ¶ 15 (Petition for Cancellation and
Notice of Opposition). In all, Salesforce pleaded ownership of eleven (11)
registrations and ten (10) applications, as well as common law rights in eight (8)
additional marks containing the stylized term FORCE.3
Edataforce filed answers denying the salient allegations in both the opposition
and cancellation. The two proceedings were consolidated prior to trial.4

2 Application Serial No. 77888877 was filed on December 8, 2009 and is based on an
allegation of first anywhere and in commerce on September 29, 2009 under Section 1(a) of
the Trademark Act. The application also contains a recitation of services in International
Class 35; however, the application was not opposed with respect to the Class 35 services.
3 Several of the pleaded applications matured into registrations and Salesforce introduced
copies thereof with its first notice of reliance (16 TTABVUE). In all, and under the same
first notice of reliance, Salesforce introduced copies of 36 different registrations it owns as
well as three applications, of which all but two are for marks containing the FORCE
element. See, infra, discussion involving “Preliminary Matters.”
4 See 15 TTABVUE (consolidation order). Unless otherwise specified, all TTABVUE
citations in this opinion are references to filings or orders in the consolidated opposition
proceeding (No. 91199539).
Opposition No. 91199539 and Cancellation No. 92054039
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I. Record
The record in this case consists of the pleadings and, by rule, the files of the
involved registration and application. Trademark Rule 2.122(b)(1).
Salesforce has submitted the testimony, with exhibits, of Bradley Armstrong,
Salesforce’s Director of Platform Business Development.5
In addition, Salesforce made the following evidence of record under notices of
reliance:
• Copies of 36 registrations and three applications that it owns, including
the following registrations:6

5 21 TTABVUE (testimony and exhibits designated as “confidential”) and 23 TTABVUE.
6 16 TTABVUE (first notice of reliance).
7 Issued February 4, 2003 on Supplemental Register.
8 Issued September 5, 2006; §§ 8 and 15 declaration accepted and acknowledged.
Mark Reg. No. Goods and/or Services
SALESFORCE.COM 26848247 providing temporary use of on-line non-
downloadable software for storing, managing,
tracking and analyzing data in the field of
marketing…; computer services, namely,
designing, implementing, and maintaining
computer software for others… in Class 42
SALESFORCE 31387498 downloadable software for use in web site
development… [and] for use in customizing
computer application user interfaces in Class 9
Opposition No. 91199539 and Cancellation No. 92054039
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• Copies of various filings made by Salesforce with the SEC;13
• Copies of printouts from TTABVUE, website of National Arbitration
Forum for purposes of showing that Salesforce has opposed registration or
third-party use of FORCE-formative marks or domain names;14
• Copies of 22 articles regarding Salesforce;15 and
• Copies of printouts from Salesforce’s website, Edataforce’s website, and 35
press releases issued by Salesforce.16

9 Issued December 27, 2005; §§ 8 and 15 declaration accepted and acknowledged.
10 Issued June 1, 2010.
11 Issued August 24, 2010.
12 Issued May 24, 2011.
13 17 TTABVUE (second notice of reliance).
14 18 TTABVUE (fifth notice of reliance).
15 19 TTABVUE (fourth notice of reliance).
16 20 TTABVUE (third notice of reliance).
DREAMFORCE

30354039 educational services, namely, conducting
seminars, conferences, workshops, and computer
application training in the fields of marketing,
promotion, sales, customer information, customer
relationship management, sales support and
employee efficiency, and distributing course
materials in connection therewith in Class 41
CLOUDFORCE 379548310 (same as immediately above)
FINANCIALFORCE 383687911 ... computer services, namely, designing,
developing, and maintaining computer software
applications for others and consulting services
related thereto in Class 42
VISUALFORCE 396637212 … online hosted computer services, namely,
designing, developing, customizing and
maintaining computer application user interfaces
for others and consulting services related thereto
in Class 42
FORCE.COM 3592166 … online hosted computer services, namely,
designing, developing, and maintaining computer
software applications for others and consulting
services related thereto in Class 42
Opposition No. 91199539 and Cancellation No. 92054039
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II. Preliminary Matters
A. Burden of Proof
As an initial matter, we note that Edataforce did not submit any evidence or file
a trial brief. In effect, the extent of Edataforce’s participation in both proceedings is
limited to the answers it filed. It is not required to do more and we keep in mind
that the burden of proof with respect to both the cancellation and opposition
remains with Salesforce. That is, Salesforce is the plaintiff in both matters and
bears the ultimate responsibility of proving the asserted ground for opposition and
cancellation by a preponderance of the evidence. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
B. Salesforce’s Unpleaded Registrations
Another preliminary matter involves Salesforce’s reliance on registered marks
that were not pleaded in the Notice of Opposition or Petition for Cancellation.
Specifically and as already noted, Salesforce pleaded ownership of certain
registrations and applications for marks containing the term FORCE. At trial, it
introduced copies showing status and title of not only the pleaded registrations, but
also registrations that matured from the pleaded applications and registrations that
were not identified, in application status or otherwise, in the pleadings.
With respect to the pleaded applications that matured into registrations, we
deem the Notice of Opposition and Petition for Cancellation amended to include
reliance on these registrations. See DC Comics v. Pan American Grain Mfg. Co. 77
USPQ2d 1220 (TTAB 2005).
Opposition No. 91199539 and Cancellation No. 92054039
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As to Salesforce’s introduction of registrations that were not identified (either by
application or registration number) in the pleadings, it may only rely on these
registrations if this was an issue that was tried by implied consent. That is, the trial
of an unpleaded issue can be found where the nonoffering party (1) raised no
objection to the introduction of the evidence on the issue, and (2) was fairly apprised
that the evidence was being offered in support of the issue. Morgan Creek
Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1138 (TTAB 2009);
H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720-1721 (TTAB 2008).
The question of whether an issue was tried by consent is basically one of
fairness. The non-moving party must be aware that the issue is being tried, and
therefore there should be no doubt on this matter.

Morgan Creek Productions Inc., 91 USPQ2d at 1139.
Here, Edataforce raised no objection to the introduction of copies of Salesforce’s
unpleaded registrations showing their status and title and Salesforce informed
Edataforce in the first notice of reliance that it “intends to rely upon” these
registrations. Under these circumstances, we conclude that Salesforce’s reliance on
these registrations was tried by implied consent and they may serve as a basis in
Salesforce’s priority and likelihood of confusion claim. See, e.g., Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1653 n.2 (TTAB 2002) (where
opposer, during trial, filed notice of reliance on seven unpleaded registrations and
where applicant did not object thereto, Board found parties had tried by implied
consent, any issues arising from those registrations).
Opposition No. 91199539 and Cancellation No. 92054039
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In sum, all registrations owned by Salesforce and made of record by attaching
copies under a notice of reliance may serve as a basis in Salesforce’s priority and
likelihood of confusion claim.
C. Salesforce’s Family of ‘FORCE’ Marks
Salesforce pleaded and asserts ownership of a “family of FORCE marks,” arguing
that it began using this family of marks in 2003. Brief, p. 24. Indeed, Salesforce
argues the likelihood of confusion ground based greatly, if not exclusively, on this
family of marks rather than relying on any one of its individual FORCE-formative
marks.
The fact that Salesforce has used and registered numerous marks incorporating
FORCE is not in itself sufficient to establish the existence of a family of marks.
Salesforce has the burden of demonstrating that these marks have been used and
advertised in such a manner as to create common exposure and thereafter
recognition of common ownership based upon the FORCE feature common to each
mark. See Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1514 (TTAB
2009).
The Federal Circuit has defined a family of marks as follows:
A family of marks is a group of marks having a recognizable common
characteristic, wherein the marks are composed and used in such a way that the
public associates not only the individual marks, but the common characteristic of
the family, with the trademark owner. Simply using a series of similar marks
does not of itself establish the existence of a family. There must be a recognition
among the purchasing public that the common characteristic is indicative of a
common origin of the goods.

J & J Snack Foods Corp. v. McDonald's Corp., 932 F2d 1460, 18 USPQ2d 1889,
1891 (Fed. Cir. 1991).
Opposition No. 91199539 and Cancellation No. 92054039
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Upon review of the entire record in this proceeding, we find Salesforce has met
this burden in showing it has rights in a FORCE-formative family of marks.
As early as 2005, Salesforce was clearly making a conscious effort to advertise
its various FORCE-formative marks in connection with computer software services
in such a manner that consumers would clearly perceive that common element in
the mark. For example, Salesforce’s website at that time was listing several of it
marks alongside each other with an emphasis (in bold) on the common element
FORCE and stating that it offers “A Complete Family of On-Demand Solutions”:17

In the same year and on the same website, Salesforce also displayed its marks
and described several of its service products in the following manner:

17 20 TTABVUE (Exhibit D-7, at p. 75 of 385).
Opposition No. 91199539 and Cancellation No. 92054039
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Salesforce’s witness, Mr. Armstrong, testified to the accuracy of exhibits
identified as “website traffic data summaries” which reflect a significant number of
people have visited Salesforce’s websites, including the time spent, conversion rate
and views at the domains.18
Mr. Armstrong also testified that consumers are continuously exposed to “heavy
promotion” of the FORCE family of marks at Salesforce’s “Dreamforce” conference
held typically each year at the Moscone Center in San Francisco since 2003. This

18 23 TTABVUE (Armstrong Dep. at pp. 35-7, Exhibit 12).
Opposition No. 91199539 and Cancellation No. 92054039
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conference is attended by “tens of thousands” and involves a series of presentations
involving Salesforce’s products and services.19
Salesforce also enters into partnership agreements with other companies and
will licenses use of a “FORCE-related brand” to signify this venture between
Salesforce and the partner.20 In other words, the FORCE element of the mark is
being used to signify to consumers that Salesforce is collaborating in the effort. Mr.
Armstrong testified that Salesforce keeps a tight control on any use of a FORCE-
formative mark whether it is used in such a partnership or whether the mark is
being used by its own employees in conducting business with its customers.
According to Mr. Armstrong, Salesforce not only advertises its marks as a family
but communicates treatment of its marks as a family by engaging in “education
internally and education of partners and customers via [various documents] and by
enforcing these rights when necessary.”21 Indeed, Salesforce has internal written
guidelines governing employee use and promotion of its marks to the public.
In sum, we find that Salesforce has used and advertised its FORCE-formative
marks in such a manner as to create exposure and recognition of common
ownership based on that common element. Salesforce has demonstrated that it has
owned a family of FORCE formative marks at least as early as 2005.

19 Id. (Armstrong Dep. at pp. 64-65)
20 Id. (Armstrong Dep. at pp. 69-70)
21 Id. (Armstrong Dep. at p. 72)
Opposition No. 91199539 and Cancellation No. 92054039
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III. Salesforce’s Standing and Priority
Salesforce has shown it possesses a real interest in each of the consolidated
proceedings beyond that of a mere intermeddler, and has a reasonable basis for
belief of damage. Its pleaded registrations for marks containing the element FORCE
and covering various software goods and services are of record and, as discussed in
the previous section, it owns a family of FORCE marks. These established facts
suffice for purposes of Petitioner’s standing in bringing this matter before the
Board. Lipton v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189-190 (CCPA
1982); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009)
(“Petitioner has established his common-law rights in the mark DESIGNED2SELL,
and has thereby established his standing to bring this proceeding.”).
In the context of the opposition proceeding, priority is not an issue with respect
to the Salesforce registrations of record vis-à-vis Edataforce’s applied-for mark.
King Candy Co. v. Eunice King's Kitchen, 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974). However, in the context of the cancellation proceeding, it is necessary for
Salesforce to establish priority in order to prevail on a claim of likelihood of
confusion based on any of registered marks, it must prove it has prior proprietary
rights. See Brewski Beer Co. v. Brewski Bros., Inc., 47 USPQ2d 1281 (TTAB 1998).
As to Salesforce’s common law rights in the family of FORCE marks, it must
prove prior use of this family in both the opposition and cancellation proceedings. J
& J Snack Foods, 932 F2d at 1464 (“preference is accorded the prior user of a mark
or family of marks, as against a newcomer.”).
Opposition No. 91199539 and Cancellation No. 92054039
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For purposes of priority, Edataforce may rely on the constructive use or filing
date, i.e., December 1, 2009, of the underlying application that matured into its
registration. Although the registration contains an allegation of use as of September
1, 2009, a date earlier than the filing date, respondent has not submitted any
evidence to establish this allegation and thus cannot rely on this earlier date.
Trademark Rule 2.122(b)(2) (“The allegation in an application for registration, or in
a registration, of a date of use is not evidence on behalf of the applicant or
registrant; a date of use of a mark must be established by competent evidence.”)
As already discussed, Salesforce has demonstrated that, as early as 2005, it
acquired rights in a family of FORCE-formative marks in connection with its
computer software design, development and programming services. Thus, Salesforce
has priority with respect to its FORCE family of marks vis-à-vis Edataforce’s
registered mark.
We further note that the filing dates for many of Salesforce’s relied-upon
registrations precede September 1, 2009 and, as constructive use dates, they serve
to establish Salesforce’s priority in connection with those registered marks (in
connection with the identified goods and services) vis-à-vis Edataforce’s registered
mark. Trademark Act § 7(c). See J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d
960, 144 USPQ 435, 437 (CCPA 1965). These registered marks, with prior filing
dates, include the following: SALESFORCE, SUCCESSFORCE, FINANCIALFORCE,
CLOUDFORCE, DREAMFORCE, MIRRORFORCE, and SFORCE.
Opposition No. 91199539 and Cancellation No. 92054039
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For purposes of determining if there is a likelihood of confusion in both the
opposition and cancellation, however, we focus our analysis below on Salesforce’s
FORCE family of marks used in connection with computer software design,
development and programming services and Edataforce’s mark, edataforce, in
connection with the services recited in its registration and Class 42 of the
application.
IV. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in the essential characteristics
of the goods and differences in the marks.”).
A. Similarity of the Parties’ Services, Trade Channels and Consumers
Edataforce’s services, as described in its registration, are “computer software
development and computer programming development for others.” Its services, as
recited in its application, are “customized software development services; design
and development of computer hardware and software; research, development,
design and upgrading of computer software.”
Opposition No. 91199539 and Cancellation No. 92054039
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Salesforce’s services, as described in several of its registrations listed above,
comprises, among other services, “providing temporary use of on-line non-
downloadable software for storing, managing, tracking and analyzing data in the
field of marketing…; computer services, namely, designing, implementing, and
maintaining computer software for others.” The record, including printouts from
Salesforce’s website and the testimony from Mr. Armstrong, corroborates and
evidences Salesforce’s use of its family of marks in connection with these services.
As is evident, the services of the parties are essentially identical. Edataforce’s
computer software development and design services for others is the same as
Salesforce’s “designing” and “implementing” computer software for others. In
substance, both parties’ services involve designing and developing computer
software for others. Although the printouts from Salesforce’s website shows that its
services are generally directed to helping consumers with “customer relationship
management (CRM),” Edataforce’s computer software services are broadly defined
and may include development and designing software in the same CRM field.
Because the parties’ software services are the same, we presume that the
services move in all normal channels of trade and are available to all potential
classes of ordinary consumers. See Citigroup Inc. v. Capital City Bank Group Inc.,
637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). Accordingly, we presume
the trade channels and classes of customers to be the same. See American Lebanese
Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028
Opposition No. 91199539 and Cancellation No. 92054039
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(TTAB 2011); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (finding Board entitled to rely on this presumption).
Accordingly, the factors focusing on the similarity of the parties’ services, trade
channels and consumers all strongly support a finding of likely confusion.
B. Similarity of the Marks
Where, as here, the parties use their marks in connection with services that are
legally identical, the similarity between the marks necessary to support a
determination that confusion is likely declines. See Bridgestone Americas Tire
Operations LLC v. Federal Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir.
2012).
In comparing the edataforce mark with Salesforce’s FORCE family of marks, we
keep in mind that the relevant question is would edataforce be likely to be viewed
as a member of the FORCE family of marks. 7-Eleven Inc. v. Wechsler, 83 USPQ2d
1715, 1720 (TTAB 2007); The Black & Decker Corporation v. Emerson Electric Co.,
84 USPQ2d 1482, 1491 (TTAB 2007); Plus Products v. Medical Modalities
Associates, Inc., 217 USPQ 464, 465 n.8 (TTAB 1983) (“purchasers familiar with
plaintiff’s family of marks would believe the defendant’s mark is but another
member of that family.”). We believe this to be the case. That is, consumers viewing
edataforce are likely to perceive it as conforming to the Salesforce’s FORCE family
of marks, which include: SALESFORCE, SUCCESSFORCE, FINANCIALFORCE,
CLOUDFORCE, DREAMFORCE, MIRRORFORCE, and SFORCE. The structure of
the Edataforce’s mark is very close to, if not the same, as that employed in
Opposition No. 91199539 and Cancellation No. 92054039
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Salesforce’s family of marks inasmuch because it ends with the term “Force” and is
prefaced with highly suggestive or descriptive terms. Descriptive or generic matter
has less significance in creating a mark’s commercial impression and little weight in
likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms,
this court has noted that the ‘descriptive component of a mark may be given little
weight in reaching a conclusion on likelihood of confusion.’”) (quoting In re Nat’l
Data Corp., 224 USPQ at 752). In contrast, the family of marks is characterized by
the arbitrary and distinctive term FORCE.
For the reasons mentioned, we find edataforce is sufficiently similar to
Salesforce’s FORCE family of marks that, if used in connection with closely related
or identical services, consumers would mistakenly believe it is a member of the
same family. The first du Pont factor thus also weighs in favor of a finding of
likelihood of confusion.
C. Strength of Salesforce’s FORCE Family of Marks
Salesforce’s annual sales, as well as its advertising and marketing expenditures
are significant. While several of the Armstrong deposition testimonial exhibits
involving Salesforce’s success have been designated as confidential, Salesforce has
highlighted in its brief several relevant statistics such as marketing expenditures
beginning in the “tens of millions in the early 2000s and surpassing a billion dollars
in recent years.” Brief at p. 29. The number of Salesforce’s customers has been
designated as confidential but we can state that it is quite substantial. The record
Opposition No. 91199539 and Cancellation No. 92054039
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also comprises copies of unsolicited mainstream media articles featuring Salesforce
and several of its FORCE family of marks in connection with the services offered.
Salesforce does not argue that its FORCE family of marks is famous and we
would not find it to be famous on this record; however, we can agree with the
assessment that the family is very strong for purposes of likelihood of confusion.
As a result, we find that this factor weighs slightly in favor of finding a
likelihood of confusion.
V. Conclusion
In sum, we find that Salesforce has priority of use with respect to its FORCE
family of marks. As discussed above, the parties’ services, trade channels and
classes of consumers are identical in-part and otherwise closely related. Given these
factors and that the edataforce mark so resembles Salesforce’s strong FORCE
family of marks, it likely to be mistaken as a member of the family and thus cause
confusion.22
Decision: The petition to cancel is granted pursuant to Section 14(1) of the
Trademark Act, 15 U.S.C. § 1064(1) and Registration No. 3898834 will be cancelled
in due course. The opposition is sustained with respect to the services in
International Class 42, as recited in Application Serial No. 77888877 pursuant to
Section 13 of the Trademark Act, 15 U.S.C. § 1063. These services will be deleted
and the application will proceed to registration as to the remaining services in
International Class 35.

22 In view of our finding, there is no need for us to consider likelihood of confusion as to the
Salesforce’s marks, on an individual basis, vis-à-vis Edataforce’s mark.