salesforce.com, inc.v.Molly Wendell

Trademark Trial and Appeal Board

Dec 17, 2020

91237941 (T.T.A.B. Dec. 17, 2020)

Hearing: June 10, 2020 Mailed: December 17, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

salesforce.com, inc.

v.

Molly Wendell
_____

Opposition No. 91237941
_____

John L. Slafsky of Wilson Sonsini Goodrich & Rosati for salesforce.com, inc.,
Opposer.

Jeffrey C. Whitley of Whitley Legal Group PC for Molly Wendell, Applicant.
_____

Before Wolfson, Shaw, and Dunn, Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:

Molly Wendell (Applicant) seeks registration of the mark YOUR WORKFORCE
IS YOUR SALESFORCE (in standard characters, SALESFORCE disclaimed) for:
Printed publications and printed matter, namely, books, magazines,
newsletters, reference guides, educational course pamphlets, and
informational cards all in the field of networking, relationship building,
collaboration, leadership, management, education, sales, communication,
corporate and personal assessment and measurement, and professional and
personal development, in International Class 16; and

Education services, namely, providing seminars, workshops, lectures and
classes in the fields of networking, relationship building, collaboration,
This Opinion Is Not a
Precedent of the TTAB

Opposition No. 91237941

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leadership, management, education, sales, communication, corporate and
personal assessment and measurement, and professional and personal
development, in International Class 41.1

In its amended notice of opposition, Opposer salesforce.com, inc. pleads ownership
of the mark SALESFORCE, marks including the term “FORCE,” and a family of
“FORCE” marks, each the subject of common law use and certain of which the subject
of pleaded registrations and applications for software and a variety of business,
computer, and educational services.2 The notice of opposition pleads that Applicant’s
mark, when used on or in connection or association with the goods and services in the
application, is likely to create confusion with Opposer’s pleaded marks.3 In its
answer, Applicant denies the salient allegations of the notice of opposition. Applicant
did not plead any affirmative defenses.
Both parties filed briefs and participated in an oral hearing. We sustain the
opposition.

1 Application Serial No. 87293037, filed January 9, 2017, based on Applicant’s allegation of
first use anywhere as early as July 14, 2014 in both classes and first use in commerce at least
as early as January 16, 2016 in both classes, pursuant to Trademark Act Action 1(a), 15
U.S.C. §1051(a).
The Trademark Status and Document Retrieval (TSDR) citations refer to the downloadable
.pdf version of the documents available from the electronic file database for the involved
application. The TTABVUE citations refer to the Board’s electronic docket, with the first
number referring to the docket entry and the second number, if applicable, referring to the
page within the entry.
2 5 TTABVUE 7-14.
3 Id. at 15-16.
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I. THE RECORD
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application. The record also includes the
following testimony and documentary evidence.
A. Opposer’s Testimony:
Matt Bennetti, Opposer’s Senior Director of Strategy and Operations, confidential
testimony with accompanying exhibits on Opposer’s history, services, customers,
promotional efforts, trademark enforcement efforts, customer recognition, and use
of its mark;4

Denis Pombriant, Beagle Research Group, LLC founder and principal analyst, on
Opposer’s promotion of its mark and likelihood of confusion with Applicant’s
mark;5

John A. Hawkins, University of California, Davis, Distinguished Professor of
Linguistics on association of the term SALESFORCE with Opposer, and the
relationship between the terms SALESFORCE and SALES FORCE;6

Christopher Butler, Internet Archive Office Manager, authenticating archived
pages from Opposer’s website from 1999 to 2017;7

Andrew Shiflett, Lighthouse Senior Analyst, authenticating October 31, 2018
forensic capture of pages from Opposer’s website;8

Christine Au-Yeung, Attorney for Opposer, authenticating confidential discovery
documents produced by Applicant;9

4 27 TTABVUE and 28 TTABVUE (redacted version), 29 TTABVUE (audio files with
SALESFORCE radio advertisements).
5 24 TTABVUE.
6 23 TTABVUE (trial) and 42 TTABVUE (rebuttal).
7 21 TTABVUE. The declaration and attachments are numbered 5423-5498, but within the
declaration the attachments are listed by numbers 1-70. Opposer has not otherwise identified
any of the attachments. Thus, there is no way of knowing if the attached documents
correspond to the documents listed in the declaration, and so the attached documents, which
lack a URL and access date, have not been authenticated.
8 22 TTABVUE.
9 25 TTABVUE and 26 TTABVUE (redacted version).
Opposition No. 91237941

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Opposer also submitted the following exhibits by notice of reliance (NOR):

NOR 1: Copies of Opposer’s pleaded registrations and applications;10

NOR 2: Opposer’s Security and Exchange Commission (SEC) annual 10-K filings
for the years 2004-2017;11

NOR 3: Pages from Opposer’s Twitter, Facebook, Instagram, LinkedIn, YouTube,
Pinterest, Google+, and SlideShare accounts with excerpts showing use of
SALESFORCE;12

NOR 4: Discovery deposition of Applicant Molly Wendell, Applicant’s discovery
responses and produced documents, and pages from Applicant’s website;13

B. Applicant’s Testimony:
Applicant Molly Wendell’s declaration and accompanying exhibits;14
Jon McGarity, bioindustry management consultant, on use of “salesforce” in
business and marketing;15

Applicant also submitted the following exhibits by notice of reliance (NOR):

NOR 1: Third party registrations for marks including the term FORCE;16

NOR 2: Internet pages featuring Opposer’s witness Pombriant;17

NOR 3-10: Internet pages featuring third-party use of “salesforce.”18

10 16 TTABVUE.
11 17 TTABVUE. While these filings are admissible as Internet materials, they are not
probative of the truth of any matters asserted in the filing or listed in the notice of reliance.
12 18 TTABVUE.
13 19 TTABVUE.
14 32 and 34 TTABVUE.
15 33 TTABVUE.
16 30 TTABVUE.
17 31 TTABVUE.
18 35-41 TTABVUE.
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II. EVIDENTIARY OBJECTIONS
Applicant submitted the declaration of Jon McGarity to offer his opinion “as to the
use of the words ‘salesforce’ and ‘sales force’ in commerce.”19 Opposer objects to
consideration of this evidence because the witness is not qualified as an expert, and
his opinion is “fundamentally unreliable.”20 Applicant contends that this objection is
unfounded and should be overruled because Mr. McGarity’s more than 50 years of
experience in sales in a specific industry is sufficient qualification for the limited
purpose of his testimony in demonstrating that the terms “SALESFORCE and
SALES FORCE are used interchangeably by sales professionals to refer to groups of
people with a common goal of increasing sales in a business organization.”
We do not construe Mr. McGarity’s testimony as expert witness testimony within
the ambit of Federal Rule of Evidence 702. Rather, we find that Mr. McGarity
testified in his capacity as a consultant and CEO of several corporations within the
healthcare field, as an individual who has launched over 40 products and supervised
several large sales forces, and, based on his years of experience as a sales executive,
that he is generally familiar with sales terminology. We find that his testimony is not
based on “scientific, technical, or other specialized knowledge,” as contemplated by
FRE 702. Mr. McGarity’s opinions concerning how SALESFORCE and SALES
FORCE is used among sales professionals clearly fall within the scope of expertise of

19 33 TTABVUE 2.
20 43 TTABVUE 27-28, 44-49; 48 TTABVUE 11-12.
Opposition No. 91237941

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that expected from an individual who is not an expert witness but has experience and
knowledge of terms used by sales professionals in the healthcare field, and by
extension, to sales groups in other fields. See Mag Instrument Inc. v. Brinkmann
Corp., 96 USPQ2d 1701, 1709 (TTAB 2010). Accord Kohler Co. v. Honda Giken Kogyo
K.K., 125 USPQ2d 1468, 1484 (TTAB 2017). Accordingly, Opposer’s objection to this
testimony is overruled.
Opposer objects for the first time in its brief to consideration of two pages from the
Direct Selling Association website as submitted under notice of reliance without the
URL required by Trademark Rule 2.122(e)(2), and two SEC 10-Q filings by Cisco
Systems, Inc. as “materials not produced during discovery.”21 With respect to the
Direct Selling Association website pages, the failure to provide a URL for Internet
materials is a procedural defect which, if raised promptly, could have been cured. We
find that by waiting until its brief was filed to do so, Opposer has forfeited its right to
object. See Moke Am. LLC v. Moke USA, LLC, 2020 USPQ2d 10400 *4 (TTAB 2020);
Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 163 (TTAB
2017). With respect to the SEC filings, there is no obligation to produce all trial
materials during discovery. Cf. Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098,
1103 (TTAB 2018) (no obligation to identify all possible trial witnesses in pretrial
disclosures); British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB
1993), aff’d, 35 F.3d 1527, 32 USPQ2d 1120, 1125 (Fed. Cir. 1994) (“Any alleged error

21 43 TTABVUE 27 (Opposer’s objection); 37 TTABVUE 96 and 40 TTABVUE 609 (Internet
pages lacking URL); and 41 TTABVUE (Cisco Systems, Inc. SEC filings).
Opposition No. 91237941

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in admitting evidence is not reversible unless the opposers establish prejudice.”).22
This objection is overruled.

III. ENTITLEMENT TO A STATUTORY CAUSE OF ACTION23
To establish entitlement to bring a statutory cause of action under Section 13 of
the Trademark Act, such as a cause of action for likelihood of confusion, a plaintiff
must demonstrate a real interest in the proceeding and a reasonable belief of damage.
Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020
USPQ2d 10837 at *3 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen.
Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062-1063 (Fed. Cir. 2014); Coach
Servs., Inc. v. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999). Here, Opposer has a “real interest” and a “reasonable belief of damage” because
Opposer’s pleaded registrations, which were properly made of record24, establish that
Opposer has a “direct commercial interest” that entitles it to oppose registration of

22 A party that fails to provide information requested during discovery, or provides an
untimely supplement, may be subject to an “estoppel sanction,” and so will be precluded from
using that information or witness at trial, unless the failure to disclose was substantially
justified or is harmless. Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1328 (TTAB
2011). However, Opposer does not support its objection with any facts indicating that the
SEC filings were responsive to a specified discovery request, and so there is no factual basis
for applying the sanction.
23 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Section 13
and 14 remain equally applicable. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020
USPQ2d 11277, *4 (Fed. Cir. 2020) (“[W]e discern no meaningful, substantive difference
between the analytical frameworks expressed in Lexmark [International, Inc. v. Static
Control Components, Inc., 572 U.S. 118 (2014)] and Empresa Cubana….”).
24 16 TTABVUE.
Opposition No. 91237941

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Applicant’s mark on the ground of likelihood of confusion. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Applicant, in its brief,
did not challenge Opposer’s entitlement to a statutory cause of action.

IV. PRIORITY OF USE AND LIKELIHOOD OF CONFUSION
Under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), a mark may not be
registered if it “consists of or comprises a mark … or a mark or trade name previously
used in the United States by another and not abandoned, as to be likely, when used
on or in connection with the goods of the applicant, to cause 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. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (enumerating thirteen factors to be considered when
testing for likelihood of confusion, including “[a]ny other established fact probative of
the effect of use”). Opposer bears the burden of proving its claim of likelihood of
confusion by a preponderance of the evidence. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014). “Whether a
likelihood of confusion exists between an applicant’s mark and a previously registered
mark is determined on a case-by-case basis, aided by application of the thirteen
DuPont factors.” Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d
1315, 128 USPQ2d 1686, 1689 (Fed. Cir. 2018).
Opposition No. 91237941

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As set forth above, Opposer pleads priority of use of, and likelihood of confusion
between, Applicant’s mark YOUR WORKFORCE IS YOUR SALESFORCE and
Opposer’s pleaded use and registration of marks including the term SALESFORCE
(the “SALESFORCE marks”); individual marks including the term “FORCE”; and a
family of “FORCE” marks. Because the SALESFORCE marks present the fewest
points of difference from Applicant’s mark, we consider the claim with respect to the
eight pleaded registrations for Opposer’s marks consisting of the literal term
SALESFORCE alone, in standard characters or with a background cloud design for
business, computer, and educational services in the field of customer relationship
management, or CRM, sales, and networking.25 These marks are (emphasis added):
MARK/REGISTERED GOODS/SERVICES

SALESFORCE

Reg. No. 2964712
issued July 5, 2005 with Sec.
2(f) claim,
renewed26
Business management services, namely, providing
customer relationship management services
and sales support management services;
business management consulting services relating
to customer relationship management, sales
support management, and marketing
automation; providing a website with general
information of interest to the fields of advertising,
marketing and business services, in International
Class 35.

Providing temporary use of on-line non-
downloadable software to store, manage, track,
analyze and report data in the field of marketing,
promotion, sales, customer information, customer
relationship management, sales support and

25 Because the goods and services are less close to Applicant’s goods and services, we do not
include pleaded Registration No. 4986241 for SALESFORCE for goods and services in
International Classes 16, 25, and 36, or pleaded Registration No. 3138749 for SALESFORCE
for goods in International Class 9.
26 16 TTABVUE 60-61.
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employee efficiency; providing temporary use of on-
line non-downloadable software to facilitate
communicating among peer professionals in the
advertising, marketing and business services fields,
in International Class 42.

SALESFORCE

Reg. No. 3141697
issued September 12, 2006
with Sec. 2(f) claim,
renewed27
Business management services, namely, providing
customer relationship management services
and sales support management services;
business management consulting services relating
to customer relationship management, sales
support management, and marketing
automation; providing a website with general
information of interest to the fields of advertising,
marketing and business services, in International
Class 35.

SALESFORCE

Reg. No. 3164978
issued October 31, 2006,
renewed28
Providing temporary use of on-line non-
downloadable software to store, manage, track,
analyze, and report data in the field of marketing,
promotion, sales, customer information, customer
relationship management, sales support and
employee efficiency; providing temporary use of on-
line non-downloadable software to facilitate
communicating among peer professionals in the
advertising, marketing and business services fields,
and for customizing computer application user
interfaces; computer services, namely, designing,
developing, and maintaining computer software
applications for others and consulting services
related thereto, in International Class 42.

27 Id. at 46-47.
28 Id. at 25-26.
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SALESFORCE

Reg. No. 4126473
issued April 10, 2012,
Sec. 8 filed29

On-line social networking services, in
International Class 35.

Reg. No. 5115047
issued January 3, 2017
with Sec. 2(f) claim as to
SALESFORCE30

The mark consists of the word
“SALESFORCE” in stylized
lettering, contained within a
cloud shape. Color is not
claimed as a feature of the
mark.

Online social networking services for
businesses and individuals via a global
communications network; Internet-based social
networking services; online social networking
services in the field of business analytics, sales
and service; licensing of computer systems and
software; online social networking services for
others; registration of domain names; security
consultancy, in International Class 45.

Reg. No. 5551061
issued August 28, 2018
with Sec. 2(f) claim as to
SALESFORCE31

The mark consists of the word
“SALESFORCE” in stylized
lettering, contained within a
cloud shape. Color is not
claimed as a feature of the
mark.

(excerpt)
… software as a service (SAAS) services featuring
software for providing data analytics, business
analytics, business intelligence and for collecting
and analyzing data in the fields of business,
marketing, advertising, brand development, sales,
customer service, cloud computing, customer
information, customer relationship
management, employee efficiency, and security
and authentication; platform as a service (PaaS)
software in the nature of a database for compiling
data, customer data and customer interactions for
enabling marketers to plan, personalize, optimize
and customize communications with customers
throughout the marketing, sales, and service
lifecycle; platform as a service (PaaS) featuring

29 Id. at 49.
30 Id. at 92-93.
31 Id. at 110-11.
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computer software platforms for retrieving,
tracking, analyzing, testing, measuring and
managing data, customer data and customer
interactions in the fields of business, marketing,
advertising, brand development, sales, customer
service, cloud computing, customer information,
customer relationship management, employee
efficiency, and security and authentication;
platform as a service (PaaS) featuring computer
software platforms for enabling marketers to plan,
personalize, optimize, monitor, analyze and
measure customer interactions across channels and
devices; platform as a service (PaaS) featuring
computer software platforms for enabling
marketers to plan, personalize, optimize, monitor,
analyze and measure customer interactions across
social media, customer relationship
management (CRM) systems, point-of-sale
systems, web analytics, webposts, email and mobile
devices …, in International Class 42.
Opposition No. 91237941

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Reg. No. 5570865
issued September 25, 2018
with Sec. 2(f) claim as to
SALESFORCE32

The mark consists of the word
“SALESFORCE” in stylized
lettering, contained within a
cloud shape. Color is not
claimed as a feature of the
mark.

(excerpt)
… business consultancy services for others in
connection with customer engagement and
customer interactions on the Internet and other
media; advisory services relating to advertising,
marketing, sales and customer service; …
compilation and systemization of data and
information into computer databases in the field of
marketing, sales and customer service; …
sales promotion; … organizing and conducting
tradeshows in the fields of business, marketing,
advertising, brand development, sales, customer
service, cloud computing, data analytics, customer
information, customer relationship
management, employee efficiency, and software
development, in International Class 35.

32 Id. at 101-102.
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Reg. No. 5655950
issued January 15, 2019
with Sec. 2(f) claim as to
SALESFORCE33

The mark consists of the word
“SALESFORCE” in stylized
lettering, contained within a
cloud shape. Color is not
claimed as a feature of the
mark.

(excerpt)
Business education services, namely, conducting
classes, seminars, workshops and training in the
fields of business, marketing, advertising, brand
development, sales, customer service, cloud
computing, data analytics, customer information,
customer relationship management, and
employee efficiency; … publication of newspapers,
periodicals and books, and of instructional and
information materials in the nature of pamphlets,
brochures, manuals, informational flyers,
informational sheets and newsletters in the fields of
business, marketing, advertising, brand
development, sales, customer service, cloud
computing, data analytics, customer information,
customer relationship management, and
employee efficiency, other than for advertising
purposes, all in electronic form and on the
Internet;… arranging and conducting of
conferences, congresses, concerts and symposiums,
seminars, training courses, instructional and
lecture events, all for cultural or educational
purposes in the fields of business, marketing,
advertising, brand development, sales, customer
service, cloud computing, data analytics, customer
information, customer relationship
management, and employee efficiency; … in
International Class 41.

If we find that confusion is likely with the SALESFORCE marks, there is no need
for us to address likelihood of confusion with the other pleaded marks. See N. Face
Apparel Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1225 (TTAB 2015) (citing In
re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)).

33 Id. at 98-99.
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A. PRIORITY
Because Opposer’s pleaded registrations are of record34, and Applicant did not file
a counterclaim to cancel the pleaded registrations, priority in the opposition
proceeding is not at issue with respect to the marks, and goods and services, identified
in the registrations. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464,
1469 (TTAB 2016) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974)).
B. LIKELIHOOD OF CONFUSION BETWEEN SALESFORCE AND
YOUR WORKFORCE IS YOUR SALESFORCE MARKS
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and services. 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.”). Nevertheless, we must consider each relevant DuPont factor for which there
are arguments and evidence. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d
1797, 1800 (Fed. Cir. 2018) (“Not all of the DuPont factors are relevant to every case,
and only factors of significance to the particular mark need be considered.”) (quoting
In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)).

Similarity or Dissimilarity of the Goods
and Services, and Channels of Trade

34 16 TTABVUE.
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We begin with the similarity or dissimilarity of the respective goods and services,
and their channels of trade. We make our determination regarding the similarities
between the parties’ goods and services, and the channels of trade based on the goods
and services as they are identified in the application and registrations. Octocom Sys.
Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987). “Even if the goods and services in question are not identical, the
consuming public may perceive them as related enough to cause confusion about the
source or origin of the goods and services.” Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (citations omitted). “There can
be no rule that certain goods or services are per se related, such that there must be a
likelihood of confusion from the use of similar marks in relation thereto.” H.D. Lee
Co. v. Maidenform Inc., 87 USPQ2d 1715, 1723 (TTAB 2008).
The application and registrations themselves provide evidence of the relationship
between the goods and services. Hewlett-Packard Co. v. Packard Press Inc., 62
USPQ2d at 1005; Merrit Foods v. Associated Citrus Packers, Inc., 222 USPQ 255
(TTAB 1984). “Parties that choose to recite services in their trademark application
that exceed their actual services will be held to the broader scope of the application.”
Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1163. It is
sufficient for a finding of likelihood of confusion if relatedness is established for any
item encompassed by the identification of goods within a particular class in an
application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
Opposition No. 91237941

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986, 988 (CCPA 1981); The Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC,
2020 USPQ2d 10914, *14 (TTAB 2020).
Opposer contends that the parties offer essentially identical educational services
and related materials, because “Salesforce has promoted a wide variety of
professional educational programs under its SALESFORCE mark and has made
them available in a number of ways.” 35 As set forth above, Opposer has registered
the mark for:
Business education services, namely, conducting classes, seminars, workshops
and training in the fields of business, marketing, advertising, brand
development, sales, customer service, cloud computing, data analytics,
customer information, customer relationship management, and employee
efficiency; … publication of newspapers, periodicals and books, and of
instructional and information materials in the nature of pamphlets, brochures,
manuals, informational flyers, informational sheets and newsletters in the
fields of business, marketing, advertising, brand development, sales, customer
service, cloud computing, data analytics, customer information, customer
relationship management, and employee efficiency, other than for advertising
purposes, all in electronic form and on the Internet;… arranging and
conducting of conferences, congresses, concerts and symposiums, seminars,
training courses, instructional and lecture events, all for cultural or
educational purposes in the fields of business, marketing, advertising, brand
development, sales, customer service, cloud computing, data analytics,
customer information, customer relationship management, and employee
efficiency; … in International Class 41.

Applicant argues that Opposer’s services are “substantially different from
Applicant Wendell’s claimed fields of ‘networking, relationship building,
collaboration, leadership, management, education, sales, communication, corporate
and personal assessment and measurement, and professional and personal

35 43 TTABVUE 39.
Opposition No. 91237941

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development,’” and that Opposer’s online publications “were virtually all published
after Applicant’s date of first use in commerce” and “are only tangentially focused on
the topics covered by Applicant Wendell’s publications.”36
As already discussed, Opposer’s registrations confer priority, regardless of which
party had actual first use. See King Candy Co. v. Eunice King’s Kitchen, Inc., 182
USPQ at 110 (“Board must consider existing registrations of subsequent-user
opposers because ... [Trademark Act Section 2(d) provides that] an applicant can
register, unless his mark is likely to cause confusion with a mark ‘registered in the
Patent Office or . . . previously used . . .”). Moreover, as also set forth above, a finding
of likelihood of confusion does not require confusion between all of the identified goods
or services, a likelihood of confusion between any one item within a single class in the
identification is sufficient. See Tuxedo Monopoly, 209 USPQ at 988.
Applicant offers educational services in a variety of fields in her recitation of
services, including “relationship building” and “sales.” TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 1402.01(a) (2018) (“In general, commas should be
used in the identification to separate items within a particular category of goods or
services.”). We agree with Opposer that there is a clear overlap between the parties’
services, and that Applicant’s broadly worded educational services in the fields of
“relationship building” and “sales” encompass, and thus are legally identical to,
Opposer’s educational services in the fields of sales and a specific type of relationship
building, namely customer relationship management.

36 47 TTABVUE 42-43.
Opposition No. 91237941

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We also find Opposer’s online publication services are essentially identical to
Applicant’s traditional publications. For purposes of likelihood of confusion,
publications may be treated as essentially the same whether offered in print or
electronic formats, and the services of offering publications may be treated as
essentially the same whether those publications are offered in person, through the
mail, online, or via software. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d
1378, 78 USPQ2d 1944, 1947-1948 (Fed. Cir. 2006) (“[I]t was proper for the board to
ground its determination of relatedness in the fields for which the goods are created,
rather than the media format in which they are delivered.”); Hewlett-Packard Co. v.
Packard Press Inc., 62 USPQ2d at 1004 (“The ‘data and information processing’
description in the ITU [intent-to-use] application is very similar to HP’s registrations
covering consulting services, whether for data processing or for data processing
products. The ‘electronic transmission of data and documents via computer terminals’
description in the ITU application is very similar to HP’s registrations covering
facsimile machines, computers, and computer software. The ‘conversion from one
media form to another media’ description in the ITU application is similar to HP’s
registrations covering programs for information manipulation and apparatus for data
acquisition and processing.”). Accord In re Jobdiva, Inc., 843 F.3d 936, 121 USPQ2d
1122, 1126 (Fed. Cir. 2016) (“[W]ith modern technology, the line between services and
products sometimes blurs …[and] in today’s commercial context if a customer goes to
a company’s website and accesses the company’s software to conduct some type of
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business, the company may be rendering a service, even though the service utilizes
software.”).
While Opposer’s registration for educational and online publication services in the
fields of customer relationship management and sales is sufficient to find a likelihood
of confusion with Applicant’s educational services and publications in the field of
relationship building and sales, we also find that Applicant’s educational goods and
services in the field of relationship building and sales are related to the business and
computer services in the field of relationship building and sales in Opposer’s pleaded
registrations (Registration Nos. 2964712, 3141697, 3164978, 5551061, and 5570865).
Applicant’s choice to broadly word her services as offering seminars and workshops
in building relationships and sales means that, whether or not she actually does so,
her services could include seminars and workshops on business and computer
services for customer relationship management and sales, or offer the same
information provided by Opposer electronically through its automated business tools.
See Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1359 (TTAB
2014) (holding SHAPES for a variety of beauty salon, day spa, and health spa services
likely to cause confusion with SHAPE for magazines where the services are of the
type normally featured in the magazines). Further, Applicant’s educational goods and
services in the field of networking are related to the networking services in Opposer’s
pleaded registrations (Registration Nos. 4126473 and 5115047). The fact that the
goods and services are not classified in the same International Class is irrelevant.
See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018)
Opposition No. 91237941

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(“Classification is solely for the ‘convenience of Patent and Trademark Office
administration,’ and ‘is wholly irrelevant to the issue of registrability under section
1052(d)’”) (citations omitted). For these reasons, we find that the similarity of the
respective goods and services favors finding a likelihood of confusion.
While we make our determination based on the goods and services as identified in
the application and registrations, we note the record evidence demonstrates the
overlap in the subject matter of the parties’ goods and services on improving sales
through relationships. Applicant testified that she addresses sales-related topics such
as identifying sales leads, creating and managing relationships with customers to
generate sales, and training sales teams to build relationships and leverage
relationships with customers.37 Applicant also advertises her services as follows:

37 19 TTABVUE 48-51.
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Figure 1 Applicant’s webpage excerpt38

Similarly, Opposer offers online tools to automate collection of sales-related
information, and the advertisement below shows SALESFORCE software with tabs
to collect information on “campaigns,” “leads,” accounts,” contacts,” “reports,”
‘calendar” and “analytics:”

38 19 TTABVUE 162.
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Figure 2 Opposer’s website excerpt showing software with CRM functions39
Opposer also streams educational webinars on the use of automated CRM tools to
improve sales, and introduced a sample list of such webinars offered through
Opposer’s website, excerpted below:

39 22 TTABVUE 40.suggest adding a reminder that CRM means customer relationship mgmt
Opposition No. 91237941

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Figure 3 excerpt from Opposer listing of educational webinars40
In addition to the similarity of the respective goods and services, the likelihood of
confusion determination assesses the channels of trade. In re Detroit Athletic Co., 128
USPQ2d at 1052 (Fed. Cir. 2018) (“The third DuPont factor—like the second factor—
must be evaluated with an eye toward the channels specified in the application and
registration, not those as they exist in the real world.”). Because the goods and
services described in the application and the cited registration are in part legally
identical, we presume that the channels of trade and classes of purchasers are the
same for those legally identical services. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
1745 (TTAB 2018). This factor also favors finding a likelihood of confusion.
Sales Conditions
The fourth DuPont factor considers “[t]he conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont,

40 27 TTABVUE 20 (exhibit to Bennetti declaration). Because this exhibit was marked
confidential, we do not include any of the access or registration information, but merely
extract the title of the webinars.
Opposition No. 91237941

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177 USPQ at 567. The record indicates that the decision to become a customer of
either Opposer or Applicant is the result of a business decision to improve sales
performance, and not a “buy” decision made on impulse.41 Prospective purchasers
likely exercise an average level of care in purchasing the parties’ goods and services.
However, Applicant’s goods and services may overlap with Opposer’s services. In
these circumstances, even sophisticated business purchasers exercising care in their
purchases may be confused by highly similar marks. See, e.g., In re Toshiba Med. Sys.
Corp., 91 USPQ2d 1266, 1273-74 (TTAB 2009) (even sophisticated hospital
purchasers could be confused by marks TITAN and VANTAGE TITAN on ultrasound
and MRI diagnostic apparatus, respectively). Moreover, to the extent Opposer’s and
Applicant’s marks include the identical term SALESFORCE, “careful purchasers who
do notice the difference in the marks will not necessarily conclude that there are
different sources for the goods [and services], but will see the marks as variations of
each other, pointing to a single source.” In re Hitachi High-Technologies Corp., 109
USPQ2d 1769, 1774 (TTAB 2014). Accordingly, we find that this factor is neutral.
Strength of Opposer’s SALESFORCE Mark
The point most ardently disputed by the parties is the strength of Opposer’s
pleaded SALESFORCE mark and the scope of protection which the mark should be
accorded. See In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686

41 We disagree that the case cited by Applicant holds that the court relied heavily on the
presence of sophisticated purchasers when reversing the Board’s finding of likelihood of
confusion. In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985). While this factor
among others was found to support reversal, the decision identifies the “salient feature of the
case” as the registrant’s consent to Applicant’s use and registration of the mark. Id. at 970.
Opposition No. 91237941

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(Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).”); The Brooklyn
Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d at *16 (“We consider the
strength of Plaintiff’s marks in order to evaluate the scope of protection to which they
are entitled.”).
To be clear, this discussion does not involve the validity of Opposer’s pleaded
registrations, which by statute are prima facie evidence of the validity of the
registered marks. Trademark Act Section 7(b), 15 U.S.C. § 1057(b). If Applicant
possessed evidence that the pleaded registrations were invalid as generic, merely
descriptive, or lacking acquired distinctiveness, Applicant’s course would be to seek
cancellation through a counterclaim.42 Because Applicant did not do so, Opposer’s
registered marks are presumed to be valid.43 However, six of Opposer’s eight pleaded
SALESFORCE registrations listed above issued pursuant to a claim of acquired
distinctiveness. The mark SALESFORCE is accordingly presumed descriptive of the
goods or services recited in these six registrations. See Cold War Museum, Inc. v. Cold
War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009)

42 Those pleaded SALESFORCE registrations which issued more than five years ago would
not be subject to cancellation on the grounds of mere descriptiveness or lack of acquired
distinctiveness. Trademark Act Section 14(3), 15 U.S.C. § 1064(3).
43 With respect to Applicant’s contention (47 TTABVUE 6) that “Opposer would have the
Board believe that the word ‘salesforce’ has been eliminated from the English language,” we
note that all applicants for federal registrations seek an exclusive right to use a term on the
goods and/or services listed in their application, and that this opposition involves not
Applicant’s right to use terms that appear in the English language but Applicant’s effort to
register such terms on certain goods and services and so obtain her own exclusive rights to a
mark.
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(“Where an applicant seeks registration on the basis of Section 2(f), the mark’s
descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during
prosecution presumes that the mark is descriptive.”); Yamaha Int’l Corp. v. Hoshino
Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (“Where, as here,
an applicant seeks a registration based on acquired distinctiveness under Section 2(f),
the statute accepts a lack of inherent distinctiveness as an established fact.”).
The term SALESFORCE which appears in both marks is a compound phrase
whose component terms SALES and FORCE are ordinary words with the following
relevant definitions:44
SALES adjective
: of, relating to, or used in selling

FORCE noun
: a body of persons or things available for a particular end

While the term SALESFORCE as one word does not appear in the dictionary,
apart from Applicant’s two registrations which issued without a claim of acquired
distinctiveness, there is no evidence that combining the two words makes the term
inherently distinctive as a mark for goods and services for use by those businesses
interested in relationship building and sales. The courts and the Board have found
that a descriptive term, whether shown as one word or two, will be perceived as
descriptive unless the combination itself engenders a non-descriptive impression. See

44 The definitions were accessed from the online dictionary www.merriam-webster.com on
December 6, 2020. The Board may take judicial notice of dictionary definitions, including
online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227,
1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
Opposition No. 91237941

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In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978) (GASBADGE
at least merely descriptive for “gas monitoring badges”); In re Petroglyph Games Inc.,
91 USPQ2d 1332, 1341 (TTAB 2009) (“because the combination of the terms does not
result in a composite [BATTLECAM] that alters the meaning of either of the
elements, refusal on the ground of descriptiveness is appropriate”), cited with
approval in Dalton v. Honda Motor Co., 425 F. App’x 886, 893 (Fed. Cir. 2011) (not
precedential).
A term that identifies a group to whom the applicant directs its goods or services
has been held to be merely descriptive. See In re Planalytics, Inc., 70 USPQ2d 1453
(TTAB 2004) (GASBUYER merely descriptive of risk management services in the
field of pricing and purchasing natural gas); Hunter Publ’g Co. v. Caulfield Publ’g
Ltd., 1 USPQ2d 1996 (TTAB 1986) (SYSTEMS USER merely descriptive of a trade
journal directed toward users of large data processing systems). Whether a mark is
merely descriptive is “evaluated ‘in relation to the particular goods [or services] for
which registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods [or
services] because of the manner of its use or intended use.”‘ In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012)
(quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007)).
We find no significant difference between SALESFORCE and SALES FORCE.
Because his report does not address the significance of SALESFORCE and SALES
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FORCE to the consumer of educational services featuring customer relationship
management and sales, we are not persuaded by the opinion of Opposer’s linguistic
expert, Professor John Hawkins, that “The single-word and the two-word terms are
quite distinct in current usage, therefore, and are not interchangeable.”45 This
opinion is based on searches of the Corpus of Contemporary American English
(COCA) for general usage of the terms SALES FORCE and SALESFORCE in the
English language from 1990-2017 in “different genres of English, spoken, fiction,
popular magazines, newspapers and academic texts” and searches of the News on the
Web (NOW) corpus for general usage of the terms from 2010 to the present “from
web-based newspapers and magazines,” and the results showing that the term
SALESFORCE largely referred to Opposer and the term SALES FORCE largely
referred to those who sell.46 Because these searches occurred without reference to the
goods and services of either party, or the area in which they overlap (educational
services featuring customer relationship management and sales), these search
results and the conclusions drawn from them largely are irrelevant to our inquiry.
In finding that SALES FORCE and SALESFORCE are interchangeable, we
follow Board precedent, supra, finding that the presence or absence of a space
between words generally does not affect the perception of the words as having their
usual meaning. We note the corroborating testimony of Applicant and Applicant’s
witness Jon McGarity, a sales executive, that the terms SALES FORCE and

45 23 TTABVUE 7.
46 Id. at 13-21.
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SALESFORCE are used interchangeably by sales professionals, and the documentary
evidence provided by Applicant indicating that “salesforce” as one word is used in
place of the two word term “sales force.”47
This finding leads to the conclusion that the term SALESFORCE is not
inherently distinctive as applied to educational services featuring customer
relationship management and sales. However, this does not end our enquiry as to the
strength of Opposer’s registered SALESFORCE marks. As set forth above, we
address both the conceptual strength of a mark, shown here to be weak as applied to
the subject goods and services, and commercial strength, which may result in a
conceptually weak term becoming commercially strong or even famous as a source
indicator for specific goods or services. See Bose Corp. v. QSC Audio Prods., Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002) (“[The marks ACOUSTIC WAVE
and WAVE for sound equipment] are famous and thus entitled to broad protection”);
Gen. Mills, Inc. v. Gen. Mills IP Holdings II, LLC, 100 USPQ2d 1584, 1587 (TTAB
2011) (“But even marks [like TOTAL for cereal] that enter the market as conceptually
weak may attain fame and, consequently, the scope of protection afforded famous
marks.”); Hard Rock Cafe Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1513 (TTAB
2000) (“Accordingly, whatever the suggestive roots of the mark [HARD ROCK CAFÉ],
it must now be considered a strong mark which is deserving of a wide scope of

47 33 TTABVUE; 34-41 TTABVUE. Opposer’s rebuttal evidence contends that the
documentary evidence of use of the unitary term “salesforce” is exceptional, and outweighed
by the number of references to “salesforce” which refer to Opposer. As discussed above, a
conceptually weak mark may become commercially strong to the point of fame for the
purposes of likelihood of confusion. However, the fame of a mark as to specified goods and
services does not mean that the descriptive aspect of the mark is eradicated.
Opposition No. 91237941

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protection.”); Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1622
(TTAB 1989) (“Moreover, to the extent that the mark SUAVE may be perceived as
suggestive when applied to opposer’s [hair dressing, hair spray and creme rinse and
dandruff control shampoo], we believe that such suggestiveness, if any, is slight and
does not diminish the fame of the mark.”).
Here, Opposer contends that its industry leadership, promotional efforts, sales
success, and consumer recognition have made the mark SALESFORCE not just
commercially strong but famous in connection with its goods and services, and so
entitled to a broad scope of legal protection. See Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005) (strong marks “enjoy wide latitude of legal protection” and are “more
attractive as targets for would-be copyists”). Because a finding of fame has a heavy
impact in a likelihood of confusion analysis, we turn to the evidence of the fame of
Opposer’s SALESFORCE mark. Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000) (“The fifth DuPont factor, fame of the prior mark, when
present, plays a “dominant” role in the process of balancing the DuPont factors.”).
In addition to determining whether fame of the SALESFORCE mark exists, we
assess its scope, because in the likelihood of confusion context, fame “varies along a
spectrum from very strong to very weak.” Midwestern Pet Foods Inc. v. Societe des
Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). Fame
for likelihood of confusion purposes arises “as long as a significant portion of the
relevant consuming public … recognizes the mark as a source indicator,” Palm Bay
Opposition No. 91237941

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Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1694,
and may be measured indirectly by the volume of sales of the goods or services sold
under the mark, advertising expenditures, and other factors such as length of time of
use of the mark; widespread critical assessments; notice by independent sources of
the products identified by the marks; and the general reputation of the products and
services. Bose Corp. v. QSC Audio Prods., Inc., 63 USPQ2d at 1308. As shown below,
the record includes all these indicia of fame.
In support of its claim that SALESFORCE is famous, Opposer submits the
declaration of Matt Bennetti, Opposer’s Senior Director of Strategy and Operations
and the expert report of software analyst Denis Pombriant. Opposer also submits the
expert report of Professor John Hawkins, who assessed “to what extent the term
SALESFORCE in current American English usage is now associated with the
company, Salesforce,” finding “an extremely strong association in the public’s mind
between the single-word SALESFORCE and the Salesforce company, as reflected in
newspapers and magazines since 2010.”48 In addition, Opposer submits its pleaded
registrations, pages from its website, its SEC filings, samples of its promotional
efforts across social media platforms, and examples of its efforts to police its mark
through oppositions and UDRP (Uniform Domain-Name Dispute-Resolution Policy)
proceedings.
The testimony of Opposer’s officer Matt Bennetti avers that Opposer launched its
Salesforce.com website in 1999 with on-demand CRM software; that “[f]rom the

48 23 TTABVUE 5, 19.
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company’s beginning, [Opposer] has used SALESFORCE or SALESFORCE.COM to
promote its full range of products and services;”49 that Opposer “is one of the best
known companies in the world providing software and services to businesses. Its
software and services help businesses of all sizes improve their marketing, sales and
customer support, including through the use of customer relationship management
(CRM) tools. [Opposer] provides sales and marketing professionals, in particular, a
variety of solutions to help with sales-team collaboration, lead generation, customer
engagement and sales growth;” that Opposer “has spent tens of billions of dollars
marketing and selling its products and services under its flagship SALESFORCE
brand;” that “[e]ach of Salesforce’s products and services has been promoted with
reference to the SALESFORCE brand;” that since 1999, Opposer “has enjoyed rapid
and remarkable commercial success, as evidenced by its annual revenue, which has
grown significantly and now is greater than $10 billion; that Opposer’s “sales and
marketing expenses were over $6 billion for fiscal year 2019;” that “[a]s a result of
the company’s marketing and sales efforts, and its remarkable commercial success,
SALESFORCE has become one of the most powerful and most recognized brands in

49 To the extent Opposer intends this testimony to prove that SALESFORCE is a house mark,
it would have been better to specify when Opposer changed from using SALESFORCE.COM
to SALESFORCE as its house mark for “its full range of products and services.” Amica
Mutual Ins. Co. v. R. H. Cosmetics Corp., 204 USPQ 155, 161 (TTAB 1979) (“[A] house mark
serves as an umbrella for all of the product marks and merchandise emanating from a single
source.”). We do not regard the terms SALESFORCE and SALESFORCE.COM as
interchangeable, cf. USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729 (2020)
(rejecting per se rule that when a generic term is combined with a generic top-level domain
like “.com,” the resulting combination is generic.). However, we find the statement probative
of the fact that Opposer has used its SALESFORCE mark since its launch in 1999, even if it
has not always been used on Opposer’s full range of products.
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the fields of technology and sales and marketing;” and that Opposer currently has
over 150,000 customers, including Ford, Toyota, Coca Cola, Adidas, Burberry,
Farmers Insurance, American Express, NBC Universal, Spotify, Facebook and
Amazon; that the number of “seats” or licenses paid for by Opposer’s customers range
from one to hundreds of thousands, and the total number of licenses is in the
millions.50 Mr. Bennetti testified that in addition to advertising across electronic
media, the advertisement below appeared on the front page of both The New York
Times and The Wall Street Journal multiple times:51

Figure 4 SALESFORCE #1 CRM in 2016 advertisement

50 27 TTABVUE 2-5, 9-10.
51 27 TTABVUE 9.
Opposition No. 91237941

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Figure 5 SALESFORCE #1 CRM in 2017 advertisement
Mr. Bennetti also testified that Opposer has advertised its SALESFORCE mark
on street signs and bus stops:52

Figure 6 SALESFORCE #1 CRM billboard53

52 27 TTABVUE 11.
53 27 TTABVUE 58.
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Figure 7 SALESFORCE #1 CRM bus stop advertisement54
Mr. Bennetti also testified as to Opposer’s efforts to protect its mark and
recognition of the mark, averring that in addition to its SALESFORCE trademark
registrations Opposer has registered over 700 Internet domain names including the
name “salesforce;” that Opposer regularly enforces its trademark rights by sending
demand letters to infringers, submitting takedown requests to Internet service
providers and to remove infringing content, filing arbitration complaints against
infringing domain names, and opposing or cancelling applications and registrations
of infringing trademarks; that the brand consultancy Interbrand ranked
SALESFORCE as one of the “Best Global Brands;” and that the brandZ brand equity
database has valued the SALESFORCE mark “at over $14 billion, above the value of

54 27 TTABVUE 65.
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other well-known U.S. brands such as Costco, Pampers, Colgate, and Bank of
America.”55
In addition to the evidence of Opposer’s use over 20 years, high sales volume and
advertising expenditures, and efforts to protect its mark, the record includes evidence
of recognition of the SALESFORCE mark for sales automation and CRM. In his
report, expert Denis Pombriant testifies that: he is an independent software industry
analyst; writes regularly for CRM Magazine, DestinationCRM.com., CRMBuyer.com,
The Enterprise Irregulars (blog), and Diginomica.com; is the author of two books
about business-to-business software; and since 2000, has followed closely the
evolution of the software as a service (SAAS) and cloud computing markets from their
beginnings in sales force automation and CRM to use of social media in CRM,
application development and platforms, artificial intelligence and machine learning,
and industry specific CRM solutions for vertical markets, including interviewing
hundreds of users and purchasers of business to business software, following the
marketing of SAAS or cloud software, and attending about 100 conferences of the
providers of SAAS and cloud software over the last 20 years. 56 Applicant does not
contest Mr. Pombriant’s qualifications as an expert in the areas of CRM, SAAS, and
cloud computing. 57

55 28 TTABVUE 9, 13-16.
56 24 TTABVUE 4-5.
57 We do not regard as valid Applicant’s criticism (47 TTABVUE 38) that Mr. Pombriant is
“inherently biased” based on his economic dependence on Opposer as a subject for his writing.
The record as a whole corroborates that Opposer is a newsworthy subject in the CRM field.
Opposition No. 91237941

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Mr. Pombriant has written about Opposer since 2000, and his report includes the
following opinions:
The SALESFORCE brand is extremely well-known and is, according to reports
that I regularly rely upon, the leading business-to-business software of
customer relationship management, customers service and marketing
automation and analysis software provider displacing other well-known
software brands such as Microsoft, IBM, Oracle, SAP and Adobe. While
initially the users of such offerings were medium and large scale businesses,
use of such software has spread, with its customers expanding beyond medium
and large scale businesses to become popular among small businesses.58

Using the one-word SALESFORCE as Wendell does as opposed to “sales force”
exacerbates the possible confusion between her activities and those of the
company, Salesforce, especially in light of her emphatic discussion of
“relationships” with customers throughout her materials and presentations.
Given Salesforce’s well-recognized business focus on Customer Relationship
Management (the company’s stock ticker symbol is CRM, for example), this is
a serious concern.59

As a seasoned observer of the business-to-business software industry, I believe
any use of ‘Salesforce’ as part of a trademark in the fields of sales, marketing
and customer relationships outside of the Salesforce’s own established
branding is going to be confusing to the users and purchasers of such
software.”60

We do not, of course, adopt Mr. Pombriant’s opinion on the likelihood of confusion,
but we find probative those parts of his opinion finding that Opposer’s mark
SALESFORCE is famous for business-to-business software of customer relationship
management, that Opposer’s SALESFORCE mark designates the leading CRM
software in the industry, and that the reknown of Salesforce for CRM equals that of
well-known software providers like Microsoft, Adobe, and Oracle.

58 24 TTABVUE 6.
59 24 TTABVUE 11.
60 24 TTABVUE 6, 11.
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In assessing the fame of Opposer’s SALESFORCE mark we also consider that
Applicant was aware of Opposer as a CRM company, testifying that she had
purchased CRM software both from Opposer and other vendors:
Q.·What is your understanding of what Salesforce does?
A.·Salesforce.com is a CRM company, a customer relationship
management.·They have a technology tool to help sales forces manage their
-- and track their customers.61

Based on the foregoing evidence, we find that Opposer’s pleaded mark
SALESFORCE has a significant degree of fame in connection with sales automation
and CRM, and warrants a high level of protection. This factor weighs heavily in favor
of finding a likelihood of confusion.
Similarity or Dissimilarity of the SALESFORCE and YOUR
WORKFORCE IS YOUR SALESFORCE Marks
We turn to the similarity or dissimilarity of the marks. DuPont, 177 USPQ at 567.
Where, as in this case, marks would appear on legally identical goods and services,
the degree of similarity necessary to support a conclusion of likely confusion declines.
Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992). Further, “as a mark’s fame increases, the Act’s tolerance for
similarities in competing marks falls.” Kenner Parker Toys Inc. v. Rose Art Indus.,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). We bear these two
principles in mind as we compare the parties’ marks.
We consider the similarity or dissimilarity of the marks SALESFORCE and
YOUR WORKFORCE IS YOUR SALESFORCE in their entireties as to appearance,

61 19 TTABVUE 88.
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sound, connotation, and commercial impression. See Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. “Similarity in any
one of these elements may be sufficient to find the marks confusingly similar.” In re
Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., (No. 18–
2236) (Fed. Cir. 2019) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
Opposer has registered the SALESFORCE mark in both standard characters and
in stylized form with the background design of a cloud . We find that the
cloud design, while somewhat suggestive of cloud computing, is not such an unusual
or detailed element as to be sufficiently distinctive to create a commercial impression
separate from the term SALESFORCE. See In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997) (“the [diamond-shaped carrier] design is an
ordinary geometric shape that serves as a background for the word mark); see also In
re Anton/Bauer Inc., 7 USPQ2d 1380, 1383 (TTAB 1988) (holding parallelogram
designs used as background for word marks not inherently distinctive; evidence of
record insufficient to establish acquired distinctiveness pursuant to Section 2(f)); In
re Kerr-McGee Corp., 190 USPQ 204, 207 (TTAB 1976) (holding escutcheon design
used as a frame or border for words not inherently distinctive; evidence of record
insufficient to establish acquired distinctiveness pursuant to Section 2(f)). Similarly,
the minimal lettering stylization employed by Opposer, with the literal term
SALESFORCE appearing in script and in lower case letters with an italicized letter
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“f” , does not create a commercial impression separate from the term
SALESFORCE. Moreover, Applicant’s mark is in standard characters, and so may be
displayed in any font style, size, or color, including the script in which Opposer’s mark
is stylized. Trademark Rule 2.52(a); In re Viterra Inc., 101 USPQ2d at 1909; In re
Davia, 110 USPQ2d at 1814. Because we find that neither the background design nor
the stylized lettering contribute greatly to the overall commercial impression of
Opposer’s mark, we treat the term SALESFORCE as the dominant feature of
Opposer’s pleaded marks.
Opposer’s SALESFORCE mark is wholly incorporated in Applicant’s mark YOUR
WORKFORCE IS YOUR SALESFORCE. “Marks have frequently been found to be
similar where one mark incorporates the entirety of another mark, as is the case
here.” TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115 (TTAB 2019); see
Stone Lion Capital Partners v. Lion Capital LLP, 110 USPQ2d at 1161 (affirming
Board’s finding that applicant's mark STONE LION CAPITAL incorporated the
entirety of the registered marks LION CAPITAL and LION, and that the noun LION
was the dominant part of both parties’ marks); Double Coin Holdings Ltd. v. Tru Dev.,
2019 USPQ2d 377409 *6, *7 (TTAB 2019) (“Tru’s junior mark, ROAD WARRIOR
contains Double Coin’s entire mark WARRIOR”). Because they share the identical
term SALESFORCE, the parties’ marks are similar in commercial impression,
appearance and pronunciation as to this term.
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We turn to the differences between the marks based on Applicant’s addition of
four prefatory words to incorporate Opposer’s famous mark in the slogan or
exhortation YOUR WORKFORCE IS YOUR SALESFORCE. Applicant contends
that, in addition to changing the look and sound of the mark, the addition changes
the commercial impression of the mark. Specifically, Applicant contends:
Opposer’s marks make no mention of a “workforce” or its
relationship to a “salesforce.” Moreover, because
“salesforce” is juxtaposed with “workforce,” Applicant
Wendell’s mark causes the consumer to think of the word
“salesforce” not in relation to Opposer’s mark, but rather
as a complement to the word “workforce.” This eliminates
any possibility that the mark might be referring to
anything other than an actual salesforce. The introduction
to the words “workforce” and “salesforce” with the pronoun
“your” further suggests to the consumer the generic
meaning of both terms as opposed to a reference to
Opposer.62
We are not convinced. Based on the fame of Opposer’s mark in connection with
their overlapping goods and services, we find that Applicant’s mark YOUR
WORKFORCE IS YOUR SALESFORCE could be viewed as a direct reference to
Opposer. That is, YOUR WORKFORCE IS YOUR SALESFORCE could be perceived
as an exhortation to use employees (YOUR WORKFORCE) to track customer
interaction, pool customer information, and align the organization to boost revenue
in the same way that Opposer does with automated tools (IS YOUR SALESFORCE).
In sum, we do not find that the addition of the four words changes the commercial
impression of SALESFORCE as made famous by Opposer for sales automation and

62 47 TTABVUE 37.
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CRM, including educational services featuring customer relationship management
and sales.
Under the first DuPont factor, we find that the appearance, sound, meaning, and
overall commercial impression of the marks SALESFORCE and YOUR
WORKFORCE IS YOUR SALESFORCE are sufficiently similar to render confusion
likely.
The Nature and Extent of Any Actual Confusion
“Actual confusion is entitled to great weight but only if properly proven.” Georgia-
Pac. Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 701 (CCPA 1980).
“While evidence of actual confusion factors into the DuPont analysis, the test under
§ 1052(d) is likelihood of confusion, not actual confusion [and] a showing of actual
confusion is not necessary to establish a likelihood of confusion.” Herbko Int’l., Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002). “The
absence of any reported instances of confusion is meaningful only if the record
indicates appreciable and continuous use by [defendant] … of its mark for a
significant period of time in the same markets as those served by [plaintiff] … under
its mark[].” Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660
(TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011). See also Old
Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1546 (Fed Cir.
1992) (Board erred in discounting absence of actual confusion during 18 years of
concurrent use in overlapping geographic areas).
Applicant submits testimony averring that the marks have co-existed since 2014
without any instances of actual confusion, and contends this fact should weigh
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heavily in our analysis.63 Applicant points out that for the past five years she has
earned $100,000 in annual revenue from goods and services under the mark, and her
“products and services have been marketed using direct marketing, social media,
public speaking and direct sales,” and “this amount of business” provided the
necessary opportunity for confusion to arise.64
Without impugning Applicant’s success, we disagree that the record demonstrates
a significant opportunity for confusion to have occurred. See Barbara’s Bakery Inc. v.
Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (where the respective marks
coexisted in the marketplace for at least nine years, absence of actual confusion
nonetheless deemed “of little probative value” because of the absence of a significant
opportunity for such confusion to occur, given “the minimal scope of applicant’s actual
use of her mark in the marketplace”). Applicant testified that over the course of a
year Applicant offers five to fifteen keynote addresses, two to five programs, three to
five executive retreats, and a maximum of twelve team intensive training sessions
under her YOUR WORKFORCE IS YOUR SALESFORCE mark.65 Applicant has no
employees or board of directors, but employs contractors for design or project
management on a project basis.66 Applicant does not use television or radio
advertisements, billboards, online advertising, search engine advertising, or press
releases to advertise her goods and services but relies on her website, word of mouth,

63 32 TTABVUE 5 (Wendel declaration); 47 TTABVUE 6, 33, 40-41 (brief).
64 19 TTABVUE 153 154 (Opposer’s Notice of Reliance); 47 TTABVUE 41 (brief).
65 19 TTABVUE 15-16, 23-26, 30-33.
66 19 TTABVUE 36-38.
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direct sales through her own networking efforts, email campaigns, and one direct
mail effort.67 This evidence makes clear that Applicant’s actual customers are in the
hundreds, at most, and we have no concrete information on the numbers of potential
customers that have been exposed to Applicant’s promotion of her YOUR
WORKFORCE IS YOUR SALESFORCE publications and services. See Performance
Open Wheel Racing, Inc. v. U.S. Auto Club Inc., 2019 USPQ2d 208901, *9 (TTAB
2019) (“If Applicant is going to submit testimony/evidence about the pervasiveness of
its social media, then Applicant should provide an explanation about how it is
probative.”). Based on the record, we find that the lack of evidence of actual confusion
is a neutral factor in our likelihood of confusion analysis.
V. CONCLUSION
The goods and services of the two parties as identified in their application and
pleaded registrations are in part identical, and Opposer’s pleaded SALESFORCE
mark is famous in connection with sales automation and CRM, including the
educational services featuring customer relationship management and sales offered
by both parties. Where the goods and services are identical, the degree of similarity
between the marks declines, and a famous mark is entitled to a wide latitude in
protection. In these circumstances, we find Applicant’s addition of prefatory words to
Opposer’s famous SALESFORCE mark is insufficient to create a different commercial
impression or avoid a likelihood of confusion. On balance, and taking into account the
totality of the evidence of record with respect to Opposer’s registered SALESFORCE

67 19 TTABVUE 51-52.
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marks, we find that Opposer has proven a likelihood of confusion with Applicant’s
mark YOUR WORKFORCE IS YOUR SALESFORCE.
Decision: The notice of opposition is sustained.