If U.S. Trademark Trial and Appeal Board rulings are any indication, the “force” is apparently with those who invest substantial sums of money into advertising and promoting their brand names.
In a recent decision before the TTAB, Salesforce.com Inc. was successful in preventing Edataforce Consulting, LLC from asserting its rights in and to the mark EDATAFORCE for registration on the Principal Register. One of the influencing factors supporting judgment in favor of Salesforce.com was its substantial investment in the marketing and advertising of its pleaded family of “FORCE” marks and corresponding sales associated with the subject marks.
In the consolidated case, Salesforce.com, Inc. v. Edataforce Consulting, LLC, Salesforce.com sought to cancel an existing registration of the mark Edataforce for “computer software development and computer program development for others” in International Class 42 as well as opposed Edataforce’s application for 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.
In support of its case, Saleforce.com had relied on the following trademarks: salesforce.com, salesforce, dreamforce, cloudforce, financialforce, visualforce, mirrorforce, successforce, sforce, and force.com, all used in relation with various computer software goods and related services. In ruling that the Salesforce trademarks constitute a “family” of trademarks that are strong for likelihood of confusion purposes, the Board noted that Salesforce.com had begun widely marketing and advertising its services under its family of “force” marks at least as early as 2005. Furthermore, Saleforce.com submitted testimony that supported its contention that it consistently had invested vast sums of money into various advertising, events, and partnership education related to its “force” marks, that in sum, creative exposure and recognition of common ownership among the relevant consuming public.
The Board went on to state in its decision, that:
…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 Saleforce’s strong “force” family of marks, it is likely to be mistaken as a member of the family and thus cause confusion.
Trademark attorney notes: in cases where an Opposer can show substantial sales and marketing figures, it seems that the Board is more likely to automatically conclude that the pleaded trademark is “strong” for purposes of a likelihood of confusion analysis. When faced with a trademark opposition, applicants would be wise to offer consumer survey testimony to rebut this assumption, as it appears to be often made in a conclusory manner. This is particularly true in oppositions where there is a “family” of marks and the likelihood of confusion analysis is not considered on a trademark-by-trademark basis.