Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1035078

Filing date: 02/11/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Notice of Opposition

Notice is hereby given that the following party opposes registration of the indicated application.

Opposer Information

Name Caterpillar Inc.

Entity Corporation Citizenship Delaware

Address 510 Lake Cook Road, Suite 100Deerfield, IL 60015UNITED STATES

Attorney informa-tion

Naresh KilaruFinnegan Henderson Farabow Garrett & Dunner, LLP901 New York Avenue, NWWashington, DC 20001UNITED STATESdocketing@finnegan.com, naresh.kilaru@finnegan.com, christoph-er.foley@finnegan.com, laura.johnson@finnegan.com, TTAB-Leg-al-Assistants@finnegan.com2024084000

Applicant Information

Application No 88351527 Publication date 02/11/2020

Opposition FilingDate

02/11/2020 Opposition Peri-od Ends

03/12/2020

Applicant Star Metal Fluids, LLC6401 W Bluefield AveGlendale, AZ 85308UNITED STATES

Goods/Services Affected by Opposition

Class 004. First Use: 2017/06/01 First Use In Commerce: 2017/06/01All goods and services in the class are opposed, namely: Industrial lubricants; Lubricating oils

Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d)

Dilution by blurring Trademark Act Sections 2 and 43(c)

Marks Cited by Opposer as Basis for Opposition

U.S. RegistrationNo.

85748 Application Date 08/19/1911

Registration Date 03/12/1912 Foreign PriorityDate

NONE

Word Mark CATERPILLAR

Design Mark

Description ofMark

NONE

Goods/Services Class 004. First use: First Use: 1910/01/00 First Use In Commerce: 1910/01/00

LUBRICATING-OILS

U.S. RegistrationNo.

777703 Application Date 11/20/1963

Registration Date 09/29/1964 Foreign PriorityDate

NONE

Word Mark CAT

Design Mark

Description ofMark

NONE

Goods/Services Class 004. First use: First Use: 1962/11/27 First Use In Commerce: 1962/11/27

Anti-Seize and Sealing Lubricant

U.S. RegistrationNo.

2137147 Application Date 02/05/1997

Registration Date 02/17/1998 Foreign PriorityDate

NONE

Word Mark CAT

Design Mark

Description ofMark

NONE

Goods/Services Class 004. First use: First Use: 1987/02/02 First Use In Commerce: 1987/02/02

industrial oils for engines, transmissions, hydraulic systems, and drive train com-partments

U.S. RegistrationNo.

4045652 Application Date 09/26/2007

Registration Date 10/25/2011 Foreign PriorityDate

NONE

Word Mark CAT

Design Mark

Description ofMark

The mark consists of a rectangular shape with a diagonal edge, containing theword "CAT" with a triangle below the letter "A".

Goods/Services Class 001. First use: First Use: 2008/12/31 First Use In Commerce: 2008/12/31

Chemicals for use in industry, agriculture, horticulture, and forestry except fungi-cides, herbicides, insecticides and paraticides; unprocessed artificial resins, un-

processed plastics; adhesives usedin industry; cement for repairs, namely, ad-hesive cement for bonding, sealing and patching cork, leather, rubber, and met-al; anti-freeze; coolants; chemical preparations in the nature of conditionersforenhancing the performance of enginecooling systems; chemical preparations inthe nature of cleaners for enhancing the performance of engine cooling systems;chemical preparations for locking screw threads; battery fluid, namely, acidu-lated water for recharging batteries; color brightening chemicals for industri-aluse; chemical preparations in the nature of filtering materials for industrial use;hydraulic fluids; fuel additives, namely, chemical additives for fuel treatment;compositions for repairing vehicletires, namely, rubber cement for repairingpneumatic tires; artificial and synthetic resins

Class 002. First use: First Use: 2008/12/31 First Use In Commerce: 2008/12/31

Paints, varnishes, lacquers; preservatives against rust in the nature of a coatingand against deterioration of wood; colorants; mordants used in the manufactur-ing of coatings; raw natural resins; primers, and paint thinners; metal preservat-ives in the nature of a coating; coatings in the form of paints for use in themanu-facture of vehicles and on parts ofvehicles; fireproof cement coatings

Class 004. First use: First Use: 2008/12/31 First Use In Commerce: 2008/12/31

Industrial oils and greases; all-purpose lubricants; dust absorbing compositionforuse on unpaved roads, dust wetting and dust binding compositions; fuels includ-ing motor spirit and illuminants, namely, lighting fuels; diesel oil; motor fuel; non-chemical fuel additives; anti-seizure lubricating compounds for use on engines;waxing compositions, namely, paraffin wax; lubricant designed for use in balland roller bearings and bushings

Class 006. First use: First Use: 2008/12/31 First Use In Commerce: 2008/12/31

Non-electric cables and wires of commonmetals; pipes and tubes of metal;metalplugs, metal straps for handling loads,metal pipe clips, metal nuts, metalbolts, metal screws, metal sealing rings; metal ball lock pins, metal washers,metal seals, metal tie downs, metal pipe nipples, binding strips of metal used onpackaging, metal bungs, metal caps for tubing ends, metal closures for contain-ers,metal pipe collars, metal clamps, metalcouplings for use with hoses, metalhooks, metal nails, metal pegs, metal rivets, metal storage tanks, metal drainplugs, metal cotter pins, metal drawbar pins, metal clevis pins, metal lockingpins,metal eye bolts, metal snap rings; metal screw thread inserts; metallic draintraps and drain caps; metal pipe extensions; metal debris deflectors; steel rein-forcing grids for use in paving processes; clad steel plates; metal track hard-ware, namely, track links, track shoes and track pins; metal welding rods; metalchains, metal slings for loading and pulleys; metal bells; metal locks and pad-locks; metal number plates; knobs of metal; non-luminous and non-mechanicalmetal signs; non-luminous and non-mechanical metal signalling panels; reinfor-cing materials of metal for building purposes; parts and fittings for all the afore-said goods sold as a unit with the goods; parts for land vehicles, agricultural ma-chinery, and earth moving machinery, namely, metal gaskets for machinery andland vehicles, metal pipe connectors, metal pipe fittings, metal cylinders for com-pressedgas or liquids sold empty, metal threaded fasteners, metal hose clamps,and metal hose fittings

Class 007. First use: First Use: 2008/12/31 First Use In Commerce: 2008/12/31

Motors and engines not for land vehicles; machine couplings and transmissioncomponents except for land vehicles; valves being parts of machines; sparkplugs; air filters as parts of machines or engines for mechanical purposes; waterregulators being parts of machines; oil filters; couplings for machines; assemblypresses, namely, industrial machine presses; starters for motors and engines;electric pumps; excavators; bulldozers; earthmoving machines, namely, loaders;feller bunchers; earth moving machines, namely, scrapers; asphalt paving ma-chines; cutting machines; vibratory soil compactors, soil compactors, vibratoryasphalt compactors, and pneumatic compactors; forestry machines, namely,skidders; oil, air, and gas filters for motors and engines; belts for machines;

blades as machines parts; steam rollers, being parts of machines; power-op-erated lifting and moving equipment, namely, pipe laying machines; attachmentsfor vehicles, namely, grapple buckets for moving earth and looseobjects; hy-draulic jacks; electric welding machines; pavement profilers; earth moving ma-chines, namely, scarifiers, motor graders; combustion engine fuel nozzles; waterseparators for use in engines;fuel heaters for engines; power-operated cultivat-ors and harvesters; agricultural machines, namely, threshers; road heading ma-chines, tunnel heading machines, cold heading machines; agricultural machines,namely, reapers; hay binding machines; agricultural machines, namely, mowingmachines, and tractor-towed harrows; ploughs and tractor-towed hay rakes;agitators for circulating liquid media; aircondensers; alternators for land vehicles;anti-friction bearings for machines;anti-friction pads for machines; anti-pollutiondevices for motors and engines;axles for machines; ball rings for bearings formachines; bearing brackets for machines; engine bearings; belt conveyors; en-gines and motors for boats; brake linings for machines other than for vehicles;brake segments for machines other than for vehicles; brake shoes for machinesother than for vehicles; brushes being parts of machines; carburetors; com-pressed air machines; compressed air pumps;compressors for machines; con-densing installations, namely, air condensers and axial fan condensers; con-necting rods for machines, motors, and engines; controlcables being parts ofmachines, engines, or motors; current generators; millingcutters; cutting ma-chines, cylinder heads for engines; cylinders for machines; cylinders for motorsand engines; drilling bits being parts of machines; drilling heads being parts ofmachines; drilling machines, power drills; dynamo belts; dynamo brushes; dy-namos; engines, other than for land vehicles; fan belts for motors and engines;fans for motors and engines; fuel conversion apparatus for internal combustionengines; fuel economizers for motors and engines; gear boxes other than forland vehicles; transmissiongears for machines, other than for landvehicles; geargrinding machines; precision grinding machines; guards being parts of ma-chines; hammers being parts of machines; pneumatic hammers; handling appar-atus, namely, loading and unloading machines; hoists; hoppers for mechanicaldischarging; power jacks; lawnmowers; lift belts; lifting installation for the trans-port of goods; powered loading ramps in the form of conveyors; lubricatingpumps; lubricators being parts of machines; machine fly wheels; machinewheels; metal working machines; spray guns for paints; painting machines; pis-tons for motors; pneumatic transporters; pulleys being parts of machines; elec-tric pumps; rammers; reduction gears other than for land vehicles; mechanicalpower shovels; shaft couplings for machines; bearings fortransmission shaftsbeing parts of machines; spraying machines; superchargers for motors and en-gines; threading machines; threshing machines; transmission chains and shafts,other than for land vehicles; transmissions for machines; turbines other than forland vehicles; turbocompressors; vehicle washing installations;vulcanization ma-chines; waste disposersbeing parts of machines; watering machines for agricul-tural purposes; parts andfittings for all the aforesaid goods sold as a unit with thegoods; mechanical engine parts for land vehicles, agricultural machinery, andearth moving machinery, namely, starting motors, alternators, pistons, cylinderheads, cooling systems parts, turbochargers, lubricating systems parts, air com-pressors, and blocks;crank shafts for engines, engine camshafts, engine bear-ings; mufflers for engines and motors; engine exhaust caps; exhaust silencersfor engines; radiators andradiator caps for vehicles; exhausts for engines; hand-held gas welding apparatus, namely, heat welding guns; electric cutting torches

Class 008. First use: First Use: 2008/12/31 First Use In Commerce: 2008/12/31

Hand tools, namely, taps and dies; handjacks; cable cutters; wire cutters; handtools, namely, wrenches; knives; glassinstallation tools, namely, glass cutters;hand-operated crimping tools and hand-operated crimping irons; hand held cut-ting tools; hand held hose cutters; handdrills and drill bits for hand drills; manu-ally operated grease guns; hand tools, namely, socket wrenches, and socketsets; torque wrenches; parts and fittingsfor all the aforesaid goods sold as a unitwith the goods; vices

Class 009. First use: First Use: 2008/12/31 First Use In Commerce: 2008/12/31

Apparatus for recording, transmission or reproduction of sound or images;blankmagnetic data carriers; blank recordingdiscs; data processing equipmentand computers; computer hardware and software for sensing and recording op-erational data to monitor the performance and maintenance needs of vehicles,equipment, and machinery used for earth moving, earth conditioning, materialhandling, construction, mining, paving, agriculture, and forestry; television sets;electric cableand wire; electricity conduits, electric switches, pressure switches;electrical connectors, cable jump leads, electrical fuses, circuit testers, voltagetesters; electric fuse holders, transformers,battery testing apparatus for sale inkit form; thermostats, pressure gauges, and leveling rods; tape measures andrules; microscopes, tachometers; thermometers; anti-intrusion alarms, electronicwarning horns, flashing safety lights, optical reflectors, reflective mirrors to pre-vent accidents, aerials, and battery chargers; electric couplings; metered petrolpumps; surveyor's levels; electronic locks; radios; batteries; speed checkingap-paratus for vehicles, namely, sensors; battery cables; electric connectors forsale in kit form; electrical terminals; probes for testing integrated circuits; am-meters; battery testers, gas detectors; flow meters; ohmmeters; welding torches;battery ground straps; battery tie downs; emergency jump start apparatus,namely, jumper cables; voltage converters; welding apparatus, namely, weldingrespirators, welding helmets, welding goggles, welding jackets, welding gloves,welding coats, and welding blankets; parts and fittings for all the aforesaidgoodssold as a unit with the goods; parts and fittings for land vehicles, agricul-tural machinery, and earth moving machinery, namely, amplifiers for wirelesscommunications, antennas, antennas for wireless communications apparatus;audio equipment for vehicles, namely, stereos, speakers, amplifiers, equalizers,crossovers,and speaker housings, batteries for vehicles, devices for wireless ra-dio transmission, electric control panels, electric luminescent display panels,electric relays; electronic and optical communications instruments and compon-ents, namely,optical transmitters; electronic and optical communications instru-ments and components, namely, optical receivers; electronic and optical com-munications instruments and components, namely, digital transmitters, electron-ic control systems for machines, global positioning systems,laser object detect-ors for use on vehicles, navigation apparatus for vehicles in the nature of on-board computers, radios for vehicles, voltage regulators, voltage stabilizers, andvoltmeters; machine parts, namely, control mechanisms for machines, engines,or motors; fuel/air ratio controls for engines; speed governors for machines, en-gines, and motors

Class 011. First use: First Use: 2008/12/31 First Use In Commerce: 2008/12/31

Light bulbs, head light bulbs, tail light bulbs, vehicle turn signal light bulbs, dash-board light bulbs; electric torches for lighting; lights for vehicles, lamps; reflectorsfor vehicles; air conditioning apparatus; air conditioning filters; defrosting appar-atus for vehicles; parts and fittings for all the aforesaid goods sold as a unit withthe goods; parts and fittings for land vehicles, agricultural machinery, and earthmoving machinery, namely, backup lights for land vehicles, coolant recoverysystems comprising reservoirs, pumps, filters, and cleaners; electric light bulbs,LED light bulbs, rear lights for vehicles, and valves as part of radiators

Class 012. First use: First Use: 2008/12/31 First Use In Commerce: 2008/12/31

Land vehicles; tractors and tractor engines; haulage trucks and trailer wag-ons;vehicle chassis; tires for vehicle wheels; vehicle wheels; vehicle parts,namely, tracks; trucks; dump trucks; land vehicles incorporating loading, com-pacting,pipe laying, and grading apparatus; tire valves for vehicle tires; hydrauliccircuits and hydraulic adapters for connecting components of hydraulic systemsin vehicles; trailer couplings for vehicles; air pumps for vehicles; horns forvehicles; rearview mirrors, side view mirrors; mudguards for vehicles, mud flapsforvehicles, mud spray guards for vehicles, mud spray flaps for vehicles; seatsand seat belts for vehicles; windscreen wipers and windscreen wiper blades;anti-skid chains for vehicles; brakes for vehicles; brake linings for vehicles; hy-

draulic apparatus for use in moving work tools attached to vehicles and not forengines or motors, namely, hydraulic drives,hydraulic gears, hydraulic pumps,and hydraulic shock absorbers; semi-fitted vehicle covers; parts and fittings forallthe aforesaid goods sold as a unit withthe goods; parts and fittings for landvehicles, namely, engines, connecting rods for vehicles other than parts of mo-tors and engines, transmissions for land vehicles, and structural, repair, and re-placement parts therefor

Class 017. First use: First Use: 2008/12/31 First Use In Commerce: 2008/12/31

Non-metal seals for use on pipe joints and flanges; insulation tapes; plastictapes used as insulating, stopping and packing materials; adhesive tapes for in-dustrial and commercial use; semi-processed brake lining material; clutch lin-ings;cylinder jointing of rubber; cylinder jointing of gum; cylinder jointing ofplastics; non-metal gaskets for commercial and industrial applications; insulatinggloves; coupling and joints not of metal; rings of rubber or of plastic for use aspipe connection seals; sealing plugs made primarily of rubber; parts and fittingsfor all the aforesaid goods sold asa unit with the goods; parts and fittings for landvehicles, agricultural machines, and earth moving machines, namely, connectinghoses for vehicle radiators, electrical insulating tape, flexible plastic hoses foruse in ventilation, hosesfor air conditioners made of rubber, hydraulic hosesmade of rubber, and non-metal oil hoses; electrical tape; moisturewicking seal-ant for fasteners, silicone-based sealant, adhesive sealant for industrial use,pipe sealant for use in sealing pipe joints and fittings

Class 020. First use: First Use: 2008/12/31 First Use In Commerce: 2008/12/31

Bins, not of metal; cable or pipe clipsof plastic; plastic key cards; display casesof wood or plastic; closures not of metal for containers; containers not of metalfor commercial use; ladders of wood or plastic; pulleys of plastic; toolhandles ofwood or plastic; transport pallets, not of metal; valves of plastic,other than ma-chine parts

U.S. RegistrationNo.

3162544 Application Date 12/05/2005

Registration Date 10/24/2006 Foreign PriorityDate

NONE

Word Mark CAT

Design Mark

Description ofMark

The mark consists of a triangle below the letter A in CAT.

Goods/Services Class 004. First use: First Use: 1988/01/01 First Use In Commerce: 1988/01/01

Greases, lubricants and oils for land vehicles; greases, lubricants and oils forengines; industrial greases, lubricants and oils; hydraulic oils; greases, lubric-

ants and oils for industrial machinery; non-chemical engine treatments and ad-ditives for engine oils, gasoline and diesel fuels, transmission fluids and coolants

U.S. RegistrationNo.

4802080 Application Date 06/09/2014

Registration Date 09/01/2015 Foreign PriorityDate

NONE

Word Mark CAT

Design Mark

Description ofMark

The mark consists of the word "CAT" with a triangle below the letter "A".

Goods/Services Class 004. First use: First Use: 1988/01/01 First Use In Commerce: 1988/01/01

Greases, lubricants, oils, and non-chemical engine treatments and additivesforengine oils, diesel fuel, transmission fluids and cooling systems for engines,compressors, generators, pumps, and vehicles; greases, lubricants, oils, andnon-chemical engine treatments and additives for engine oils, diesel fuel, trans-mission fluids and cooling systems for machines, machine tools, and partstherefor,for use in agriculture, compaction, construction, demolition, earth condi-tioning, earth contouring, earth moving, forestry, landscaping, lifting, marinepropulsion, material handling, mining, mulching, oil and gas distribution, oil andgasexploration, oil and gas production, paving, pipelaying, power generation,roadbuilding and repair, site preparation and remediation, tunnel boring, and ve-getation management

U.S. RegistrationNo.

4804263 Application Date 06/09/2014

Registration Date 09/01/2015 Foreign PriorityDate

NONE

Word Mark CAT

Design Mark

Description ofMark

The mark consists of the word "CAT" with a triangle below the letter "A".

Goods/Services Class 001. First use: First Use: 1998/01/01 First Use In Commerce: 1998/01/01

Anti-freeze chemicals for engines, compressors, generators, pumps, andvehicles; chemical additives for fuel treatment for engines, compressors, gener-ators, pumps, and vehicles; chemical additives for enhancing the performance oflubricating oils, greases and internal combustionengine fuels for engines, com-pressors, generators, pumps, and vehicles; chemical fluid additives for coolants,lubricants, oils, and fuels for engines, compressors, generators, pumps, andvehicles; chemical fluid additives for lubricants, oils, and fuels for machines, ma-chine tools, and parts therefor, for use in agriculture, compaction, construction,demolition, earth conditioning, earth contouring, earth moving, forestry, land-scaping, lifting, marine propulsion, material handling, mining, mulching, oil andgas distribution, oil and gas exploration, oil and gas production, paving, pipelay-ing, power generation, road building and repair, site preparation and remedi-ation, tunnel boring, and vegetation management

Attachments 71058278#TMSN.png( bytes )77289081#TMSN.png( bytes )78766626#TMSN.png( bytes )86304594#TMSN.png( bytes )86976329#TMSN.png( bytes )2020.02.11 Notice of Opposition 88351527 VIBRA-CAT Star Metal Fluids,LLC.pdf(3915295 bytes )

Signature /Naresh Kilaru/

Name Naresh Kilaru

Date 02/11/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

CATERPILLAR INC.,

Opposer,

v. STAR METAL FLUIDS, LLC

Applicant.

Opposition No. ___________ Application Serial No. 88351527

Mark: Filed: March 22, 2019

NOTICE OF OPPOSITION

Opposer Caterpillar Inc. (“Caterpillar”) believes that it will be damaged by the

registration of Application Serial No. 88351527 for the mark for “industrial

lubricants; lubricating oils” in Class 4, owned by Star Metal Fluids, LLC (“Applicant”) and

opposes it. Allegations with respect to Caterpillar are based upon actual knowledge. All other

allegations are based upon information and belief.

Caterpillar and Its Famous CAT Mark

1. Caterpillar Inc., of 510 Lake Cook Road, Suite 100, Deerfield, Illinois 60015, is a

worldwide leader in the manufacture, sale and servicing of a wide variety of industrial machines,

on and off-road vehicles, locomotives, engines and gas turbines. Caterpillar traces its origins to

the 1925 merger of the Holt Manufacturing Company and C.L. Best Tractor Company, which

created Caterpillar Tractor Company. For at least the last seventy years, the company’s products

and services have been offered, sold, and distributed under the CAT mark, which was adopted in

the late 1940s and serves as the cornerstone of the Caterpillar brand portfolio. The company’s

products and services are distributed and serviced by a worldwide network of independent dealers

2

licensed to conduct business under the CAT mark. Further, the CAT mark is prominently

featured on Opposer’s highly visible machines, which are seen around the world. 

2. Caterpillar has appeared on the Fortune 500 list for 24 consecutive years and

ranks number 43 on Fortune’s 2018 Most Admired List. In 2018, company revenues exceeded

$54 billion—with the vast majority of these revenues coming from sales of CAT-branded

products and related services.

3. Opposer’s CAT brand is considered by many financial analysts as a leading

indicator of the direction of the global economy. Accordingly, Caterpillar’s CAT-branded

products and services receive extensive unsolicited publicity and media attention. CAT-branded

products are regularly seen or referenced in television programs, online publications, newspapers

and magazines, including Bloomberg, Business Insider, CBS, CNN, Chicago Tribune, Forbes,

London Times, New York Times and Wall Street Journal, to name a few. The CAT trademark is

also widely known by virtue of the fact that shares of Caterpillar stock are traded on the New

York Stock Exchange under the CAT mark.

4. The CAT mark has also been promoted online through various company websites,

popular social-networking websites (including Facebook, Twitter, and YouTube), and

advertising placed on third-party websites.

5. Caterpillar’s CAT trademark identifies a wide range of products and services

offered by Caterpillar. For instance, there are 1.4 million CAT parts, including engine parts,

tires, batteries, filters, gears, belts, fuel system components, gasket kits, and transmissions, all

available for purchase on Caterpillar’s website.

3

6. Caterpillar has for decades offered many greases, coolants and lubricating oils for

specific applications and components. As explained in The Caterpillar Story, a history of the

company published in 1984:

The company and its dealers began to educate diesel customers on the importance of using clean fuel of the right type. But while fuel problems proved relatively easy to solve, difficulties with lubricating oil were tougher. Working with oil company representatives, Caterpillar engineers developed testing equipment and procedures. By the mid-1930s a promising group of oil additives had been identified. Oil companies began to market lubricants incorporating these ingredients as ‘suitable for use in Caterpillar diesels.’ ‘Compounded’ lubricating oils used today in virtually all internal combustion engines are a direct outgrowth of this cooperative research effort. Yet even before oil problems had been solved, demand grew for Caterpillar’s diesel tractors and engines. While competitors struggled to bring out their own diesel models, Caterpillar moved swiftly to the forefront of U.S. manufacturers. In 1933 the company’s diesel production exceeded that of the entire United States in the preceding year. Within a few more years Caterpillar was among the world’s largest producers of diesel power—and had the world’s only moving assembly line for diesel engines.

7. Since adoption of the CAT mark in the late 1940s, CAT-branded fluids are

designed specifically for CAT machines and offer improved life and engine performance. See

[https://parts.cat.com/en/catcorp/machine-fluids].

4

8. Caterpillar obtained its first trademark registration for lubricating oils under the

CATERPILLAR name and mark on March 12, 1912. The company obtained a registration for

the CAT mark covering “anti-seize and sealing lubricant” on September 29, 1964.

9. Caterpillar continued to build on its knowledge of lubricating oils and engine

performance. Indeed, since 1987 Caterpillar and ExxonMobil have worked together on world-

class product research that has resulted in the creation of lubricant technologies that work as a

system with the machine and engine to provide the highest performance, while lowering the

operating costs for Caterpillar customers. See

[https://www.machinerylubrication.com/Read/25623/ExxonMobil-Lubrication-Agreeement-

Caterpillar].

5

CAT-branded fluids include lubricants, diesel engine oil, final drive and axle oil, drive train oil,

and hydraulic oil, which are sold at CAT parts stores.

10. Caterpillar also leases a wide variety of products in connection with its CAT

trademark, and has done so for many years. These products include its well-known CAT-

branded earthmoving machines, excavators, skid steer loaders, backhoes, pavers, compactors,

work tools, vehicles, trucks, life equipment, electrical products, lights, and power generators.

These products are leased through retail stores operating under the mark . With

more than 1,300 locations around the world, CAT rental stores offer the largest construction

equipment rental fleet in the world.

11. For over half a century, CAT-branded products have been ubiquitous throughout

the United States. For example, at any given time, tens of thousands of Caterpillar’s black-and-

yellow vehicles—all prominently displaying the CAT mark—are conspicuously present across

the country:

6

12. Caterpillar has also had an expansive trademark licensing program for its CAT

mark for over two decades that has generated revenues in the hundreds of millions of dollars, and

its popular CAT-branded products encompass a wide range of products including clothing,

footwear, and headwear.

13. As part of its efforts to promote the CAT brand to the public, Caterpillar has also

sponsored a NASCAR team for many years. The CAT team is currently led by Daniel Hemric,

who has 20 top-five finishes. The NASCAR CAT Racing Team is featured at

www.catracing.com and its CAT-branded car is shown below:

7

14. In 2019, Caterpillar sponsored an all-female team in the International Motor

Sports Association (IMSA) led by Jackie Heinrich in Car No. 57:

The all-female racing team is also featured at www.catracing.com.

15. By virtue of the fact that the CAT mark has been in use for nearly 70 years, has

been promoted extensively through a range of media (including product placement in feature

films, on national television, and in national magazines and newspapers), and has generated

hundreds of billions of dollars in revenues, the CAT mark has become a household name and is

famous.

16. To protect the goodwill in the CAT mark, Caterpillar has obtained several

thousand trademark registrations in more than 150 countries. Caterpillar owns, among others,

the following valid and subsisting U.S. trademark registrations:

Mark Reg. No.

Issue Date Goods/Services

First Use in Commerce

CATERPILLAR 0085748 03-12-1912

Lubricating oils First Use in Commerce: 01-00-1910

CAT 0777703 09-29-1964

Anti-seize and sealing lubricant in Class 4 First Use in Commerce: 11-27-1962

CAT 2137147 02-17-1998

Industrial oils for engines, transmissions, hydraulic systems, and drive train compartments in Class 4 First Use in Commerce: 02-02-1987

8

Mark Reg. No.

Issue Date Goods/Services

First Use in Commerce

4045652 10-25-2011

A variety of goods in Classes 2, 6, 7, 8, 9, 11, 12, 17 and 20 and

Chemicals for use in industry, agriculture, horticulture, and forestry except fungicides, herbicides, insecticides and paraticides; unprocessed artificial resins, unprocessed plastics; adhesives used in industry; cement for repairs, namely, adhesive cement for bonding, sealing and patching cork, leather, rubber, and metal; anti-freeze; coolants; chemical preparations in the nature of conditioners for enhancing the performance of engine cooling systems; chemical preparations in the nature of cleaners for enhancing the performance of engine cooling systems; chemical preparations for locking screw threads; battery fluid, namely, acidulated water for recharging batteries; color brightening chemicals for industrial use; chemical preparations in the nature of filtering materials for industrial use; hydraulic fluids; fuel additives, namely, chemical additives for fuel treatment; compositions for repairing vehicle tires, namely, rubber cement for repairing pneumatic tires; artificial and synthetic resins in Class 1 First Use in Commerce: 12-31-2008 Industrial oils and greases; all-purpose lubricants; dust absorbing composition for use on unpaved roads, dust wetting and dust binding compositions; fuels including motor spirit and illuminants, namely, lighting fuels; diesel oil; motor fuel; non-chemical fuel additives; anti-seizure lubricating compounds for use on engines; waxing compositions, namely, paraffin wax; lubricant designed for use in ball and roller bearings and bushings in Class 4 First Use in Commerce: 12-31-2008

3162544 10-24-2006

Greases, lubricants and oils for land vehicles; greases, lubricants and oils for engines; industrial greases, lubricants and oils; hydraulic oils; greases, lubricants and oils for industrial machinery; non-chemical engine treatments and additives for engine oils, gasoline and diesel fuels, transmission fluids and coolants in Class 4 First Use in Commerce: 01-01-1988

9

Mark Reg. No.

Issue Date Goods/Services

First Use in Commerce

4802080 09-01-2015

Greases, lubricants, oils, and non-chemical engine treatments and additives for engine oils, diesel fuel, transmission fluids and cooling systems for engines, compressors, generators, pumps, and vehicles; greases, lubricants, oils, and non-chemical engine treatments and additives for engine oils, diesel fuel, transmission fluids and cooling systems for machines, machine tools, and parts therefor, for use in agriculture, compaction, construction, demolition, earth conditioning, earth contouring, earth moving, forestry, landscaping, lifting, marine propulsion, material handling, mining, mulching, oil and gas distribution, oil and gas exploration, oil and gas production, paving, pipelaying, power generation, road building and repair, site preparation and remediation, tunnel boring, and vegetation management in Class 4 First Use in Commerce: 01-01-1988

4804263 09-01-2015

Anti-freeze chemicals for engines, compressors, generators, pumps, and vehicles; chemical additives for fuel treatment for engines, compressors, generators, pumps, and vehicles; chemical additives for enhancing the performance of lubricating oils, greases and internal combustion engine fuels for engines, compressors, generators, pumps, and vehicles; chemical fluid additives for coolants, lubricants, oils, and fuels for engines, compressors, generators, pumps, and vehicles; chemical fluid additives for lubricants, oils, and fuels for machines, machine tools, and parts therefor, for use in agriculture, compaction, construction, demolition, earth conditioning, earth contouring, earth moving, forestry, landscaping, lifting, marine propulsion, material handling, mining, mulching, oil and gas distribution, oil and gas exploration, oil and gas production, paving, pipelaying, power generation, road building and repair, site preparation and remediation, tunnel boring, and vegetation management in Class 1 First Use in Commerce: 01-01-1998

10

17. These registrations are individually and collectively referred to as the “CAT

Marks.” Printouts from the U.S. Patent and Trademark Office’s TESS/TSDR databases,

including assignment information, for the registrations listed above are attached as Exhibit A.

18. Each of these registrations issued well before the March 22, 2019 filing date of

the opposed application and the June 1, 2017 first-use/use-in-commerce date alleged by

Applicant. The existence of these valid and subsisting federal trademark registrations is prima

facie evidence of the validity of the marks and Caterpillar’s ownership of them. Moreover, the

registrations are incontestable pursuant to 15 U.S.C. § 1065(b) and constitute conclusive

evidence of Caterpillar’s exclusive right to use the marks for the products and services specified

in the registrations pursuant to 15 U.S.C. §§ 1065 and 1115(b).

19. As a result of the distinctive nature and inherent strength of the CAT Marks;

widespread use, advertising, publicity, and promotion; and billions of dollars of sales, the

CAT Marks have been well-known, commercially strong, and famous since long before the

March 22, 2019 filing date of Applicant’s mark and the June 1, 2017

First-Use/Use-In-Commerce date alleged by Applicant..

20. The Trademark Trial and Appeal Board has expressly acknowledged the fame of

the CAT mark on several occasions. See, e.g., Caterpillar Inc. v. Big Cat Energy Corporation,

Opposition No. 91193704 (57 TTABVUE 31) (“the CAT mark has reached an extraordinary

level of fame”); see also Caterpillar, Inc. v. Pave Tech, Inc., 2007 TTAB LEXIS 186, *15

(TTAB Mar. 12, 2007) (finding a likelihood of confusion between the “famous” CAT mark and

the mark PAVERCAT for paving machines and attachments); Caterpillar Inc. v. Kelly, 2015

TTAB LEXIS 407, *26, 58-59 (TTAB Sept. 30, 2015) (finding a likelihood of confusion

between the “famous” CAT mark and the mark PETRACAT for oil and gas well testing

11

services); Caterpillar Tractor Co. v. Gehl Co., 177 USPQ 343, 345 (TTAB 1973) (finding a

likelihood of confusion between the “well-known” CAT mark and the mark HYDRACAT for

vehicles); Caterpillar Tractor Co. v. Katrack Vehicle Co., 172 USPQ 409, 411 (TTAB 1972)

(finding a likelihood of confusion between the “well-known” CAT mark and the mark KATRAK

for vehicles).

Applicant and its Mark

21. Applicant is a limited liability company of Arizona with an address at 6401 W.

Bluefield Avenue, Glendale, Arizona 85308..

22. On March 22, 2019, Applicant filed Application Serial No. 88351527 for the

mark for (as amended) “Industrial lubricants; lubricating oils” in Class 4. The

application alleged a First-Use/Use-in-Commerce date of June 1, 2017.

Count One

Likelihood of Confusion, 15 U.S.C. § 1052(d)

23. Caterpillar repeats and realleges each and every allegation set forth in the

preceding paragraphs.

24. Caterpillar has used in commerce and registered its CAT Marks well before

Applicant’s March 22, 2019 filing date and the June 1, 2017 First-Use/Use-in-Commerce date

alleged by Applicant.

25. Applicant’s mark so resembles Caterpillar’s prior used and

registered CAT Marks, and the goods covered by Caterpillar’s used/registered marks and

Applicant’s mark are identical, such that consumers will likely be confused,

12

mistaken, or deceived as to the source of the parties’ respective goods under Section 2(d) of the

Lanham Act, as amended, 15 U.S.C. § 1052(d).

Count Two

Dilution, 15 U.S.C. § 1125(c)

26. Caterpillar repeats and realleges each and every allegation set forth in each of the

preceding paragraphs.

27. Through extensive use and promotion, Caterpillar’s CAT Marks have become

distinctive and famous as defined under Section 43(c)(1) of the Lanham Act, as amended, 15

U.S.C. § 1125(c)(1).

28. Caterpillar’s CAT Marks became famous well before Applicant’s

March 22, 2019 filing date and the First-Use/Use-in-Commerce date of June 1, 2017 alleged by

Applicant.

29. Applicant’s mark so resembles Caterpillar’s prior used and

registered CAT Marks that the mark is likely to dilute the distinctiveness of

Caterpillar’s famous CAT Marks by blurring under Section 43(c) of the Lanham Act, as

amended, 15 U.S.C. § 1125(c).

WHEREFORE, Caterpillar believes that it will be damaged by the registration of the

mark shown in Application Serial No. 88351527 and respectfully requests that this opposition be

sustained and that Application Serial No. 88351527 be refused registration.

13

A filing fee has been submitted electronically. If the filing fee is found to be insufficient

for any reason, please charge such deficiency to Deposit Account No. 06-0916.

Respectfully submitted, Dated: February 11, 2020 By: /Naresh Kilaru/

Christopher P. Foley Naresh Kilaru Laura K. Johnson FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 901 New York Avenue, N.W. Washington, D.C. 20001-4413 Telephone: (202) 408-4000 docketing@finnegan.com christopher.foley@finnegan.com naresh.kilaru@finnegan.com laura.johnson@finnegan.com TTAB-Legal-Assistants@finnegan.com

Attorneys for Petitioner CATERPILLAR INC.