ESTTA Tracking number:
`
`ESTTA1399738
`
`Filing date:
`
`12/04/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`92084491
`
`Party
`
`Correspondence
`address
`
`Plaintiff
`Cloudforce LLC
`
`ERIC J. VON VORYS
`SHULMAN ROGERS, P.A.
`12505 PARK POTOMAC AVENUE
`SIXTH FLOOR
`POTOMAC, MD 20854
`UNITED STATES
`Primary email: evonvorys@shulmanrogers.com
`Secondary email(s): bhawes@shulmanrogers.com
`301-230-5242
`
`Submission
`
`Motion for Summary Judgment
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`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
`
`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 06/07/2025
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Eric J. von Vorys
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`evonvorys@shulmanrogers.com
`
`/EricJvonVorys/
`
`12/04/2024
`
`Mot for SJ 12-4-24.PDF(231858 bytes )
`Memo Points Auth 12-4-24.pdf(3179673 bytes )
`Ex 1 Eldien Aff 12-4-24.pdf(2357897 bytes )
`Ex 2 - Pt 1 Regs 12-4-24.PDF(6210918 bytes )
`Ex 2 - Pt 2 Regs 12-4-24.PDF(5522546 bytes )
`Ex 2 - Pt 3 Regs 12-4-24.PDF(4798302 bytes )
`Ex 2 - Pt 4 Regs 12-4-24.PDF(6071223 bytes )
`Ex 3 Resp SoU 12-4-24.pdf(1378973 bytes )
`Ex 4 Pet Spec 12-4-24.pdf(624604 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CLoubFoRcELIGSSS~S~Se
`
`Petitioner,
`
`V.
`CLOUDFLARE,INC.,
`
`Cancellation No. 92084491
`
`:
`.
`
`:
`Respondent.
`aicicancex
`
`PETITIONER’S MOTION FOR SUMMARY JUDGMENT
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`Petitioner Cloudforce LLC, by and through counsel, hereby movesthe Board for an order
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`pursuant to Fed. R. Civ. P. 56 granting summary judgmentin its favor on the groundsthat: (i) no
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`genuine issue as to any material fact exists in the captioned proceeding, (ii) Petitioner has
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`priority use of its CLOUDFORCEmark,and (iii) the marksat issue are confusingly similar as a
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`matter of law.
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`This motion is based on the pleadings, including Respondent’s Answer,Petitioner’s
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`application, the Affidavit of Heba Eldien and exhibits thereto, and Petitioner’s accompanying
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`memorandum of law.
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`December4, 2024
`
`Respectfully submitted,
`
`SHULMAN ROGERS, P.A.
`
`
`
`12505 Park Potomac Avenue — Third Floor
`Potomac, Maryland 20854
`Tel.: (301) 230-5242
`Fax: (301) 230-2891
`Attorneys for Petitioner
`
`

`

`Certificate of Service
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`It is hereby certified that a true and complete copy ofthe foregoing Petitioner’s Motion
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`for Summary Judgment and the accompanying Memorandum ofPoints and Authorities in
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`Support of Petitioner’s Motion for Summary Judgment and Exhibits 1 through 4 thereto were
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`served upon the attorney for Respondent via emailto:
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`Courtney R. Blackwell, Esq.
`Blue Water Law,P.C.
`520 Broadway, 2nd Floor
`Santa Monica, CA 90401
`
`courtney(@bluewater.law
`tom(@bluewater.law
`
`On this 4th day of December, 2024.
`
`Eric J Won/Vorys
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CLOUDFORCELLC,=—™:
`
`Petitioner,
`
`V.
`CLOUDFLARE,INC.,
`
`Cancellation No. 92084491
`
`|
`:
`
`:
`Respondent.
`aak otieas caetSiRai,XxX
`
`MEMORANDUMOFPOINTS AND AUTHORITIES IN SUPPORT OF
`PETITIONER’S MOTION FOR SUMMARY JUDGMENT
`
`Petitioner Cloudforce LLC, by and through counsel, hereby submits this Memorandum in
`
`Support of its Motion for Summary Judgment on its Cancellation Proceeding against trademark
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`Registration No. 7,300,716 for the mark CLOUDFORCE ONE,owned by RespondentCloudflare,
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`Inc.
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`I,
`
`INTRODUCTION
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`Petitioner moves to cancel Respondent’s registered trademark for CLOUDFORCE ONE
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`covering “computer network security consultancy.” Petitioner is being damaged by Respondent’s
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`registered trademark because the USPTO has refused registration of Petitioner’s pending
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`trademark application for CLOUDFORCE under Section 2(d) of the Trademark Act due to
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`Respondent’s registration of CLOUDFORCE ONE.
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`In order to succeed on its Motion for
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`Summary Judgment, Petitioner must prove that it has standing and that there are valid grounds
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`why Respondent’s registration should not continue to be registered. See e.g., Cunningham v. Laser
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`Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000) (“The party seeking cancellation must prove two
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`

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`elements:
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`(1) that
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`it has standing; and (2) that
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`there are valid grounds for canceling the
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`registration.”).
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`This Motion for Summary Judgmentis based on: (i) Petitioner’s priority of use ofits
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`CLOUDFORCEmark in commerceand(ii) a likelihood of confusion between Petitioner’s service
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`mark CLOUDFORCE(Ser. No. 98/399919) and Respondent’s service mark CLOUDFORCE
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`ONE(Reg. No. 7,300,716) both marks used in connection with competitive computer consulting
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`services. As a direct result, Respondent’s CLOUDFORCE ONE mark(i) consists of or comprises
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`a mark which so resembles a mark previously used in the United States and not abandoned,as to
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`be likely, when used on or in connection with Respondent’s services, to cause confusion, or to
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`cause mistake, or to deceive (Count I) or (ii) is likely to cause confusion, or to cause mistake, or
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`to deceive as to the affiliation, connection, or association of Respondent with Petitioner, or as to
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`the origin, sponsorship, or approval of Respondent’s services, or commercial activities by
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`Petitioner (CountII).
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`Petitioner will first prove as a matter of law that it has priority of use in its mark over
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`Respondent’s date of first use. Petitioner will then prove as a matter of law that the respective
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`marksare likely to cause consumerconfusion.
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`Il.
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`STANDING.
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`The Federal Circuit has emphasizedthat there are only two judicially-created requirements
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`for standing in an inter-parties case: a petitioner must have (1) a real interest in the proceedings,
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`and (2) a reasonable basis for the belief of damages. Cunningham, supra at 945 (“Standingis the
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`moreliberal of the two elements and requires only that the party seeking cancellation believe that
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`it is likely to be damaged by the registration.”). See also Section 13 of the Trademark Act, 15
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`U.S.C. § 1063; Golden Gate Salami Co. v. GulfStates Paper Corp., 332 F.2d 184, 188 (C.C.P.A.
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`

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`1964). Thus, a petitioner need only prove a goodfaith belief that it is likely to be damaged by the
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`registration on the Register. See also International Order ofJob's Daughters v. Lindeburg Co.,
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`727 F.2d 1087, 1091, (Fed. Cir. 1984).
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`Here, Petitioner’s federal trademark application is refused because the USPTO believes
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`that Petitioner’s mark CLOUDFORCEis likely to cause consumer confusion with Respondent’s
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`mark CLOUDFORCEONE.Petitioner’s pleaded application is extant, owned by Petitioner, and
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`said refusal is of record! and Petitioner has plead thatit likely will be damaged if Respondent’s
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`registration for CLOUDFORCE ONEis not cancelled,? Thus, Petitioner has demonstratedits
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`standing to bring this cancellation proceeding.
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`Il.
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`LEGAL STANDARD FOR SUMMARY JUDGMENT
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`The Federal Rules of Civil Procedure provide for summary judgment where “there is no
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`genuine issue as to any material fact and that the moving party is entitled to judgment as a matter
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`of law.” Fed. R. Civ. P. 56(c).
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`In 1986, the United States Supreme Court decided three cases
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`which collectively made manifest that summary judgmentis an integral and importantpart of the
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`Federal Rules mandating a “just, speedy, and inexpensive determination of every action.” Fed. R.
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`Civ. P. 1. See also, Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Matsushita Electric Indus. Co.
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`v. Zenith Radio Corp., 475 U.S. 574 (1986); and Anderson v. Liberty Lobby, Inc., 477 U.S. 242
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`(1986).
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`In Celotex, the Supreme Court held that the “summary judgment procedure is properly
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`regarded notas a disfavored procedural shortcut, but rather as an integral part of the Federal Rules
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`as a whole.” Celotex, 477 U.S. at 327; see also Anderson, 477 U.S. at 250 (“there is no issue for
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`' See Lipton Inds., Inc. v. Ralston Purina Co., 670 F.2d 1024 (C.C.P.A. 1982).
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`2 See Wilson v. Delaunay, 245 F.2d 877 (C.C.P.A. 1957).
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`

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`trial unless there is sufficient evidence favoring the non-movingparty for a jury to return a verdict
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`for that party”).
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`In Matsushita,
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`the Court held that where a motion for summary judgment has been
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`presented, the non-moving party must “do more than simply show that there is some metaphysical
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`doubtas to the material facts.” Matsushita, 475 U.S at 586. Instead, the non-moving party “must
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`set forth specific facts showing there is a genuineissue fortrial.” Jd. (quoting Rule 56(e) Fed. R.
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`Civ. P.). The Court explained there can be no “genuine issue for trial” in circumstances where
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`“the record taken as a whole could notlead a rationaltrier of fact to find for the non-movingparty.”
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`Id. at 587. Following the trilogy of Supreme Court cases, the Federal Circuit has held that
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`likelihood of confusion between two marks under Section 2(d) are questions of law to be decided
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`by the Board. See generally, Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 1547 (Fed.
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`Cir. 1990) (“Thelikelihood of confusion is a question of law to be decided by the court.”). See
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`also Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 636 (Fed. Cir. 1984) (likelihood of
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`confusion is an issue well-suited for summary judgment); Sweats Fashions v. Pannill Knitting Co.,
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`Inc., 833 F.2d 1560, 1565 (Fed. Cir. 1987). Moreover, 37 C.F.R. § 2.116(a) makes Fed. R. Civ.
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`P. 56 applicable to all inter parties proceedings before the Board.
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`In fact, the Board favors the
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`granting of summary judgment in appropriate cases, as it favors judicial economy. Univ. Book
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`Store v. Univ. of Wis. Board ofRegents, 33 USPQ2d 1385 (TTAB 1994).
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`Thus, it is clear that the Board may decide upon summary judgmentthat Petitioner has
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`priority of use, and even whether CLOUDFORCEONEis confusingly similar to CLOUDFORCE.
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`IV.
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`UNDISPUTED FACTS WITH RESPECT TO PRIORITY OF USE.
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`Petitioner is the owner of service mark CLOUDFORCEonfile with the USPTOasSer.
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`No. 98/399919 covering information technology (IT) cloud technology consulting services. The
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`

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`mark wasfirst used in commerce on or before November 1, 2019 in connection with such services
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`(see Exhibit 1, Affidavit of Heba Eldien, Petitioner’s Vice President of Finance), and has been
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`used continuously since then.
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`In its trademark application for CLOUDFORCE ONE(Ser. No.
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`97/469822), Respondent declared that its date of first use was June 21, 2022 andits date offirst
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`use in commerce wasFebruary 17, 2023.
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`When discussing inherently distinctive marks,
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`it
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`is blackletter law that ownership is
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`governed bypriority of use. See e.g., 15 U.S.C. § 1127; see also, Aktieselskabet AF 21 November
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`2001 v. Fame Jeans Inc., 525 F.3d 8 (D.C. Cir. 2008) (“The 1988 amendments to the Lanham Act
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`codified a standard of ‘use in commerce,’ necessary for a valid trademark registration, which
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`means ‘the bona fide use of a mark in the ordinary course of trade’.”). The proper test for
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`unregistered trademarks is the well-established commonlaw principle of “first in time, first in
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`right,” that rewards actual and continuous use of a mark in commerce as between market
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`competitors. See, e.g., Ford Motor Co. v. Summit Motor Prods., 930 F.2d 277, 292 (3rd Cir. 1991)
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`(holding that actual and continuoususe is required to acquire and retain a protectable interest in a
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`mark, stating that the “first to use a mark on a product... ina... market acquires rights in the
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`markin that market.”), citing Tally-Ho, Inc. v. Coast Cmty Coll. Dist., 889 F.2d 1018, 1022-23
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`(11th Cir. 1989).
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`Moreover, acquiring a federally registered trademark does not trump “first in time”. See
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`e.g., In re Beatrice Foods Co., 429 F.2d 466, 472-73 (C.C.P.A. 1970) (“[Federal] registrations
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`wouldnot, in and of themselves, create any new right to use the trademarkorto assert rights based
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`on ownership of the trademark itself. Rights of trademark ownership, for example, the right to
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`enjoin another from use of the mark, must be based upon actual use... .”).
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`The facts here are uncontested.
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`Petitioner first used the mark CLOUDFORCE in
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`commerce in connection with computer consulting services thirty-nine monthsprior to Respondent
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`first using the mark CLOUDFORCE ONE in commerce in connection with computer consulting
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`services. Not only has Petitioner used its mark first in commerce, but has used it continuously in
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`commerce covering its computer consulting services. For this reason, the Board should grant
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`summary judgmentin Petitioner’s favor respecting priority of use.
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`V.
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`UNDISPUTED FACTS WITH RESPECT TO LIKELIHOOD OF CONFUSION.
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`A.
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`Opening Statement.
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`The Board should grant Petitioner’s Motion for Summary Judgmentand sustain the instant
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`cancellation proceeding becausethere is a substantial likelihood of confusion between Petitioner’s
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`CLOUDFORCE mark and Respondent’s CLOUDFORCE ONE mark.
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`This conclusion is
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`supported by the Board’s decisions and the standardsset forth in In re E.J. DuPont DeNemours &
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`Co., 476 F.2d 1357 (C.C.P.A. 1973); see also Toro v. Torohead, Inc., 61 USPQ2d 1164 (TTAB
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`2001).
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`In DuPont the Court of Customs and Patent Appeals identified thirteen (13) evidentiary
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`factors (called the DuPontfactors) that should be evaluated in determining whethera likelihood of
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`confusion exists between marks. As is clear from the decision itself, these factors are notlisted in
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`order of merit. The significance of each factor and its relevance varies from case to case. DuPont,
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`476 F.2d at 1361.
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`Indeed, it has often been stated that while all of these factors may be relevant,
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`they need notall be considered “when someare dispositive.” See, American CyanamidCo.v. S.C.
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`Johnson & Son, Inc., 729 F. Supp. 1018, 1021 (D.N.J. 1989), citing, Freixenet, S.A. v. Admiral
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`Wine & Liquor Co., 731 F.2d 148, 151-52 (3rd Cir. 1984).
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`

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`While, likelihood of confusion is determined on a case-by-case basis by applying the
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`DuPontfactors, “not all of the DuPontfactors are relevant or of similar weight in every case.” Jn
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`re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019) (quoting Jn re Dixie Rests., Inc., 105
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`F.3d 1405, 1406 (Fed. Cir. 1997)). Even though certain DuPont factors maynot be relevant, there
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`are generally two key considerations that are always relevant in any likelihood of confusion
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`analysis: (1) comparing the marks and (2) comparing the parties’ services. Jn re LAm.Symbolic at
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`1322. (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65 (Fed. Cir. 2002)).
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`As such, Petitioner shall focus on those factors most relevant to this case. Besides the above two
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`factors, Petitioner also will focus on the similarity of established,likely-to-continue trade channels.
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`B.
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`Comparing the Respective Marks.
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`Marks are first compared in their entireties for similarities in appearance, sound,
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`connotation, and commercial impression. Jn re Charger Ventures LLC, 64 F.4th 1375, 1380, (Fed.
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`Cir. 2023) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir.
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`2012)). Nonetheless, “[s]imilarity in any one of these elements may be sufficient to find the marks
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`confusingly similar.” Jn re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018)(citing
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`In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff'd per curiam, 777 F. App’x 516, 2019
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`BL 343921 (Fed. Cir. 2019). When comparing marks, “[t]he proper test is not a side-by-side
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`comparison of the marks, but instead whether the marks are sufficiently similar in terms oftheir
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`commercial impression such that [consumers] who encounter the marks would belikely to assume
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`a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373 (Fed. Cir.
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`2018) (quoting Coach Servs. at 1368). The proper focus is on the recollection of the average
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`purchaser, whose mindis not perfect, but retains just a general rather than specific impression of
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`

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`trademarks.
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`In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *4 (TTAB 2020)(citing In re
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`Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016)).
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`Further, in Queen Mfg. Co. v. Isaac Gensberg & Bros., 25 F.2d 284 (8" Cir. 1928) the
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`Court stated that “in order to constitute an infringementit is not necessary that the trademark be
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`literally copied. Neither is it necessary that every word be appropriated. There may be
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`infringement where the substantial and distinctive part of the trademark is copied or appropriated.”
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`The sameis true here. Moreover, in most composite marks, somepart is more “dominant”in its
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`total impact on the average purchaser, over and above the remaining elements in the mark. When
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`the dominant portions of the two marks are exactly the same,
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`then confusion is likely,
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`notwithstanding any otherwise differences. See, e.g., Vogue Co. v. Thompson-Hudson Co., 300 F.
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`509 (6"" Cir. 1924); see also, Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1179 (9th
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`Cir. 1988) (finding CENTURY INVESTMENTS & REALTY confusingly similar to CENTURY
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`21 because of the dominance of the word CENTURY).
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`Here, Petitioner’s mark is CLOUDFORCEin standard character form and Respondent’s
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`mark is CLOUDFORCE ONEin standard character form.
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`In this case, the applied-for mark,
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`CLOUDFORCE,andthefirst word in Respondent’s mark, CLOUDFORCEONE,areidentical in
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`appearance and sound and create a highly similar commercial
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`impression. Marks may be
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`confusingly similar in appearance where similar terms or similar parts of terms appear in the
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`compared marks and create a similar overall commercial impression. See Crocker Nat’l Bankv.
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`Canadian Imperial Bank of Com., 228 USPQ 689, 690-91 (TTAB 1986) (holding COMMCASH
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`and COMMUNICASHconfusingly similar), aff'd sub nom. Canadian Imperial Bank of Com.v.
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`Wells Fargo Bank, N.A., 811 F.2d 1490 (Fed. Cir. 1987). Respondent cannot avoid a likelihood
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`of confusion with Petitioner’s CLOUDFORCE mark where it has appropriated the dominant
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`

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`portion of Petitioner’s mark as the “substantial and distinctive” portion of its CLOUDFORCE
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`ONE mark.
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`Indeed, Respondent applied for the non-stylized word mark CLOUDFORCE ONE.
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`Respondent’s mark does not contain a design feature or any stylization that would aid it in
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`distinguishing it from Petitioner’s CLOUDFORCEmark. See e.g., Jockey Int’l Inc. v. Mallory &
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`Church Corp., 25 USPQ2d 1233 (TTAB 1992) (ELAAN for neckties confusingly similar to
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`ELANCE“unrestricted as to stylization” for underwear).
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`In short, since Respondent’s mark is
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`unrestricted as to stylization, any minor differences which may exist cannot erase the obvious
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`similarities of commercial impression generated by use of exactly the same dominant word
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`CLOUDFORCEin Respondent’s mark.
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`Not only is CLOUDFORCEthe dominant portion of the respective marks, it is also the
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`first word in Respondent’s mark. Consumers are generally more inclined to focus on thefirst
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`word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve
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`Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005) (finding
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`similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because
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`“VEUVE ... remains a ‘prominent feature’ as the first word in the mark and the first word to
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`appear on the label”); Century 21 Real Estate Corp. v. Century Life ofAm., 970 F.2d 874, 876 (Fed
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`Cir. 1992) (finding confusing similarity between CENTURY 21 and CENTURY LIFE OF
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`AMERICA in part because “consumers must first notice th[{e]
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`identical
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`lead word”). As
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`CLOUDFORCE is the first word in the parties’ respective marks, this similarity heightens the
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`likelihood of confusion between these marks. Presto Prods. V. Nice-Pak Prods., 9 USPQ2d 1895,
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`1897 (TTAB 1988) (holding KID WIPES confusingly similar to KID STUFF in part due to
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`identical first words in marks, which is mostlikely to be impressed upon the mind ofa purchaser
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`and remembered). Since the word CLOUDFORCEisidentical in all respects in each mark, and
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`the first wordin the parties’ respective marks, the marksare likely to appearsimilar to the relevant
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`consumers. Thus, the word CLOUDFORCEislikely to have a lasting impression on the consumer
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`such that a consumer seeing both marksis likely to focus on the first word CLOUDFORCEand
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`incorrectly presumethat the companiesare related or that the respective services emanate from the
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`same source,
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`Moreover, there is a long, unbroken line of cases that hold that a junior user taking
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`another’s mark and adding to it a nominal word,
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`is not sufficient to avoid confusion. See,
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`generally, In re Integrated Embedded, 120 USPQ2d 1504 (TTAB 2016) (holding BARR GROUP
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`confusingly similar to BARR both for engineering services); In re Jump designs, 80 USPQ2d
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`(TTAB 2006) (JUMP DESIGNSconfusingly similar to JUMP both for furniture); Jn re Denisi,
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`225 USPQ 624 (TTAB 1985) (PERRY’S PIZZA confusingly similar to PERRY’S both for
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`restaurant services); see also, Hunter Indus., Inc. v. The Toro Co., 110 USPQ2d 1651, 1660, 2014
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`WL 1649332 (TTAB 2014) (holding PRECISION DISTRIBUTION CONTROLlikely to cause
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`consumerconfusion with PRECISION,both forirrigation equipment because dominantpart of the
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`marks are identical). Similarly, in Jn re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) the
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`Board stated that MACHO COMBOSwaslikely to cause confusion with MACHOS, both for food
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`products because applicant’s mark “consists of registrant’s entire mark, to which a [nominal] word
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`has been added.” Jd. at 2004.
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`The only distinguishing feature (if it can be called that) in Respondent’s mark is the
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`additional word ONE. Although courts have held that adding the word ONE to another’s mark
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`does not change the commercial impression, and average purchasersarestill likely to be confused.
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`See e.g., Qwest Communs. Int'l v. OneQwest, NO. CO2-829R, 2002 U.S. Dist. LEXIS 25469
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`

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`(W.D. Wash. 2002) (“OneQwest has simply inserted the word ‘One’ in front of ‘Qwest.’ .. .
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`Infringementis not avoided merely by adding a term to an existing mark. The law does not permit
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`such minorvariations.”).
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`In the instant case, Respondent has merely added the nominal word ONEto the dominant
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`portion of Petitioner’s mark CLOUDFORCE,which adds nothing to distinguishing Respondent’s
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`mark. Put simply, adding the word ONE to CLOUDFORCEdoesnot makeit distinguishable from
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`Petitioner’s CLOUDFORCEmark. Consumersstill are likely to be confused. Forall of the above
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`reasons, CLOUDFORCEONEisconfusingly similar to Petitioner’s CLOUDFORCE mark as a
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`matter of law.
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`Cc.
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`Comparing the Respective Services.
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`In determining likelihood of confusion, the comparedservices need not be identical or even
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`competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229
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`F.3d 1080, 1086 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000).
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`They need only be “related in some manner and/or if the circumstances surrounding their
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`marketing are such that they could giverise to the mistaken belief that [the services] emanate from
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`the same source.” Coach Servs. at 1369 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,
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`1724 (TTAB 2007); see also, Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *44
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`(TTAB 2022) (quoting Jn re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006)).
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`In Safety-Kleen Corp. v. Dresser Indus., Inc., 186 USPQ 476 (C.C.P.A. 1975), the Court
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`of Customs and Patent Appeals said “The law has long protected the legitimate interests of
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`trademark owners and consumers from confusion among noncompetitive, but related, [services]
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`bearing confusingly similar marks.” (citing Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407
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`(2d Cir. 1917); Yale Electric Corp. v. Robertson, 26 F.2d 972 (2d Cir. 1928)). See also W.E.
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`1]
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`Kautenberg Co. v. Ecko Prods. Co., 251 F.2d 628, 631 (C.C.P.A. 1958) (ECKO in connection
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`with kitchen utensils held confusingly similar to WECKOasapplied to mopsandrelated products).
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`Moreover, when marksare substantially identical, the respective services need only be somehow
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`related in order for consumer confusion to be likely. In re Hyper Shoppes (Ohio) Inc., 837 F.2d
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`483 (Fed. Cir. 1988) (BIGG’S (stylized) for grocery store and general merchandisestore services
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`held likely to be confused with BIGG’S and design for furniture); Jn re Golden Griddle Pancake
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`House Ltd., 17 USPQ2d 1074 (TTAB 1990) (GOLDEN GRIDDLE PANCAKE HOUSE(with
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`PANCAKE HOUSEdisclaimed) for restaurant services held likely to be confused with GOLDEN
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`GRIDDLEfortable syrup); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988)
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`(MUCKY DUCKand duck design for mustard held likely to be confused with THE MUCKY
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`DUCKand duck design for restaurant services).
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`In fact,
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`the test for likelihood of confusion encompasses confusion as to “source,
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`endorsement, affiliation or sponsorship.” Wendy's Int'l, Inc. v. Big Bite, Inc., 223 USPQ 35 (S.D.
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`Ohio 1983). This is often referred to as the “related goodsor services” rule. See e.g., Nat’l Cable
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`Television Ass’n Inc. v. Am. Cinema Editors Inc., 19 USPQ2d 1424, 1430 (Fed. Cir. 1991).
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`“Related” does not mean that there is necessarily any physical relationship between the goods or
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`services identified by the conflicting marks. Rather, it means that the marks as used are “related”
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`in the mind of the consuming public. Herbko Int’l Inc. v. Kappa Books Inc., 64 USPQ2d 1375,
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`1381 (Fed. Cir. 2002) (“Even if the goods and services are not identical or specifically related in
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`kind, they may be sufficiently related in the mind of the consuming public to cause confusion
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`concerning the source or origin of the goods and services.”). As the Ninth Circuit stated in
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`Fleischmann Distilling Corp. v. Maier Brewing Co., 136 USPQ 508, 517 (9"Cir. 1963), “[t]he
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`use need not be the sameas, nor one in competition with the original use. The questionis, are the
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`uses related so that they are likely to be connected in the mindof a prospective purchaser?”
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`In the instant case, Petitioner’s mark CLOUDFORCEisused in connection with “IT cloud
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`consulting services" in Class 42. Respondent’s mark is CLOUDFORCE ONEand used for
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`“computer network security consultancy” in Class 42. Here, the respective services are closely
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`related because they typically are provided by the same technology companies traveling through
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`the same channels of trade to the sameclass of consumer. Petitioner herewith submits twenty-one
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`currently registered and valid trademark registrations for marks that are used on both IT cloud
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`consulting and computer network security consultancy. See Exhibit 2.3 Petitioner’s evidence
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`demonstrates that “IT cloud consulting services” and “computer network security consultancy”are
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`commonly provided together and commonly originate under the same mark from the same source.
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`The attached evidenceestablishes: (i) that the same entity commonly provides IT cloud consulting
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`services and computer network security consultancy services and markets the services under the
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`same mark,(ii) that the relevant services are sold or provided through the sametrade channels and
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`used by the same classes of consumers in the samefields of use, and (iii) that the services are
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`similar or complementary in terms of purpose or function.
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`Jn re Toshiba Med. Sys. Corp., 91
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`USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
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`Upon encountering CLOUDFORCEforIT cloud consulting services and CLOUDFORCE
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`ONE for computer network security consultancy, consumers are likely to be confused and
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`mistakenly believe that the respective services emanate from a common source. Thus, Petitioner’s
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`
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`3 As these records were taken directly from the USPTO’s online database, they comply with Rule 44 Fed. R.Civ. P.
`and as such are admissible.
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`13
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`and Respondent’s services are considered related for likelihood of confusion purposes as a matter
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`of law. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009).
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`D.
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`Comparing Established, Likely-to-Continue Trade Channels.
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`If the users of two similar marks use similar trade channels to advertise their services, there
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`is a greater likelihood of confusion between the two marks. DuPont, 476 F.2d at 1361; Jn re
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`Majestic Distilling Co., 65 USPQ2d 1201, 1204 (Fed. Cir. 2003). Attached herewith as Exhibit 3
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`is Respondent’s Statement of Use including the evidence of use Respondent submitted therewith
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`with the USPTO in connection with its trademark application Ser. No. 97/469822. Respondent
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`described its evidence of use as “screenshots of Applicant's websites offering the services in
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`connection with the mark.” The Statement of Use wasfiled under oath. Respondent signed the
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`Statement of Use with the following warning:
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`The signatory being warned that willful false statements and the like are
`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that
`such willful false statements and the like may jeopardize the validity of the
`application or submission or any registration resulting therefrom, declares that
`all statements made of his/her own knowledgeare true and all statements made
`on informationandbelief are believed to be true.
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`Accordingly, Respondent admits that it advertises its services via a website. Attached herewith as
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`Exhibit 4 is Petitioner’s evidence of use on file with the USPTOin connection with its trademark
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`application Ser. No. 98/399919. Petitioner states that these are screenshot taken from its website.
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`Petitioner asserts that the parties use the same channels of trade for promotion of their
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`respective services. Both Petitioner and Applicant promote their goods/services over the Internet.
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`The Federal Circuit has stated that sharing of distribution channels among similar marks enhances
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`the likelihood of confusion of those marks. Century 21, 970 F.2d at 877. As such, the parties’ use
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`of identical channels of trade increases the likelihood of confusion in this case.
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`IV.
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`CONCLUSION.
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`The Board should grant this Motion for Summary Judgment and cancel Registration No.
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`7,300,716 because thereis a likelihood of confusion between Respondent’s CLOUDFORCE ONE
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`mark and Petitioner’s CLOUDFORCE mark, both used in connection with related computer
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`services. Under the above analysis applying the factors set forth in DuPont, it is patently clear that
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`there is a likelihood of confusion. Petitioner has used its CLOUDFORCEmark continuously since
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`November 1, 2019.
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`In contrast, Respondent’s first use of CLOUDFORCE ONE, which is
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`supported by its own Statement of Use declaration, is no earlier than June 21, 2022. Thus,
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`Petitioner has priority of use of its CLOUDFORCEmark in commerce.
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`In addition, the marksin
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`question share identical word CLOUDFORCE,whichis the dominant word in each mark. Further,
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`the marks are used on related computer services and create similar commercial impressions.
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`Moreover, as Respondentis the junior-user of its CLOUDFORCE ONEmarkbyentering
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`into the computer consulting market subsequent to Petitioner, it had “an affirmative duty to choose
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`a mark so as to avoid all confusion as to the source of origin of its services.” Blumenfeld
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`Development Corp. v. Carnival Cruise Lines, Inc., 669 F. Supp. 1297, 1321 (E.D. Pa. 1987) (citing
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`Johnson & Johnson v. Quality Pure Mfg., Inc., 484 F. Supp. 975, 980 (D.N.J. 1979)); See also,
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`Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 29 (1st Cir. 1989) (“When oneuses a mark similar
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`to one already in use, there is generally an affirmative duty to avoid the likelihood of confusion.”).
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`Moreover, a junior user cannot avoid confusing similarity with a senior user’s mark by merely
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`adding nominalor descriptive words to a senior user’s mark. See e.g., Miller Becker Co. v. King
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`of Clubs, Inc., 56 F.2d 883 (C.C.P.A. 1932) (holding ACE and ACE OF CLUBS both forsoft
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`drinks confusingly similar); National Biscuit Co. v. Joseph W. Sheridan, 44 F.2d 987 (C.C.P.A.
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`15
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`1930) (holding AMERICAN BEAUTY and AMERICAN BEAUTY ROSE confusingly similar
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`both for bakery products).
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`The overriding concern is not only to prevent buyer confusion as to the source of the
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`services, but to protect the priority trademark holder from adverse commercial impact due to use
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`of a similar mark by a newcomer. See Jn re Shell Oil Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993).
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`The Board follows the established “rule of doubt.” That is, when the question of whether two
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`marksare likely to cause consumerconfusionis too close to call, then the “rule of doubt” says that
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`as a tie-breaker, the Board resolves all doubt in favor of the senior user. See, e.g., Lambert
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`Pharmacal Co. v. Bolton Chem. Corp., 219 F, 325 (S.D.N.Y. 1915) (“In choosing an arbitrary
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`trade-name, there was no reason whatever why [defendant] should have selected one which bore
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`so much resemblanceto the plaintiff's; and in such cases any