salesforce.com, inc.

Trademark Trial and Appeal Board

Sep 9, 2015

No. 85563074 (T.T.A.B. Sep. 9, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re salesforce.com, inc.
_____

Serial No. 85563074

_____

Beth Goldman, Betsy Wang Lee, and Scott Lonardo of Orrick, Herrington &
Sutcliffe LLP for salesforce.com, inc.

Miah Rosenberg, Trademark Examining Attorney, Law Office 117,
Hellen M. Bryan-Johnson, Managing Attorney.
_____

Before Ritchie, Masiello, and Hightower,
Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:
salesforce.com, inc. (“Applicant”) has filed an application for registration on the
Principal Register of the mark SOCIAL MARKETING CLOUD in standard
characters for the following services:
Business management services, namely, providing
business information management services; compilation
and management of computerized databases, and
consulting services related thereto; Business management
services, namely, providing customer relationship
management services and sales support management
services; business management consulting services
Serial No. 85563074
2
relating to customer relationship management, sales
support management, and marketing automation;
providing a website featuring business management
consulting information; operating online marketplaces for
third parties to buy, sell, share, and offer for free
computer software and on-demand applications to others,
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 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; Providing
temporary use of online non-downloadable computer
software application development tools and programming
language for use in developing, analyzing, coding,
checking, and controlling other computer software;
providing temporary use of online non-downloadable
computer software that implements a procedural and
object-oriented programming language; online hosted
computer services, namely, designing, developing,
customizing, and maintaining computer software
applications for others; and consulting services related to
all the foregoing, in International Class 42;
On-line social networking services, in International Class
45.1
The Trademark Examining Attorney refused registration under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark
merely describes the identified services. Applicant, while asserting that its mark is

1 Application Serial No. 85563074 was filed on March 7, 2012 under Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), stating November 30, 2011 as the date of first use
anywhere and first use in commerce with respect to all classes.
Serial No. 85563074
3
not merely descriptive, also asserted in the alternative that the portion of the mark
consisting of MARKETING CLOUD has acquired distinctiveness as Applicant’s
source indicator, and that therefore the mark is entitled to registration under the
provisions of Trademark Act § 2(f), 15 U.S.C. Section 1052(f).2 The Examining
Attorney found Applicant’s showing of acquired distinctiveness inadequate and
made final her refusal to register the mark. Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration,
and this appeal resumed. The case is fully briefed.
1. Refusal under Section 2(e)(1).
We consider first whether Applicant’s mark, as a whole, is merely descriptive
within the meaning of Section 2(e)(1) of the Trademark Act. Section 2(e)(1) provides
for the refusal of registration of “a mark which, (1) when used on or in connection
with the [services] of the applicant is merely descriptive or deceptively
misdescriptive of them.” 15 U.S.C. § 1052(e)(1). A term is merely descriptive of
services within the meaning of Section 2(e)(1) if it forthwith conveys an immediate
idea of an ingredient, quality, characteristic, feature, function, purpose or use of the
services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012); see also In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). Whether a mark is merely descriptive is determined in relation to the
services for which registration is sought and the context in which the term is used,
not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588

2 Applicant’s response of September 6, 2013.
Serial No. 85563074
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F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224
(TTAB 2002). In other words, we evaluate whether someone who knows what the
services are will understand the mark to convey information about them. DuoProSS
Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012). A mark need not immediately convey an idea of each and every
specific feature of the services in order to be considered merely descriptive; it is
enough if it describes one significant attribute, function or property of the services.
See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Moreover, the mark need
not describe all of the identified services. Rather, a descriptiveness refusal is proper
with respect to all of the identified services in an International Class if the mark is
descriptive of any of the services in that class. In re Chamber of Commerce of the
U.S., 102 USPQ2d at 1219; In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087,
1089 (Fed. Cir. 2005). It is the Examining Attorney’s burden to show that a term is
merely descriptive of an applicant’s goods or services. In re Gyulay, 3 USPQ2d at
1010; In re Accelerate s.a.l., 101 USPQ2d 2047, 2052 (TTAB 2012).
Applicant states in its brief that its services relate to “a comprehensive suite of
technology based services designed to help companies utilize internet
communications media such as Twitter®, Youtube® and others in their marketing
campaigns.”3 Applicant argues that its mark is not merely descriptive, but
suggestive:

3 Applicant’s brief at 4, 20 TTABVUE 6.
Serial No. 85563074
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SOCIAL MARKETING CLOUD suggests that the services
relate to marketing, may have some relation to the
Internet or a computer network, and involve human
communication or interaction. The mark does not,
however, immediately convey the nature of the extensive
suite of services at issue. For example, the mark could
plausibly describe a host of other services, such as
providing an online website featuring articles about
“social marketing” or web page design services for firms in
the “social marketing” or “social media marketing” fields.4
Initially, we note that the question is not whether the mark could be understood
to refer to other services, but rather whether the mark is descriptive in relation to
the services for which Applicant seeks registration. See DuoProSS Meditech Corp.,
103 USPQ2d at 1757.
We will begin by briefly addressing whether the individual terms composing
Applicant’s mark are descriptive in the context of Applicant’s services. However, we
bear in mind that we must evaluate whether the mark as a whole is merely
descriptive. If, considering the mark as a whole, “imagination, thought, or
perception is required to reach a conclusion on the nature of the [services],” In re
Gyulay, 3 USPQ2d at 1009, or if the combination results in an otherwise
nondescriptive meaning, then the mark would be registrable, as Applicant contends.
The term SOCIAL is descriptive because Applicant’s Class 45 services are
providing “social networking services”; and because Applicant’s marketing services
relate to the use of “social media” by Applicant’s clients. This is confirmed by

4 Id.
Serial No. 85563074
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Applicant’s specimen of use, an advertisement, which includes a heading that reads
“Shape Your Brand with Social Media Marketing.”5
The term MARKETING is descriptive because Applicant’s services, as identified,
relate to the field of “marketing” and, as stated in Applicant’s brief, its services
involve “help[ing] companies … in their marketing campaigns.”6
The term CLOUD is descriptive to the extent that Applicant’s services involve
cloud computing. Applicant describes itself as “the enterprise cloud computing
leader,” and describes its services as featuring “social and mobile cloud
technologies.”7 We have found the term “cloud” to be generic and thus merely
descriptive for certain computing services. See In re ActiveVideo Networks, Inc., 111
USPQ2d 1581, 1605 (TTAB 2014) (finding CLOUDTV generic for various software,
broadcasting, and online services).
The Examining Attorney, in support of her contention that the mark is merely
descriptive, has submitted substantial evidence to demonstrate that the term
SOCIAL MARKETING is recognized as a type of product promotion that involves
use of social media. Notably, Applicant’s own website has described its services as
“The world’s only unified social marketing suite”; and states “The Marketing Cloud
unites the capabilities of Buddy Media, the world’s #1 social marketing solution,
with the world’s #1 social listening platform, Radian6.”8 It also says of Applicant’s

5 Specimen of use submitted December 28, 2012, p. 1.
6 Applicant’s brief at 4, 20 TTABVUE 6.
7 See the “About us” section of Applicant’s web site, Applicant’s response of December 28,
2012 at 94.
8 Advertisement on , Office Action of March 5, 2013 at 122-23.
Serial No. 85563074
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service, “The Radian6 Social Marketing Cloud allows marketers to adapt to the new
world of social marketing through these five key pillars: …”9 The record also
includes many examples of third-party uses of the term SOCIAL MARKETING:
Three Tips to Kickstart Your Social Marketing Program
in 2013
Social marketing can be hugely powerful: …
Before you rush out to Post and Tweet with reckless
abandon, it’s crucial to have the right foundation in place
… Here are three fundamentals to set you up for success
in social marketing all through 2013: …10
***
SOCIAL MARKETING STRATEGY
MEET YOUR CUSTOMERS WHERE THEY ARE
ONLINE
Using social media in B2B and B2C marketing requires a
strong commitment to a strategic plan, a team approach,
and use of analytic tools to measure progress. Social
marketing campaigns are rarely an overnight success.
Marketers must focus social marketing efforts on building
trust …
Social media is a key aspect of any digital marketing
strategy. …
SOCIAL MARKETING REQUIRES PLANNING
Social marketing entails identifying the desired target
audiences and engaging them through social media in
authentic ways.11
***

9 Office Action of June 28, 2012 at 33.
10 , id. at 21.
11 , id. at 126.
Serial No. 85563074
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HERE’S WHAT WE CAN DO FOR YOU:
Develop a comprehensive plan for your social marketing
strategy
Assess your current social marketing efforts and
performance across Facebook, Twitter, YouTube and on
the blogosphere
Develop relevant metrics to evaluate your ROI in social
marketing.12
***
Analytics boost social marketing efforts
… With dozens of social marketing venues for its divisions
and subdivisions, General Electric still retains central
oversight, largely through its use of analytics. …
With brand divisional and subdivisional social media
presences on Facebook, Twitter, LinkedIn, YouTube,
Pinterest, Google+ and more, GE found that developing
and deploying content and managing every response to
each audience was too time-consuming for in-house
resources.13
***
SOCIAL MEDIA MARKETING
SIIA: Social marketing now virtually universal
… Social media is nearly universally adopted by
marketers, with social marketing expenditures expected
to increase this year, according to a new report …14
***
Social Marketing 2013: Capitalizing on the Visual Age

12 , id. at 129.
13 “Analytics boost social marketing efforts,” at , id. at 143.
14 , id. at 148.
Serial No. 85563074
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… 2012 was the rise of visual content marketing and this
trend will continue to grow in 2013. … So what does this
mean for your business and its social media strategy?15
It is clear from the evidence that SOCIAL MARKETING is understood to mean a
business’s efforts to promote its goods and services by means of social media outlets
like Facebook, Twitter, LinkedIn, YouTube, and Pinterest.16 Although Applicant’s
recitations of services in Classes 35 and 42 make no mention of social media, the
wording of the recitations is broad enough to encompass services relating to
marketing efforts that involve the use of social media. In particular, we note the
following identified services:
business management consulting services relating to
customer relationship management … and marketing
automation (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, … customer
relationship management … (Class 42).
Applicant’s identification of services in Class 45, “On-line social networking
services,” is broad enough to encompass the provision of social networking services
to Applicant’s customers for the purpose of marketing the customers’ goods and
services. Thus, the term SOCIAL MARKETING aptly describes a feature of

15 , id. at 150.
16 In addition to the usage evidence discussed, the Examining Attorney has also made of
record several third-party registrations of marks that include the phrase SOCIAL
MARKETING, with a disclaimer of the exclusive right to use SOCIAL MARKETING. These
registrations demonstrate that the USPTO has treated the phrase SOCIAL MARKETING
as merely descriptive in the context of the identified services. Moreover, several of the
registrations are on the Supplemental Register with a disclaimer of SOCIAL MARKETING,
indicating that, in those cases, the USPTO treated SOCIAL MARKETING as generic with
respect to the identified services. See Office Action of May 1, 2014 at 11-22 and 90-91; and
Office Action of November 20, 2014 at 87-111.
Serial No. 85563074
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Applicant’s services in Classes 35 and 42; and aptly describes a purpose of
Applicant’s service in Class 45. That is, Applicant provides business consulting on
the subject of marketing automation in connection with its customers’ marketing
through social media; Applicant provides access to software for processing data
relating to marketing and promotion through social media; and Applicant provides
a social media conduit (social networking services) to customers for the purpose of
allowing those customers to market and promote their goods and services and to
relate with their customers online. Indeed, the record shows that third parties
perceive Applicant’s services to have this feature and this purpose:
Salesforce.com is a leader in cloud computing products
that help employers connect with customers in this world
of social media. In late 2011, Salesforce.com bought
Radian6, which focuses on listening to customers in the
social web, as well as analyzing the use of the social web
in order to better serve customers. As information
professionals, we use social media to connect with our
customers. With the new Radian6 Social Marketing
Cloud, we can also listen to what others are saying about
our organizations in social media, analyze the messages,
engage users in their social networks, and use all of this
data to better market our organizations. Radian6 will
help us make sense of the social media conversations.17
Applicant itself characterizes its services as having the purpose of allowing its
customers to use social media, like Facebook, as part of their marketing efforts:
Salesforce.com’s MARKETING CLOUD offerings
comprise a number of specialized products and services,
including social listening, engagement, and analytics
services; … social publishing services enabling
simultaneous distribution of campaign materials … to …

17 “Rekindling Connections,” Information Today, February 1, 2012, Applicant’s response of
December 28, 2012 at 139.
Serial No. 85563074
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Facebook, Twitter, and YouTube …. These offerings all
focus on the way the public views and responds to an
organization’s presence, activities, initiatives, products,
and/or services. Using Applicant’s MARKETING CLOUD
offerings, salesforce.com customers can monitor, analyze
and leverage activity from more than 540 million social
sources on the Internet, such as Facebook, Twitter,
YouTube, and LinkedIn …18
We next consider whether the combination of SOCIAL MARKETING with the
word CLOUD results in a term that is merely descriptive.
Applicant states in its brief that “‘cloud’ can generally be used to refer to the
Internet,” but contends that this term “is too broad to be capable of conveying
particular information about Applicant’s services”; and that “there is no single,
universally accepted definition of ‘cloud’ or other ‘cloud’-based terms, such as ‘cloud
computing’ and ‘cloud-based applications.’”19
The Examining Attorney has submitted the following definition of “cloud”:
(1) Also referred to as a network cloud. In
telecommunications, a cloud refers to a public or semi-
public space on transmission lines (such as T1 or T3) that
exists between the end points of a transmission. Data that
is transmitted across a WAN enters the network from one
end point using a standard protocol suite such as Frame
Relay and then enters the network cloud where it shares
space with other data transmissions. The data emerges
from the cloud – where it may be encapsulated, translated
and transported in myriad ways – in the same format as
when it entered the cloud. A network cloud exists because
when data is transmitted across a packet-switched

18 Declaration of Alica Del Valle ¶ 5, Applicant’s response of September 6, 2013 at 18-19.
Ms. Del Valle is Applicant’s Global IP Counsel. The declaration refers to MARKETING
CLOUD, rather than SOCIAL MARKETING CLOUD, because it was submitted in support
of Applicant’s claim of acquired distinctiveness in the portion of the mark consisting of the
words MARKETING CLOUD.
19 Applicant’s brief at 7, 20 TTABVUE 9.
Serial No. 85563074
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network in a packet, no two packets will necessarily
follow the same physical path. The unpredictable area
that the data enters before it is received is the cloud.
(2) See also cloud computing.20
The technical nature of the definition quoted above does not convey, as does
other evidence of record, the readiness with which the word “cloud” has been
adopted to describe services provided to customers over the Internet, usually
involving software applications or data that are stored remotely rather than on the
customers’ own computers. Services of this type are widely described as “cloud
services” or “cloud computing”; and the word “cloud” is often used as a noun to
describe a computer network that supports this type of service, whether it be the
great network that constitutes the Internet as a whole, or a smaller network
controlled by a single business. The following representative uses of the word
“cloud” illustrate the widespread understanding of this meaning of the word:
Remember when the “cloud” was just called the
“Internet?” … Look, it’s just the Internet, people. We don’t
need a new word to say that data is stored on a central
server. …21
***
Cloud computing is all the rage. … As a metaphor for the
Internet, “the cloud” is a familiar cliché, but when
combined with “computing,” the meaning gets bigger and
fuzzier. Some analysts and vendors define cloud
computing narrowly as an updated version of utility
computing: basically virtual servers available over the
Internet. Others go very broad, arguing anything you

20 Definition from Webopedia, Office Action of June 28, 2012 at 25.
21 “Stop the Cloud, I Want to Get Off!,” at , Office Action of June 28, 2012 at
30.
Serial No. 85563074
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consume outside the firewall is “in the cloud,” including
conventional outsourcing. …
Cloud computing is at an early stage, with a motley crew
of providers large and small delivering a slew of cloud-
based services, from full-blown applications to storage
services to spam filtering. Yes, utility-style infrastructure
providers are part of the mix, but so are SaaS (software as
a service) providers such as Salesforce.com.22
The following lengthy excerpt from 2013 shows various uses of the word “cloud” as
a noun and an adjective, but most notably as the name of a type of service provided
by Applicant and other service providers:
[L]et’s define cloud computing. There are three types:
Software-as-a-Service (SaaS), Platform-as-a-Service
(PaaS) and Infrastructure-as-a-Service (IaaS).
Cloud computing lets you rent the tech you want, paying
a monthly fee for it. … SaaS means renting the just app
[sic]. PaaS means renting everything but the app (often
used by app developers). IaaS means renting just the
hardware and tools to maintain the hardware (popular
with startups and enterprises).
…IBM has been a key player in a cloud tech called
OpenStack … It said it will use OpenStack for all the
clouds it builds. This includes its own public “smart
clouds” which is sells as a service and every “private
cloud” it installs for in [sic] the data centers of its
enormous base of enterprise customers.
… Rackspace is leading a massive coalition for free cloud
software.
Rackspace runs an IaaS cloud …
Google was born in the cloud.
…

22 “What cloud computing really means,” at , id. at 23.
Serial No. 85563074
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Salesforce.com has proved that enterprises really do want
the cloud.
The name Salesforce.com is almost synonymous with
cloud computing. Salesforce.com proved that the world
wants to buy software-as-a-service. …
The company also has one of the most popular PaaS
clouds for running your own home-grown applications …
Microsoft has a big enterprise cloud, too, Azure.
This is a PaaS cloud …
VMware … announced plans to launch its own public
cloud. That’s an interesting choice because VMware says
about 200 service providers offer clouds built on
vCloud …
There’s no question who the most important cloud player
is: Amazon. Amazon basically invented the IaaS market.
Amazon’s cloud offers a huge array of choices …
Amazon is now really going after the enterprise market,
adding more security features to its cloud …23
The articles excerpted below describe a variety of “cloud services” (including
Applicant’s service), using “cloud” as a noun to describe such services:
The two models on the left side of Figure 3 refer to two
deployment models that describe customer-owned private
clouds in which the enterprise’s IT department can be
viewed as an internal cloud service provider.
Self-run (enterprise) private cloud. A self-run private
cloud is a cloud service that an enterprise owns and
operates itself. The enterprise may have acquired the
hardware and software components required to build a
private cloud and assembled it (or had a systems
integrator do so). …

23 “The 10 Most Important Companies In Cloud Computing,” The Business Insider, April
20, 2013, Applicant’s response of September 6, 2013 at 309-11 (emphasis added).
Serial No. 85563074
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Managed private cloud. A managed private cloud is an
enterprise-owned cloud service that is operated by a third-
party services firm. …24
***
The ability to be proactive is what will change the face of
social marketing according to Pombriant, who says that
previous social marketing campaigns were mostly reactive
and only reached low-hanging fruit. He sees
Salesforce.com’s cloud as changing social marketing into a
defined process …25
Applicant’s services are, in relevant part, “providing business information
management services; compilation and management of computerized databases”
(Class 35); “Providing temporary use of on-line non-downloadable software to store,
manage, track, analyze, and report data” (Class 42); and “On-line social networking
services” (Class 45). These are exactly the kinds of services that may be provided
over the Internet by allowing customers remote access to software, servers and
network facilities, as described above. Viewing Applicant’s mark, as we must, as it
would be perceived in the context of the offered services, we have no doubt on this
voluminous record that customers would understand that the combined network
facilities, servers and software offered by Applicant constitute a network “cloud.”26

24 “MARKET ANALYSIS: Worldwide SaaS and Cloud Software 2012-2016 Forecast and
2011 Vendor Shares,” Applicant’s response of September 6, 2013 at 81 (emphasis in
original).
25 “Salesforce unveils Radian6 Social Marketing Cloud,” ,
Applicant’s response of December 28, 2012 at 171.
26 We note in passing that the Examining Attorney has made of record a substantial
number of third-party registrations of marks that include the word CLOUD, with a
disclaimer of the exclusive right to use CLOUD. These registrations demonstrate that the
USPTO has treated the word CLOUD as merely descriptive in the context of the identified
services. Moreover, very many of the registrations are on the Supplemental Register with a
disclaimer of CLOUD, indicating that, in those cases, the USPTO treated the word CLOUD
Serial No. 85563074
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We must now consider the mark, SOCIAL MARKETING CLOUD, as a whole and
ask whether the combination of the component words of Applicant’s mark “conveys
any distinctive source-identifying impression contrary to the descriptiveness of the
individual parts.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370,
1372 (Fed. Cir. 2004). We agree with Applicant’s characterization of the
“grammatical structure” of its mark:
Properly interpreted, the “cloud” portion of Applicant’s
mark is a noun modified by “social” and “marketing.”27
As the Examining Attorney has shown, SOCIAL MARKETING is a well-recognized
phrase in Applicant’s industry; and the noun CLOUD has been widely used to
describe certain types of services involving remote software applications and
computer infrastructure. When Applicant’s mark is viewed as a whole, relevant
customers would readily perceive SOCIAL MARKETING CLOUD to mean a “cloud”
(i.e., network facilities, servers and software) whose purpose relates to “social
marketing.” To a person who knows what Applicant’s services are,28 it is clear that
the way in which this “cloud” relates to “social marketing” is that Applicant’s
network, software and data storage in the cloud are for the purpose of allowing
customers to track, collect, and use information gathered from social media.
Applicant argues that the meaning proposed by the Examining Attorney can be
reached only by inverting the word order of Applicant’s mark:

as generic with respect to the identified services. See Office Action of May 1, 2014 at 23-89;
and Office Action of November 20, 2014 at 18-86.
27 Applicant’s brief at 5, 20 TTABVUE 7.
28 See DuoProSS Meditech Corp., 103 USPQ2d at 1757.
Serial No. 85563074
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While “cloud social marketing” might conceivably convey
social media marketing services conducted in the “cloud,”
the reordering of the words in Applicant’s Mark changes
the effect … [Citations to record omitted.]29
We perceive no incongruity in the order of the words in Applicant’s mark, as they
are ordered in a standard structure of English usage, i.e., a noun preceded by the
words that modify it. Nor do we find that a customer would have to make a mental
leap or engage in other multi-step reasoning in order to understand the meaning of
the mark. The mark immediately describes a cloud-based service relating to social
marketing.
Applicant also argues that it is improper of the Examining Attorney to “parse” its
mark as SOCIAL MARKETING modifying CLOUD; but that it should properly be
viewed as SOCIAL modifying MARKETING CLOUD, which “conjures up images of
a ‘social’ type of ‘marketing cloud’ – an indeterminate concept.”30 Even if we view
the mark in this way, it makes as much descriptive sense as does SOCIAL
MARKETING modifying CLOUD. First, the record does not support Applicant’s
contention that “marketing cloud” is “an indeterminate concept.” The Examining
Attorney has adduced much evidence to show that the phrase “marketing cloud” has
been widely used as a descriptive term – possibly the generic name – of services like
those of Applicant. Among this evidence, we note the following:
Adobe Marketing Cloud … Marketers finally have a
complete, integrated solution for all their marketing
efforts. Analytics, social, media optimization, targeting,

29 Applicant’s brief at 5, 20 TTABVUE 7.
30 Id.
Serial No. 85563074
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web experience management – and now cross-channel
campaign management… 31
***
“Oracle Marketing Cloud Delivers the Only Fully
Integrated Digital and Social Marketing Solution to
Manage All Digital Interactions from a Single Platform.”32
***
“Responsys Adds Three Marketing Cloud Software
Veterans to Leadership Team” … Responsys, Inc.
(NASDAQ: MKTG), a marketing cloud software and
services leader, has made three strategic, senior level
hires …33
***
“Shift Open Marketing Cloud Debuts With Suite Of Best-
In-Class Apps” … Shift CEO James Borow said: “The
industry’s current marketing clouds can’t keep up with
the rapid pace of software innovation ….”34
***
“Marketo Expands Marketing Cloud Footprint with
Crowd Factory Acquisition.” Marketing Cloud specialist
Marketo is seeking to ‘redefine’ marketing automation
with the announcement of its first acquisition, Crowd
Factory …35
***
“Who is winning the Marketing Cloud wars?” … IBM
thought of it first, but Adobe got there before them.
Salesforce caught up quickly, HP’s right behind, and
Oracle’s buying its way to the party. Welcome to the

31 Advertisement at , Office Action of October 10, 2013 at 9-10. See also Office
Action of November 20, 2014 at 216-219.
32 Article at , Office Action of October 10, 2013 at 13.
33 Article at , id. at 33.
35 Advertisement at , id. at 41.
Serial No. 85563074
19
digital marketing cloud wars, where five legacy software
companies take each other on in the battle to win the
hearts and minds of CMOs across the land.36
***
“Who will Win the Race For The Marketing Cloud?” …
The arms race among top b-to-b brands to acquire,
partner with or build the best cloud suite of tools for the
CMO is in full swing …37
***
“Adobe and Salesforce in Close Race for Marketing Cloud”
… Proof points is where Salesforce most definitely has an
edge over all the other marketing cloud vendors …38
***
“Adobe emerges as marketing cloud leader, beating out
Salesforce, Oracle, IBM and more” [with accompanying
chart listing the “current offering” of Adobe, IBM,
Marketo, Oracle, salesforce.com, SAP, SAS Institute, and
Teradata].39
***
“How Adobe Plans to Win the Marketing-Cloud Battle”40
***
“Is it Better to Build or Buy Your Marketing Cloud?” …
Build versus buy is a debate that precedes digital
marketing clouds. It’s nothing new. … Calavas said he’s
worked at two of the five major marketing cloud

36 Article at , Office Action of November 20, 2014 at 112. See also id. at
123, 126, 129, 132, 135, 139, 142, 145 (related articles by the same author).
37 Article at , id. at 151.
38 Article at , id. at 158-160.
39 Article at , id. at 163.
40 Article at , id. at 169.
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providers. At Tealium, they often work with marketers
who are building their own cloud.41
***
“Teradata Updates Its Integrated Marketing Cloud”42
***
“Being Switzerland in the marketing cloud world war” …
Translation management firm Cloudwords is trying to be
the Switzerland of the global marketing cloud wars, but
how long can it maintain its own agnosticism?43
***
“Marketo CEO – marketing cloud wars for years as CMOs
build relationships with CIOs” … Marketing cloud
platforms will become a norm alongside CRM, ERP and
HCM, but not for a few years yet, argues Phil
Fernandez.44
***
Oracle Marketing Cloud … Modern Marketers use the
only solution with integrated cross-channel, content, and
social marketing with big data for enterprise B2B and
B2C.45
Further, the evidence shows that the term SOCIAL has been adopted – by
Applicant and others – as a jargon word meaning “social media”:
Social no longer lives in silos and can touch each corner of
the enterprise. Join us for an overview of how The
Salesforce Marketing Cloud cloud is helping companies
harness social and become true “customer companies.”46

41 Article at , id. at 174-175.
42 Article at , id. at 178.
43 Article at , id. at 181.
44 Article at , id. at 185.
45 Advertisement at , id. at 220.
46 Convention program, Applicant’s response of September 6, 2013 at 1557.
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***
Powered by Salesforce Chatter, an enterprise social
network, Salesforce Communities will put social and
mobile at the core of every community.47
***
In our guide we state “social is more than just a channel
or a tactic, it is a strategy that has to be present in every
aspect of your marketing.” …Awareness Inc. put out a
recent study … featuring insights on social from 34
business and b2b marketing … leaders …48
In light of this evidence, the concept conjured by Applicant of “a ‘social’ type of
‘marketing cloud’” is by no means “indeterminate” in meaning.49 Rather, Applicant’s
proffered interpretation of the phrase SOCIAL MARKETING CLOUD also clearly
signifies cloud technology deployed for purposes of marketing that involves social
media.
Applicant has pointed to evidence showing that the expression “social marketing”
has been used, in a sociological context, to mean the use of commercial marketing
techniques in order to promote socially desirable behavior, such as quitting smoking
or conserving environmental resources; and argues that Applicant has not applied
to register its mark for such services.50 This argument is unavailing. That a term
may have other meanings in other contexts does not matter if the mark is merely
descriptive in relation to the identified services. In re Abcor Development Corp., 200

47 “Salesforce.com Unveils Salesforce Communities – Ending the Era of Legacy Portal
Software,” Entertainment Close-up, id. at 689.
48 “Old v. New: The Evolution of the Term Social Marketing,” at , id. at
582.
49 See Applicant’s brief at 5, 20 TTABVUE 7.
50 Id. at 6-7, 20 TTABVUE 8-9.
Serial No. 85563074
22
USPQ at 218; DuoProSS Meditech Corp., 103 USPQ2d at 1757. In Applicant’s
actual field, as identified in the application, “social marketing” has been shown to
mean marketing activities involving the use of social media.
Finally, Applicant argues that we should bear in mind that words like “cloud,”
“web,” and “net” are actually “metaphors for the Internet,” rather than descriptive
or generic terms.51 To a customer who knows what the services are, however, the
mark SOCIAL MARKETING CLOUD conveys immediately, and not by
metaphorical indirection, information regarding features, functions, and purposes of
the services, namely, that Applicant provides services that involve the use of remote
servers and data storage to assist its clients with their marketing efforts through
social media.
The fact that Applicant’s mark might not be merely descriptive of some of the
services identified in the application has no import. In this case, the mark is merely
descriptive of at least some of the services in each International Class of the
identified services; accordingly, a refusal on grounds of mere descriptiveness is
appropriate. In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re
Stereotaxis Inc., 77 USPQ2d at 1089. We therefore agree with the Examining
Attorney that Applicant’s mark is merely descriptive of the identified services,
within the meaning of Section 2(e)(1).

51 Id. at 9, 20 TTABVUE 11.
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2. Applicant’s claim of acquired distinctiveness under Section 2(f).
Applicant argues that, even if its mark is merely descriptive, it is entitled to
registration under Section 2(f) because the MARKETING CLOUD component of the
mark has acquired distinctiveness as a source indicator of Applicant. Applicant
commenced use of the designation MARKETING CLOUD “at least as early as June
2011” in connection with services like those identified in the present application;
and “engaged in a significant broad-based launch of the integrated MARKETING
CLOUD offering” in September 2012.52 Applicant has submitted thousands of pages
of evidence which do, indeed, show that Applicant has enjoyed great success in its
business, has extensively promoted its services under the MARKETING CLOUD
designation, and has garnered much attention in the press.
As we have discussed above in our analysis of the meaning of “marketing cloud,”
the Examining Attorney’s evidence shows that observers of Applicant’s market,
including competitors of Applicant, have used the phrase “marketing cloud” to
describe cloud technology deployed for purposes of commercial marketing,
advertising and promotion of goods and services. Such evidence strongly indicates
that persons in the relevant market do not view the designation “marketing cloud”
as an indication of the source of services, but as a term that describes the nature of
a type of service offered by Applicant and a substantial number of its competitors.
In the face of such evidence, Applicant, in order to demonstrate that the term

52 Del Valle declaration ¶¶ 6, 7, Applicant’s response of September 6, 2013 at 19.
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MARKETING CLOUD has acquired distinctiveness as its own source indicator,
must come forward with substantial persuasive countervailing evidence.
There is no question that Applicant has promoted its MARKETING CLOUD
service with great vigor. However, the great majority of Applicant’s marketing
materials present the term MARKETING CLOUD in close association with the
mark “salesforce.” For example, the top of every page of certain promotional
brochures bears the following logo:53

Advertisements that display the asserted mark in this form do not, in themselves,
demonstrate that the relevant public has learned to perceive MARKETING CLOUD
as Applicant’s indicator of source, because customers could perceive the mark, as so
displayed, as merely the name of a category of service offered under the “salesforce”
mark. The same can be said of virtually any advertising materials or promotional
activities that use “salesforce” or “salesforce.com” together with MARKETING
CLOUD.
We have given particularly close attention to the examples of unsolicited press
and media coverage in the record.54 Virtually all of the press notices of record
discuss Applicant’s MARKETING CLOUD service only in close association with

53 See, e.g., Del Valle declaration, Exhibit N, Applicant’s response of September 6, 2013 at
1132-286.
54 Del Valle Exhibits J, K, and L, id. at 591-1073.
Serial No. 85563074
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references to the names “Salesforce” or “salesforce.com.” Such references to
“salesforce” and “salesforce.com” are so pervasive, and are combined so frequently
with MARKETING CLOUD in formulations such as “Salesforce Marketing Cloud”
and “Salesforce.com’s Marketing Cloud,” that they do not persuade us that the
writers clearly perceived MARKETING CLOUD as a service mark, rather than as a
descriptive term identifying a category of service offered by Applicant under its
Salesforce mark.55 In view of the very weighty evidence adduced by the Examining
Attorney to show that relevant persons, including the press, treat “marketing cloud”
as a descriptive or generic term, Applicant’s press notices are of equivocal meaning:
it is not clear whether the journalists would recognize MARKETING CLOUD as a
source indicator apart from the identifiers “Salesforce” or “salesforce.com.” In order
to outweigh the evidence put forth by the Examining Attorney, which shows directly
that relevant persons have viewed “marketing cloud” as a type of service, not an
indicator of source, Applicant must produce more direct and less equivocal evidence
of customers’ perceptions of the mark.
We have also noted with special interest Exhibit M to the Del Valle declaration,
which Applicant describes as “representative examples of third party social media
references [and] consumer engagement …”56 Clearly, such consumer “engagements”
on media such as Twitter, Facebook, and YouTube have the potential to
demonstrate whether consumers perceive Applicant’s use of MARKETING CLOUD

55 See, e.g., id. at 592 (“The new Salesforce Marketing Cloud was announced at Dreamforce
last week …”; id. at 597 (“Does the Marketing Cloud From Salesforce.com Provide the
Silver Bullet for Marketers?”).
56 Applicant’s response of September 6, 2013 at 1074-131.
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as a source indicator. However, most of the “tweets” and other messages from
consumers are extremely laconic and are unrevealing as to the consumers’
perceptions of the wording at issue. For example, the fact that a consumer
“retweets” an article from Adweek entitled “Salesforce Ties Facebook Custom
Audiences, Twitter Keyword Targeting Into Marketing Cloud”57 tells us that the
consumer saw the article, but it tells nothing about the consumer’s perception of the
words “Marketing Cloud.” The fact that a person directs a tweet to
“@marketingcloud” with the observation that “With 7,980,000 Yankees are the
MLB’s most social team!”58 shows that the person has interacted with Applicant and
been exposed to the MARKETING CLOUD designation, but it does not show that
she perceives MARKETING CLOUD as a service mark, rather than as a category of
services offered by Applicant.
If the distinctiveness of the wording MARKETING CLOUD were not so badly
impugned by record evidence, the types of evidence submitted by Applicant might
be effective to demonstrate acquired distinctiveness. However, after careful
consideration of this voluminous record, we find that the Examining Attorney’s
evidence, which shows actual use in the relevant marketplace of “marketing cloud”
as a descriptive or generic term for services similar to those of Applicant, outweighs
Applicant’s evidence, which merely shows that Applicant has vigorously promoted
its services by use of the designation MARKETING CLOUD and has won
substantial attention in the press. We therefore find that Applicant has not

57 Id. at 1080.
58 Id. at 1086.
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demonstrated that the portion of the mark consisting of MARKETING CLOUD has
acquired distinctiveness as Applicant’s source indicator.
Accordingly, we affirm the Examining Attorney’s refusal to register the mark
SOCIAL MARKETING CLOUD on grounds that the mark is merely descriptive
under Trademark Act Section 2(e)(1) and that no portion of the mark has been
shown to have become distinctive of Applicant’s services within the meaning of
Trademark Act Section 2(f).
Decision: The refusal to register is affirmed.