Cornerstone OnDemand, Inc.

Trademark Trial and Appeal Board

Sep 5, 2007

No. 76617152 (T.T.A.B. Sep. 5, 2007)

Mailed: September 5, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cornerstone OnDemand, Inc.
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Serial No. 76617152
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Jill Pietrini of Manatt, Phelps & Phillips for Cornerstone
OnDemand, Inc.

Dominic J. Ferraiuolo, Trademark Examining Attorney, Law
Office 102 (Thomas V. Shaw, Managing Attorney).
____________

Before Walters, Mermelstein and Bergsman, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Cornerstone OnDemand, Inc. has filed an application to
register the mark CORNERSTONE, in standard character form,
on the Principal Register for “computer software for
managing human capital, designing, developing, and providing
professional education, professional development, corporate
training and executive education, and tracking and
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 76617152

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evaluating the completion and progression of such education
and training,” in International Class 9.1
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the mark CORNERSTONE, previously registered for “computer
programs and instruction manuals sold as a unit,”2 that, if
used on or in connection with applicant’s goods, it would be
likely to cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65

1 Serial No. 76617152, filed October 21, 2004, based on use of the mark
in commerce, alleging first use and use in commerce as of November 8,
2003.

2 Registration No. 1511566 issued November 8, 1988 and is now owned by
IDEXX Laboratories, Inc. Registrant’s declarations under Sections 8 and
15 of the Trademark Act have been accepted and acknowledged,
respectively.
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USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
Regarding, first, the marks, there is no question that
the marks are identical and applicant does not claim
otherwise. Rather, applicant contends that CORNERSTONE is a
weak mark and that its goods are entirely different from the
goods in the cited registration.
In support of its position that CORNERSTONE is a weak
mark, applicant submitted excerpts from fourteen different
websites, thirteen3 of which used the term CORNERSTONE in
connection with software and related goods and services.
Applicant also submitted copies of eleven different third-
party registrations for the mark CORNERSTONE, all of which
identify goods unrelated to those involved herein; one
third-party registration for the mark CORNERSTONE for

3 One website used the term in connection with the unrelated service of
online printing. At least two websites included terms in addition to
CORNERSTONE as a mark or company name.
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software in the telecommunications industry; and copies of
different third-party registrations for CORNERSTONE LOGIC
and ANALYTICAL CORNERSTONE, both for software related goods
and services in different fields (aviation and pulp and
paper industries, respectively).4
The examining attorney argues that, even if applicant
has established that CORNERSTONE is a weak mark, the
registered mark cited herein is entitled to protection; and
that, even if consumers can distinguish among similar marks
including the term CORNERSTONE, this case involves identical
marks.
We agree with applicant that the evidence presented
establishes that CORNERSTONE is a term widely used and
registered, both among a broad spectrum of goods and
services and within the computer field. Thus, we find that
CORNERSTONE is a weak mark. Nevertheless, even if
CORNERSTONE is a weak mark, it is still entitled to
protection against the same or similar mark for closely
related goods. Matsushita Electrical Industrial Co. Ltd. v.
National Steel Construction Co., 442 F.2d 1383, 170 USPQ 98
(CCPA 1971); King Kup Candies Inc. v. King Candy Co., 288
F.2d 944, 129 USPQ 272 (CCPA 1961).

4 Applicant submitted a list of registrations and applications which is
of little probative value. The applications are evidence only of their
filing and the list includes only marks and registration numbers.

Serial No. 76617152

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Turning to consider the goods, of particular importance
in this case is the precedent that requires the Board to
determine the question of likelihood of confusion based on
an analysis of the goods or services recited in applicant’s
application vis-à-vis the goods or services recited in the
registration, rather than what the evidence shows the goods
or services actually are. Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987). See also, Octocom Systems, Inc. v. Houston Computer
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1992); and The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715 (TTAB 1991). Further, it is a general
rule that goods or services need not be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is enough that goods or services are
related in some manner or that some circumstances
surrounding their marketing are such that they would be
likely to be seen by the same persons under circumstances
which could give rise, because of the marks used therewith,
to a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991),
and cases cited therein; and Time Warner Entertainment Co.
v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002).
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In support of its position that the goods are entirely
different, applicant submitted an excerpt from registrant’s
website indicating that registrant uses its mark to identify
software for managing a practice in the field of veterinary
medicine. The examining attorney argues that, as the USPTO
is bound by the identification of goods as it is written in
the cited registration, we must determine that the goods are
the same or closely related.
While it would appear from the evidence of registrant’s
website that registrant’s goods identified by the mark
CORNERSTONE may, in fact, be limited at this time to the
field of veterinary medicine, the examining attorney
correctly noted that we cannot read limitations into the
registration so that the identified goods are limited to the
goods on which registrant is currently using the mark.
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983)(“There is no specific limitation and
nothing in the inherent nature of Squirtco’s mark or goods
that restricts the usage of SQUIRT for balloons to promotion
of soft drinks. The Board, thus, improperly read
limitations into the registration”). Therefore, we must
assume that registrant is using its mark on all types of
computer programs and manuals therefor. Registrant’s
broadly worded identification of goods encompasses software
Serial No. 76617152

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in the areas identified in the application and, thus, we
must conclude that the goods are closely related.
The examining attorney cited the relevant decision of
the Board in In re N.A.D., Inc., 57 USPQ2d 1872 (TTAB 2000).
The Board made the following statement in that decision:
Registrant's goods are broadly identified as
computer programs recorded on tapes or disks,
without any limitation as to the kind of programs
or the field of use. Accordingly, we must assume
that registrant's goods encompass all such
computer programs including those which may be
intended for the medical field. As such, they may
travel in the same channels of trade normal for
those goods and to all classes of prospective
purchasers for those goods. In re Linkvest S.A.,
24 USPQ2d 1716 (TTAB 1992) and cases cited
therein. When the goods are so viewed, we believe
that confusion is likely. . . . While we are
sympathetic to applicant's concern about the scope
of protection being given to the cited
registrations, applicant is not without remedies
in its attempt to obtain a registration. Applicant
may, of course, seek a consent from the owner of
the cited registrations, or applicant may seek a
restriction under Section 18 of the Trademark Act,
15 USC §1068. This remedy is available for those
who believe that a restriction in the cited
registration(s) may serve to avoid a likelihood of
confusion. See Eurostar Inc. v. “Euro-Star”
Reitmoden GmbH & Co. KG, 34 USPQ2d 1266 (TTAB
1994).

Applicant urges the Board to follow the precedent in
Local Trademark, Inc. v. Handy Boys Inc., 16 USPQ2d 1156
(TTAB 1990) and Quartz Radiation Corp. v. Comm/Scope Co., 1
USPQ2d 1668 (TTAB 1986); however, we find these decisions to
be inapposite. The Local Trademark case involved
substantially similar marks in connection with opposer’s
advertising services to plumbers, the subject of a
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registration, and applicant’s liquid drain opener. In
dismissing the opposition, the Board noted that the marks
are weak and concluded that, as the goods and services are
identified in opposer’s registration and in the opposed
application, “even though opposer's services and applicant's
product are or can be marketed to the same class of
customers, namely plumbing contractors, these services and
goods are so different that confusion is not likely even if
they are marketed under the same mark.” (Id. at 1158.) In
the Quartz Radiation case, the Board drew the following
conclusion with respect to the respective goods as
identified in opposer’s registration and the opposed
registration:
Although the marks are virtually the same [QR],
the products with which applicant uses its mark
are quite different from the products of opposer.
They are different in nature; they are used for
different purposes; they are promoted differently
and are purchased by different discriminating
purchasers.

(Id. at 1669.) Unlike either of these cases, the goods
involved in the present case are very closely related and,
as identified in the respective registration and
application, directed to all of the same purchasers for such
goods through the same normal channels of trade for these
goods.
Therefore, we conclude that in view of the identity of
applicant’s mark, CORNERSTONE, with the registered mark,
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their contemporaneous use on the closely related goods
involved in this case is likely to cause confusion as to the
source or sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.