Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA1032861
Filing date: 01/31/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 92069081
Party PlaintiffCaterpillar, Inc.
CorrespondenceAddress
NARESH KILARUFINNEGAN HENDERSON FARABOW ET AL901 NEW YORK AVE NWWASHINGTON, DC 20001-4413UNITED [email protected], [email protected],[email protected], [email protected], [email protected]
Submission Plaintiff's Notice of Reliance
Filer's Name Naresh Kilaru
Filer's email [email protected], [email protected],[email protected], [email protected], [email protected]
Signature /Naresh Kilaru/
Date 01/31/2020
Attachments 2020.01.31 Caterpillar Notice of Reliance 2 - TTAB and District Court Decisionsand Exhibits.pdf(2288510 bytes )
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
CATERPILLAR INC.,
Petitioner,
v.
CAT AND CLOUD COFFEE, LLC,
Registrant.
Cancellation No. 92069081
Registration No. 4976835
Mark: CAT & CLOUD
Registration Date: June 14, 2016
PETITIONER’S NOTICE OF RELIANCE NO. 2 UNDER 37 CFR § 2.122(e)
Pursuant to Trademark Rule 2.122(e)(1) and TBMP § 704.07, Petitioner Caterpillar Inc.
submits of record in connection with this cancellation proceeding examples of official decisions
relating to Petitioner’s enforcement of the CAT mark from the Trademark Trial and Appeal
Board and U.S. federal district courts, as detailed in the chart below. These decisions consistutue
“official records” under Trademark Rule 2.122(e)(1).
These decisions are relevant to the Board’s likelihood-of-confusion and dilution analyses
because they exemplify Petitioner’s rigorous enforcement activities and support the strength and
fame of the CAT mark. Further, the decisions are relevant to the similarity of the parties’ marks
given that the CAT mark has been found to be confusingly similar to various CAT- and KAT-
formative marks where the parties’ goods and/or services are related.
Exhibit
No.
Forum and Citation Date Case Summary Third-Party
Mark
1 Trademark Trial and
Appeal Board
172 USPQ 409
1971 Caterpillar Tractor Co. v.
Katrak Vehicle Company
KATRAK
2
Exhibit
No.
Forum and Citation Date Case Summary Third-Party
Mark
2 Trademark Trial and
Appeal Board
177 USPQ 343
1973 Caterpillar Tractor Co. v.
Gehl Company
HYDRACAT
3 Trademark Trial and
Appeal Board
Opposition No. 56,436
to application Serial No.
442,478 filed
November 3, 1972
1978 Caterpillar Tractor Co. v.
Electric Carrier
Corporation
ELECTRICAT
4 Trademark Trial and
Appeal Board
Opposition No. 68,672
to Application Serial
No. 351,778
1988 Caterpillar, Inc., by change
of name from Caterpillar
Tractor Co. v. Cat
Continental Inc.
5 USDC for the M.D.
Florida
877 F.Supp. 611
1994 Caterpillar, Inc. v.
Nationwide Equipment,
and Edward A. Kostenski
CAT
CAT DIESEL
POWER
CATERPILLAR
6 USDC for the
C.D. Illinois
2002 WL 1301304
2002 Caterpillar Inc. v. Telescan
Technologies, L.L.C.
CAT
CATERPILLAR
7 Trademark Trial and
Appeal Board
Cancellation No.
92041776 against
Registration No.
2684138
2007 Caterpillar, Inc. v. Pave
Tech, Inc.
PAVERCAT
8 Trademark Trial and
Appeal Board
Opposition No.
91193704 against Serial
Nos. 77617945 and
77618417
2014 Caterpillar Inc. v. Big Cat
Energy Corporation
BIG CAT and
3
Exhibit
No.
Forum and Citation Date Case Summary Third-Party
Mark
9 Trademark Trial and
Appeal Board
Opposition No.
91210124 against Serial
No. 85710127
2015 Caterpillar Inc. v. Rodney
C. Kelly
PETRACAT
Dated: January 31, 2020 Respectfully submitted,
/Naresh Kilaru/
Christopher P. Foley
Naresh Kilaru
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.
901 New York Avenue N.W.
Washington, DC 20001
Telephone: (202) 408.4000
Laura K. Johnson
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.
2 Seaport Lane
Boston, MA 02210.2001
Telephone: (202) 408.4000
Attorneys for Petitioner Caterpillar Inc.
CERTIFICATE OF SERVICE
I hereby certify that a true and accurate copy of the foregoing PETITIONER’S
NOTICE OF RELIANCE NO. 2 UNDER 37 CFR § 2.122(e) was served via electronic mail, on
January 31, 2020 upon counsel for Registrant at the following address of record:
Tawnya R. Wojciechowski
TRW LAW GROUP
19900 MACARTHUR BLVD, SUITE 530
IRVINE, CA 92612
/Travis Smith/
Trademark Legal Assistant
EXHIBIT 1
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Source: USPQ, 1st Series (1929 - 1986) > U.S. Patent and Trademark Office, Trademark Trial and Appeal Board > Caterpillar Tractor Co. v. Katrak Vehicle Company, 172 USPQ 409 (TTAB 1971)
Caterpillar Tractor Co. v. Katrak Vehicle Company, 172 USPQ 409 (TTAB 1971) 172 USPQ 409
Caterpillar Tractor Co. v. Katrak Vehicle CompanyU.S. Patent and Trademark Office, Trademark Trial and Appeal Board
Decided November 30, 1971
Headnotes
TRADEMARKS
[1] Opposition - Failure to take testimony (u 67.579)
In absence of evidence relative to its use of its mark, earliest use thereof on which applicant can rely on opposition proceeding is application's filing date.
[2] Evidence - Of use (u 67.339)
Fact that Caterpillar Tractor Co. has been doing business under this name since it was incorporated in 1925 is insufficient to support assertion that the public and those in the trade refer to it by abbreviations “Cat” and “Cat Trac.”
[3] Evidence - Of confusion (u 67.337)
Fact that record fails to disclose any actual confusion is not controlling on question whether there is likelihood of confusion, which is test to apply in opposition proceedings.
[4] Identity and similarity - How determined - Considering other marks (u 67.4059)
Rights that another party may assert in term against opposer cannot, in absence of showing of privity with applicant, aid applicant or serve to defeat opposer's cause of action against applicant.
[5] Identity and similarity - Words - Similar (u 67.4117)
As applied to tractors, “Katrak” so resembles “Cat” that confusion is likely.
Case History and Disposition
Page 409
Trademark opposition No. 50,516 by Caterpillar Tractor Co. against Katrak Vehicle Company, application, Serial No. 278,302, filed Aug. 15, 1967. Opposition sustained.
Attorneys
Fryer, Tjensvold, Feix, Phillips & Lempio, San Francisco, Calif., for Caterpillar Tractor Co.
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Oliver D. Olson, Portland, Ore., for Katrak Vehicle Company.
Judge
Before Leach, Lefkowitz, and Shryock, Members.
Opinion Text
Opinion By:
Lefkowitz, Member.
An application has been filed by Katrak Vehicle Company to register the notation “KATRAK” as a trademark for wheeled and track-laying vehicles for off-the-road service, and accessories therefor; namely, backhoes, loading buckets, loading booms, lifting forks, dozer blades, trenchers, brush cutters, post hole diggers, winches, spray tanks, overhead bars, and cabs. Use of the mark since November 9, 1966 has been alleged.
Registration has been opposed by Caterpillar Tractor Co., which asserts, inter alia, prior and continuous use and registration of the term “CAT” as a trademark for wheeled and tracked tractors, motor trucks and other earth and material-handling vehicular machines and attachments therefor including bulldozer blades, buckets, booms, forks, rippers, winches, protective overhead frames, and cabs manufactured and sold for off-the-road service,
1the public and the trade have, since
Page 410opposer's organization in 1925, generally referred to and recognized “CAT” and “CAT TRAC” as contractions of opposer's corporate name, Caterpillar Tractor Co.; tractors manufactured and sold by opposer have been referred to and identified by the terms “CAT TRACTORS” and, a contraction thereof, “CAT TRAC”; as a consequence of expenditures of large sums of money in advertising and making known to the trade and to the public of the line of machinery products manufactured and sold by it, the term “CAT” has become associated with opposer indicating opposer, its business, its products, and its services; and
——————————————————————————————
1Reg. No. 564,272, issued Sept. 23, 1952; Reg. No. 742,294, issued Dec. 18, 1962; Reg. No. 770,639,
issued June 2, 1964; Reg. No. 777,703, issued Sept. 29, 1964; Reg. No. 778,638, issued Oct. 13, 1964; Reg. No. 822,788, issued Jan. 24, 1967; and Reg. No. 871,146, issued June 17, 1969.
——————————————————————————————
“The use of the word “KAT” in the trademark sought to be registered by applicant is an appropriation of opposer's trademark and a salient, characteristic and substantial part of opposer's corporate name, Caterpillar Tractor Co., adopted by opposer long prior to the alleged date of adoption and use by applicant of the alleged trademark sought to be registered by it, and such appropriation is of such character and extent that it is calculated to deceive and confuse the public to the injury and damage of opposer and opposer's business.”
The record consists of the pleadings, applicant's application, copies of opposer's pleaded registrations, copies of official records and printed publications noticed by opposer under Rule 2.123(c), and testimony in behalf of opposer.
[1] In the absence of evidence relative to its use of the mark “KATRAK”, the earliest use thereof on which applicant can rely in this proceeding is August 15, 1967, the filing date of the subject application. See: Goodall-Sanford, Inc. v. Tropical Garment Manufacturing Co., 125 USPQ 189 (CCPA, 1960).
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According to its record, opposer was incorporated in 1925 under the name Caterpillar Tractor Co. and has since that time, engaged in the manufacture and sale of a line of machinery products including wheeled and track-laying vehicles for off-the-road service, and accessories therefor comprising, in part, tractors, scrapers, rippers, wagons, wheel loaders, bulldozers and bulldozer blades, motor graders, pipe layers, loading buckets, loading booms, lifting forks, protective overhead bars, cabs, winches, backhoes, and the like. In addition to the trademark “CATERPILLAR”, opposer has, since about December 1948, continuously used the designation “CAT” as a trademark for these goods, applying decals and/or patent plates prominently displaying this designation directly to each product. “CAT” machinery have been sold throughout the United States and abroad through authorized dealers. Sales of products by opposer under the mark “CAT” exceeded one hundred and fifty million dollars in 1949; well over four hundred million dollars in 1959; in excess of eight hundred million dollars in 1965; and in 1969, the sales figure exceeded one billion dollars. Opposer has extensively promoted its wheeled and track-laying vehicles and accessories therefor for off-the-road service under the mark “CAT” through the distribution of catalogs, brochures, and other direct mailing descriptive pieces to dealers for use as sales promotional literature and/or for redistribution to customers and prospective customers; the distribution of the same or similar descriptive material at trade shows; and by advertisements in regional and material trade publications such as the “Dixie Contractor”, “Texas Contractor”, “Pacific Builder and Engineer”, “Construction Methods and Equipment”, “Roads and Streets”, “Coal Age”, “Modern Materials Handling”, and “Northeastern Logger”. Opposer, in its advertising and promotional material, generally utilizes pictures of its various machines prominently displaying the “CAT” trademark and incorporates the mark “CAT” in the copy as a portion of the headlines. One of the brochures of record is entitled “DESIGN IMPROVEMENTS OF ‘CAT’ TRACK-TYPE TRACTORS”. Opposer's expenditures in this regard from 1949 through 1969 have exceeded sixty million dollars.
Opposer's record clearly establishes that it has made extensive use of “CAT” on and in connection with the sale of wheeled and track-laying vehicles and accessories for off-the-road service since long prior to August 15, 1967, the filing date of applicant's application, as well as the date applicant allegedly first used the mark “KATRAK” for goods identical in kind and/or closely related to those of opposer.
2The only
question to be determined herein is whether or not “KATRAK” is confusingly similar to “CAT” as used by opposer.
——————————————————————————————
2[2] There is, however, nothing in the record to support opposer's pleading that the public and those in
the trade identify and refer to opposer by the abbreviations “CAT” and “CAT TRAC” in lieu of the full trade name “Caterpillar Tractor Co.” The fact that opposer has been doing business under this name since it was incorporated in 1925 is manifestly insufficient in and of itself to support such an assertion.
——————————————————————————————
It is opposer's position that confusion in trade is likely because “KATRAK” is similar in appearance, meaning, and sound to
Page 411“CAT”. In this regard, opposer, in effect, argues that “KATRAK” will be pronounced as “KAT TRAK”; that “KAT”, the equivalent of “CAT”, is the dominant syllable in position, sound, and meaning whereas “TRAK” is a common misspelling of the abbreviation “TRAC” for “TRACTOR” and for “TRACK” which refers to a portion of the moving gear of a track-laying tractor; and that a “CAT TRAC” or “CAT TRACTOR” is a tractor, wheel or track-laying tractor, which is made and sold by opposer.
Applicant, on the other hand, urges that the marks “CAT” and “KATRAK” are clearly dissimilar in appearance and sound; that applicant's mark “KATRAK” is no more confusingly similar to opposer's trademark “CAT” than are the third-party registrations “CATAPLANE” and “CAT-A-GATOR”; and that applicant has been advertising and selling its products under the mark “KATRAK” since November 1966
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and notwithstanding opposer's extensive sales and advertisements of “CAT” products since December 1948, no evidence of a single instance of confusion has been encountered by either party.
[3] In the absence of evidence by applicant as to the use of the mark “KATRAK”, we cannot assume on the basis of an unsupported date of first use or even from the filing date of applicant's application which occurred just nine months after the asserted date of first use the applicant's use of the mark was of such nature and extent and under circumstances and conditions that could have provided ample opportunity for actual confusion to have occurred, assuming that the marks are confusingly similar. Furthermore, the fact that the record fails to disclose any instances of actual confusion is not controlling on the question whether there is a likelihood of confusion which is the test to be applied in proceedings of this character. See: Roux Laboratories, Inc. v. Clairol Incorporated, 157 USPQ 392 (TT& A Bd., 1968).
[4] It is necessary at this point to also put to rest applicant's unfounded reliance on two third-party registrations. Apart from the fact that since applicant did not make copies of these registrations of record during its trial period in accordance with the applicable trademark rules of practice, they are not properly in evidence in this proceeding, they are manifestly insufficient to establish that “CAT” is in any way lacking in distinctiveness or to justify the registration of what possibly can be another confusingly similar mark. See: In re Helene Curtis Industries, Inc., 134 USPQ 501 (CCPA, 1962), and Lilly Pulitzer, Inc. v. Lilli Ann Corporation, 153 USPQ 406 (CCPA, 1967). That is, the issue in this proceeding is the confusing similarity of applicant's mark to that of opposer and not the confusing similarity of any other mark to opposer's mark. Any rights that another party may assert in a mark containing the term “CAT” against opposer cannot, in the absence of a showing of privity with applicant, aid applicant herein or serve to defeat opposer's cause of action against applicant. See: The Magnavox Company v. Multivox Corporation of America, 144 USPQ 501 (CCPA, 1965).
[5] Turning to a consideration of the marks in issue, applicant's mark “KATRAK” is and would be recognized as a blend of the terms “KAT” and “TRAK” which in turn are phonetic equivalents of the words “CAT” and “TRAC”. This latter term “TRAC” is the accepted abbreviation for the word “tractor”, a fact that would be well known to persons of the type that would be interested in purchasing tractors and similar equipment. See: Webster's Third New International Dictionary (1965) and “The Complete Dictionary of Abbreviations” by Robert J. Schwartz (Thomas Y. Crowell Company, New York). Opposer's well-known mark is “CAT”, and it is invariably used and would be used in association with the word “tractor” to refer to a tractor, wheeled or track laying, of opposer's manufacture. Thus, persons familiar with “CAT TRACTORS”, upon encountering or hearing about tractors sold under the mark “KATRAK”, could reasonably and mistakenly assume them to have originated from the same producer.
Decision
The opposition is sustained; and registration to applicant is refused.
- End of Case -
EXHIBIT 2
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Source: USPQ, 1st Series (1929 - 1986) > U.S. Patent and Trademark Office, Trademark Trial and Appeal Board > CATERPILLAR TRACTOR CO. v. GEHL COMPANY, 177 USPQ 343 (TTAB 1973)
CATERPILLAR TRACTOR CO. v. GEHL COMPANY, 177 USPQ 343 (TTAB 1973) 177 USPQ 343
CATERPILLAR TRACTOR CO. v. GEHL COMPANYU.S. Patent and Trademark Office, Trademark Trial and Appeal Board
Decided February 22, 1973
Headnotes
TRADEMARKS
[1] Cancellation — Pleading and practice — In general (u 67.1811)
In absence of evidence relative to use of its mark, earliest use thereof on which respondent can rely in cancellation proceeding is filing date of application that matured into its registration.
[2] Cancellation — Marks and use of third parties (u 67.179)
Rights that third party may be able to assert against cancellation petitioner cannot inure to benefit of respondent and serve to defeat petitioner's cause of action in absence of affirmative showing that respondent is in privity with or that it succeeded to all of that party's right, title, and interest in involved mark.
[3] Marks and names subject to ownership — Grade marks (u 67.517)
Use of trademark in association with different numbers signifying different models does not detract from trademark significance of trademark.
[4] Cancellation — Marks and use of third parties (u 67.179)
If marks involved in cancellation proceeding are in conflict, fact that others may have used and/or registered marks comprising a feature common to marks in issue is of no particular significance; third party registration or use cannot justify registration of what may be another confusingly similar mark.
[5] Drawings (u 67.30)
In attempting to ascertain at least one form in which mark is used, Board can look to specimens filed withapplication for registration.
[6] Identity and similarity — Words — Similar (u 67.4117)
As applied to hydraulic front-end loaders, “Hydracat” so resembles “Cat” that confusion is likely.
Case History and Disposition
Trademark cancellation No. 9,839 by Caterpillar Tractor Co. against Gehl Company, Registration No. 911,648, issued May 11, 1971. Petition granted.
Attorneys
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FRYER, TJENSVOLD, FEIX, PHILLIPS & LEMPIO, San Francisco, Calif., for Caterpillar Tractor Co.
JAMES E. NILLES and NILLES & BARRY, both of Milwaukee, Wis., for Gehl Company.
Judge
Before LEFKOWITZ and SHRYOCK, Members, and BOGORAD, Acting Member.
Opinion Text
Opinion By:
LEFKOWITZ, Member.
A petition has been filed to cancel the registration of “HYDRACAT” for vehicles, namely, front end loaders, issued to Gehl Company on May 11, 1971 on an application filed January 20, 1970 wherein use since January 9, 1970 was asserted.
1
——————————————————————————————
1Reg. No. 911,648.
——————————————————————————————
Petitioner is Caterpillar Tractor Co., which alleges, inter alia, prior and continuous use of its registered mark “CAT” for wheeled and tracked tractors, motor trucks, and other earth- and material-handling vehicles including hydraulic front-end loaders, and buckets and hydraulic controls therefor;
2that the public
and the trade have, since petitioner's organization in 1925, generally referred to and recognized “CAT” as a contraction of petitioner's corporate name, Caterpillar Tractor Co.; that as a consequence of expenditures of large sums of money in advertising and making known to the trade and to the public of the line of machinery products manufactured and sold by it, including front-end loaders, the term “CAT” has become associated with petitioner, its business, its products, and its services; that registrant's front-
Page 344end loaders employ hydraulic controls, circuits, and motors to actuate and operate the loading mechanisms therefor and are similar to petitioner's front-end loaders and buckets and hydraulic controls; and that
——————————————————————————————
2Petitioner is the owner of the following registrations covering the mark “CAT”: Reg. No. 564,272, issued
Sept. 23, 1952 and renewed; Reg. No. 742,294, issued Dec. 18, 1962; Reg. No. 770,639, issued June 2, 1964; Reg. No. 777,703, issued Sept. 29, 1964; Reg. No. 778,638, issued Oct. 13, 1964; Reg. No. 822,788, issued Jan. 24, 1967; and Reg. No. 871,146, issued June 17, 1969.
——————————————————————————————
“The alleged trademark which Registrant has registered comprises the word ‘HYDRACAT’. The term ‘HYDRA’ is a contraction and abbreviation for ‘hydraulic’, and thus comprises a descriptive term for hydraulic loaders. Accordingly, ‘CAT’ is the only portion of Registrant's alleged trademark that is capable of being distinctive for such goods, and thus would and does appear and is interpreted as the dominant part of the mark when used with such goods. Therefore, Registrant's alleged trademark is confusingly similar in appearance, meaning and sound to Petitioner's recognized trademark, and the recognized contraction of Petitioner's corporate name.”
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Respondent, in its answer, has admitted that its front-end loaders employ hydraulic controls, circuits and motors to actuate the loading mechanisms thereof and that “HYDRA” is a contraction and abbreviation for hydraulic; but otherwise has denied the essential allegations upon which petitioner predicates its claim of damage.
The record consists of the pleadings, respondent's registration file, copies of petitioner's pleaded registrations, testimony in behalf of each party, and copies of official records and/or printed publications noticed by the parties under Rule 2.123(c).
3
——————————————————————————————
3Each party has objected to portions of the other's testimony and exhibits on various grounds and, insofar
as any of these objections have been found to have merit, the particular testimony or exhibit in question has not been considered in the recitation of the facts or evidence adduced by the parties.
——————————————————————————————
According to its record, petitioner was incorporated in 1925 under the name Caterpillar Tractor Co. and has, since that time, engaged in the manufacture and sale of a line of earthmoving and material handling equipment products comprising, as some of its principal items, wheel and track-type tractors, wheel and track-type loaders including whell-type, front-end loaders, motor graders, scrapers, rubber tired bulldozers, skidders, trucks, lift trucks, wagons, and diesel engines of various types and accessories for such items of equipment including hydraulic controls. In addition to the trademark “CATERPILLAR”, petitioner has, since about 1948, continuously used the designation “CAT” as a trademark for these goods, applying decals and/or patent plates prominently displaying this designation directly to each product. In addition to “CATERPILLAR” and “CAT”, the decals and patent plates have, since about 1967, also featured a distinctive corporate symbol adopted by petitioner at that time.
The term “CAT” has been used on and in connection with wheel-type, front-end loaders utilizing hydraulic actuation for the lifting of the bucket and bucket arm and for other controls since about 1960. “CAT” earthmoving and material handling equipment products including front-end loaders have been sold throughout the United States through authorized dealers. Sales of front-end loaders alone bearing the mark “CAT” were in excess of fifteen million dollars in 1960. There was a steady increase in sales of this type of equipment in the ensuing years, and in 1970, sales reached a sum exceeding one hundred and twenty million dollars.
Petitioner has extensively promoted its earthmoving and material handling product line including front-end loader products under the marks “CATERPILLAR” and “CAT” through the distribution of product catalogs, brochures, and direct mailing descriptive pieces to dealers, customers, and prospective customers; by exhibits at trade shows and fairs; and by advertisements in regional and national trade publications such as Factory, Construction Methods & Equipment, Brick & Clay Record, Engineering News Record, Intermountain Contractor, Construction Magazine, Texas Contractor, and Dixie Contractor. In the advertising and promotional material directed to its different products including front-end loader vehicles, petitioner generally utilizes pictures of its vehicles prominently displaying its “CATERPILLAR” and “CAT” marks as well as incorporating the “CAT” mark in the copy, both in the text and in the headline or caption. Petitioner's advertising and promotional expenditures for its product line for the period from 1960 through 1970 exceeded thirty-two million dollars. It has been estimated that, during these years, approximately twenty-five to thirty-five percent of petitioner's yearly advertising expenditures have been directed to track and wheel-type front loaders with the emphasis more on the wheel-type loader equipment.
Respondent's evidence including its testimony is directed entirely to third-party use and registration of terms comprising the term “CAT”
4In this regard, respondent offered testimony of use of the terms
“HYDROCAT”, “WILDCAT”, “BEARCAT”, and “BOBCAT” by third persons on and in con
Page 345
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nection with the sale, advertising, and promotion of equipment identical in kind and/or closely related to that of the parties herein.
5In addition, respondent has made of record under the applicable rule copies of
twenty-six registrations issued to third persons for marks containing the term “CAT” as the suffix or second word for various products in support of its pleading that “CAT” is, in effect, a “weak” mark entitled to but a limited scope of protection and that therefore the addition of “HYDRA” to “CAT” in respondent's mark is sufficient to create a unitary mark that is readily distinguishable from “CAT”, per se, and to avoid confusion in trade.
——————————————————————————————
4[1] 4 In the absence of evidence relative to its use of the mark “HYDRACAT”, the earliest use thereof on
which respondent can rely in this proceeding is January 20, 1970, the filing date of the application that matured into the subject registration. See: Goodall-Sanford, Inc. v. Tropical Garment Manufacturing Co.,125 USPQ 189 (CCPA, 1960).
5We note with interest that while respondent is the owner of a registration of the mark “HYDRACAT” for a
front end loader and is therefore entitled to the presumptions of Section 7(b) of the statute including the presumption of exclusive use in commerce, it has offered evidence of prior use in commerce by a third person of the substantially identical mark “HYDROCAT” for goods that appear to be competitive in character to that of respondent.
——————————————————————————————
[2] These third-party registrations and uses are, however, insufficient to establish that “CAT”, per se, is in any way lacking in trademark significance or distinctiveness as applied to earthmoving and material handling equipment because twenty-one of the twenty-six registrations pertain to goods distinctly different from those here involved and the remaining registrations and third-party uses cover such marks as “BEARCAT”, “BOBCAT”, “POLECAT”, and “WILDCAT”, which, as unitary terms, have well-known and recognized meanings which are sufficiently different from and do not conjure up the same image as “CAT”, per se. See: The Conde Nast Publications, Inc. v. American Greetings Corporation, 141 USPQ 249 (CCPA, 1964). And any rights that a third party may be able to assert in the mark “HYDROCAT” as against petitioner cannot inure to the benefit of respondent in this proceeding and serve possibly to defeat petitioner's cause of action herein in the absence of an affirmative showing by respondent that it is in privity with or that it succeeded to all of that party's right, title and interest in said mark. See: The Magnavox Company v. Multivox Corporation of America, 144 USPQ 501 (CCPA, 1965).
[4] In any event, petitioner's record is sufficient to establish that, as a result of extensive use and promotion over a long period of time, the term “CAT” has been well known to the trade and to the applicable purchasing public as indicating earthmoving and material handling equipment including front-end loaders originating with petitioner long before respondent adopted and began to use the mark “HYDRACAT” for goods identical in kind; and that petitioner possesses a valuable good will and property right therein.
6Petitioner therefore is entitled to protection against the registration by a subsequent user of
a mark consisting of or comprising the term “CAT” for similar or related goods if confusion as to source is likely to occur. If the particular marks involved in a proceeding are in conflict, the fact that others may have used and/or registered marks comprising a feature common to the marks in issue is of no particular significance. That is, third-party registration or use cannot justify the registration of what possibly may be another confusingly similar mark. See: In re Helene Curtis Industries, Inc., 134 USPQ 501 (CCPA, 1962); and Lilly Pulitzer, Inc. v. Lilli Ann Corporation, 153 USPQ 406 (CCPA, 1967).
——————————————————————————————
6[3] 6 Respondent has attempted to denigrate petitioner's use of “CAT” by describing it as a “model
designating type trademark and also as a house designation.” What is meant by this is not clear except that respondent has made reference to petitioner's use of “CAT” in association with different numbers signifying different models of its equipment. Aside from the fact that petitioner's record also shows use of “CAT”, per se, and petitioner's registrations cover “CAT”, per se, such use does not in any way detract from the trademark significance of “CAT”.
Intellectual Property Library ISSN 1526-8535
Copyright 2008, The Bureau of National Affairs, Inc.Reproduction or redistribution, in whole or in part, and in any form, without express written permission, is prohibited except as
permitted by the BNA Copyright Policy. http://www.bna.com/corp/index.html#V5
——————————————————————————————
Before proceeding to a discussion of the marks of the parties, it is necessary to put at rest respondent's attempt to distinguish between the goods herein on the basis of asserted differences in trade channels. In this regard, respondent takes the position that petitioner's goods are sold through its own dealers. However, this position on channels of trade and in general is not well founded. While there is testimony that petitioner's goods are sold through dealers, there is nothing of record to indicate that these dealers are exclusive “CATERPILLAR” dealers or are independent dealers selling any number of different brands and types of front-end loaders including those of both petitioner and respondent. But even if petitioner's products were sold to dealers handling its products exclusively, this does not eliminate the conditions and circumstances that can give rise to a likelihood of confusion in trade. Respondent's identification of goods as “front end loaders” obviously encompasses petitioner's front-end loaders. Thus, we have competitive products intended for similar use by the same class or classes of purchasers. Thus, if a person who is familiar with “CAT” products and is desirous of purchasing a front-end loader would encounter a front-end loader under the same or similar mark at a particular dealer, it is not unreasonable to assume that he would mistakenly believe that this product emanated from petitioner and that the dealer is a “CATERPILLAR” dealer.
Page 346
Insofar as the marks “CAT” and “HYDRACAT” are concerned, it is readily apparent that each contains the term “CAT” and differ to the extent that respondent's mark contains the prefix “HYDRA”. The question then is whether the addition of “HYDRA” to “CAT” is sufficient to distinguish the mark as a whole from “CAT”, per se. We believe not.
[5] First of all, the term “HYDRA” is admittedly a contraction and abbreviation for “hydraulic” which describes the hydraulic means used to actuate and control the frontend loaders offered by petitioner as well as respondent. Secondly, the drawing in the application that matured into the subject registration shows the mark “HYDRACAT” typed in capital letters, and under Rule 2.51(a) of the Trademark Rules of Practice, this means that respondent's application was not, and the issued registration is not, limited to the mark in any special form. In attempting to ascertain at least one form in which the mark is used, we can look to the specimens filed with the application by respondent. See: Phillips Petroleum Company v. C. J. Webb, Inc., 170 USPQ 35 (CCPA, 1971). The specimens submitted with the application show the “HYDRA” portion of the mark graphically produced in a manner different from “CAT” so as to create possibly two separate images.
[6] Under these circumstances and considering that purchasers of front-end loaders with hydraulic controls would be familiar with the nature and significance of the term “HYDRA”, it is concluded that persons familiar with “CAT” hydraulic front-end loaders, upon encountering similar machines bearing the mark “HYDRACAT”, as described above, could reasonably assume that they originate from the same source, all to the damage of petitioner.
Decision
The petition is granted, and Registration No. 911,648 will be canceled in due course.
- End of Case -
EXHIBIT 3
EXHIBIT 5
Caterpillar, Inc. v. Nationwide Equipment, 877 F.Supp. 611 (1994)
33 U.S.P.Q.2d 1357
© 2018 Thomson Reuters. No claim to original U.S. Government Works. 1
KeyCite Yellow Flag - Negative Treatment
Distinguished by BMW of North America v. Au-tomotive Gold, Inc.,
M.D.Fla., June 19, 1996
877 F.Supp. 611United States District Court,
M.D. Florida,Jacksonville Division.
.
CATERPILLAR, INC., Plaintiff,v.
NATIONWIDE EQUIPMENT, andEdward A. Kostenski, Defendants.
No. 94–901–Civ–J–20.|
Nov. 14, 1994.
SynopsisHolder of “CATERPILLAR” trademark broughtinfringement action against retailers that used its markin advertising machinery manufacturer overseas usingholder's component parts. On holder's motion forpreliminary injunction, the District Court, Schlesinger,J., held that: (1) machinery manufactured overseaswith component parts supplied by trademark holderbut distributed in United States without holder'sauthorization could not be considered “genuine” forpurposes of trademark protection even if machinery wasof equal quality to holder's trademarked machinery,and (2) holder was substantially likely to prevail on itstrademark infringement claim, warranting preliminaryinjunctive relief.
Motion granted.
Attorneys and Law Firms
*613 Timothy J. Conner, Gabel & Hair, Jacksonville,FL, Susan Somers Neal, Mark G. Davis, RobertW. Zelnick, William, Brinks, Hofer, Gilson & Lione,Washington, DC, Eugene C. Goodale, Caterpillar, Inc.,Peoria, IL, for plaintiff.
David M. Novak, Bell, Boyd & Lloyd, Chicago, IL,Charles P. Pillans, III, Oliver David Barksdale, Bedell,Dittmar, DeVault & Pillans, P.A., Jacksonville, FL,
Eugene F. Friedman, Eugene F. Friedman, Ltd., Chicago,IL, for defendants.
ORDER
SCHLESINGER, District Judge.
Before the Court is Plaintiff's Motion for a PreliminaryInjunction (Doc. No. 2). Defendants' Responsive Brief inOpposition to Motion for Preliminary Injunction (Doc.No. 15) was filed October 12, 1994. A PreliminaryInjunction Hearing was held before the undersigned.
[1] A preliminary injunction is an “extraordinary anddrastic remedy” and should not be granted unless themovant meets its burden of persuasion with respect toeach of the following prerequisites: (1) a substantiallikelihood of success by the movant on the merits; (2)that the movant will suffer irreparable harm unless theinjunction issues; (3) that the threatened injury to themovant outweighs any threatened harm the injunctionmay cause the opposing party; and (4) that the injunction,if issued, “will not disserve the public interest.” Bryanv. Hall Chemical Co., 993 F.2d 831, 835 (11th Cir.1993)(citing United States v. Jefferson County, 720 F.2d 1511,1519 (11th Cir.1983)).
Plaintiff, Caterpillar, Inc. (“Caterpillar”), has broughtthis action against Defendants, Nationwide Equipment(“NWE”) and Edward A. Kostenski, for trademarkinfringement and unfair competition. It is undisputedthat Plaintiff owns the trademarks CAT, CAT DIESELPOWER, and CATERPILLAR.
Caterpillar entered into an agreement with a corporationof Turkey, Cukurova Insaat Makineleri Sanayi Ve TicaretAnonim Sirketi (“Cukurova”), under which Caterpillargranted Cukurova certain limited rights to manufactureproducts overseas using components manufactured byCaterpillar. Under the terms of this agreement, Cukurovawas prohibited from affixing any Caterpillar trademarksto the products, although Caterpillar's trademarks wereallowed to appear on component goods purchased fromCaterpillar to be incorporated into the finished product.See Complaint at ¶ 3; Declaration of R.R. Atterbury III.Cukurova was required to, and did, use its own trademarkon the equipment it manufactured.
Caterpillar, Inc. v. Nationwide Equipment, 877 F.Supp. 611 (1994)
33 U.S.P.Q.2d 1357
© 2018 Thomson Reuters. No claim to original U.S. Government Works. 2
Defendants offered for sale, as recently as August 9and 11, 1994, Cukurova products manufactured usingCaterpillar components and identified them to potentialcustomers by using Caterpillar's trademarks. See Exhibit*614 Nos. 10 and 11 to the Complaint. Defendants,
however, did not have authorization from Caterpillar toadvertise this machinery as Caterpillar's. It also appearsthat Defendants obtained certificates of origin fromCaterpillar for the component parts of the machinery andthereafter used those certificates to falsely represent thatthe machines manufactured by Cukurova were genuineCaterpillar machines.
Defendants argue that the machines offered for salewere genuine Caterpillar and that the only componentsadded by Cukurova were several accessories: the bucket,counterweights and enclosed cab.
To determine the likelihood of success on the merits, theCourt looks at the standards proscribed by substantivelaw. Section 43(a) of the Lanham Act specifically prohibitsthe use of false descriptions and false designations oforigin when advertising or selling goods or services incommerce. See 15 U.S.C. § 1125(a).
It well established in trade identity infringement casesthat plaintiffs need not show wrongful intent on the part
of defendant. 1 An injunction is proper if the naturalconsequences of a defendant's conduct are such as tocause deception. All Plaintiff has to show is the objectivefact of infringement, because whatever the Defendants'subjective intent, their act has the same detrimental effectupon Plaintiff. 3A RUDOLF CALLMAN, The Lawof Unfair Competition, Trademarks and Monopolies §21.00.50 (1991).
[2] The tests for infringement of a trademark and forunfair competition are the same: whether there is alikelihood of confusion as to source or sponsorship ofthe two products at issue. In an action brought undersections 32 and 43(a) of the Lanham Act, 15 U.S.C.§§ 1114(1) and 1125(a)(1)(A), Plaintiff need not provideproof of actual confusion. Plaintiff only needs to showlikelihood of confusion. See Ford Motor Co. v. SummitMotor Products, Inc., 930 F.2d 277, 292 (3d Cir.), cert.denied, 502 U.S. 939, 112 S.Ct. 373, 116 L.Ed.2d 324(1991).
“A trademark serves three distinct and separate purposes:(1) It identifies a product's origin, (2) it guarantees theproduct's unchanged quality, and (3) it advertises theproduct. Injury to the trademark in any of its officesas an identifying, guaranteeing or advertising deviceshould suffice to constitute an infringement thereof.” 3ARUDOLF CALLMAN, The Law of Unfair Competition,Trademarks and Monopolies § 21.06, at 41 (1991).
[3] If a finished article is made of parts or materialsmanufactured by a particular producer, who may havea special reputation for quality, the seller of the finishedarticle is allowed to use the latter's mark to identify thesource of such parts or materials, and the manufacturerof the parts or materials cannot protest on the groundthat the finished article is of inferior workmanship. 3ARUDOLF CALLMAN, The Law of Unfair Competition,Trademarks and Monopolies § 21.21, at 189 (1991); seeScarves by Vera, Inc. v. American Handbags, Inc., 188F.Supp. 255 (S.D.N.Y.1960); Forstmann Woolen Co. v.J.W. Mays, Inc., 89 F.Supp. 964 (E.D.N.Y.1950).
[4] However, if the trademarked item loses its identitywhen incorporated into a product made by one otherthan the trademark owner, the trademark shouldnot be adopted for the entire new article, exceptwith the consent of the component manufacturer. 3ARUDOLF CALLMAN, The Law of Unfair Competition,Trademarks and Monopolies § 21.21, at 189 (1991);see Vick Chemical Co. v. Strohmeier, 39 F.2d 89(E.D.Pa.1930); Standard Oil Co. v. California Peach & FigGrowers, 28 F.2d 283 (D.Del.1928); Lambert PharmacalCo. v. Listerated Co., 24 F.2d 122, 123 (S.D.Tex.1928);B.B. & R. Knight v. W.L. Milner & Co., 283 F. 816, 819(N.D.Ohio 1922).
Under the doctrine enunciated in Prestonettes v. Coty,264 U.S. 359, 44 S.Ct. 350, 68 L.Ed. 731 (1928),Defendants may state the *615 nature of the componentparts and their source, and Defendants may even usethe trademark of the component so as to indicate itsrelation to the new article offered by Defendants. 3ARUDOLF CALLMAN, The Law of Unfair Competition,Trademarks and Monopolies § 21.21, at 189 (1991); see,e.g., Forstmann Woolen Co. v. Murray Sices Corp., 144F.Supp. 283 (S.D.N.Y.1956) (Defendant was entitled touse Plaintiff's name and trademark to inform its customersthat its garments were made of Plaintiff's fabric). But,Defendants must use Plaintiff's mark discreetly, not with
Caterpillar, Inc. v. Nationwide Equipment, 877 F.Supp. 611 (1994)
33 U.S.P.Q.2d 1357
© 2018 Thomson Reuters. No claim to original U.S. Government Works. 3
an emphasis likely to lead the public into a false belief thatthe entire new product was manufactured by Caterpillar.
[5] Although the purchaser of trademarked goodsacquires no ownership of the trademark, if the mark hasbeen affixed to the goods by the authority of Plaintiff,Plaintiff cannot normally insist that retailers who acquiredclear title to the product are obligated to remove thetrademark or refrain from using the mark in connectionwith advertising or sale. 3A RUDOLF CALLMAN, TheLaw of Unfair Competition, Trademarks and Monopolies§ 21.13 (1991). The resale or advertising for sale ofthe genuine Plaintiff's article in its original form, underPlaintiff's trademark is not trademark infringement.However, the product in the instant action is not Plaintiff'sgenuine article.
[6] [7] [8] Defendants argue that there is no violationof the Lanham Act because the articles they are sellingare genuine Caterpillars. After all, the equipment they aretrying to sell were produced by Cukurova, the Turkishcorporation licensed by Caterpillar to manufacturethe equipment using Caterpillar's components. Thus,Defendants argue that since the machinery is genuineCaterpillar, Defendant's advertising as such cannot causeconfusion. It is true that the unauthorized sale of agenuine trademarked product does not in itself constitutetrademark infringement. See Shell Oil Co. v. CommercialPetroleum, Inc., 928 F.2d 104 (4th Cir.1991); NECElectronics v. CAL Circuit Abco, 810 F.2d 1506 (9th Cir.),cert. denied, 484 U.S. 851, 108 S.Ct. 152, 98 L.Ed.2d108 (1987); Babbit Electronics v. Dynascan Corp., 828F.Supp. 944, 956 (S.D.Fla.1993). However, “identicalgoods sold in an unauthorized manner are not genuinefor purposes of the Lanham Act.” H.L. Hayden Co. ofNew York, Inc. v. Siemens Medical Systems, Inc., 879F.2d 1005, 1023 (2d Cir.1989); see Hunting World, Inc. v.Reboans, Inc., 24 U.S.P.Q.2d 1844, 1849 (N.D.Ca.1992).A product is not “genuine” unless it is manufacturedand distributed under quality controls established bythe manufacturer. See Shell Oil, 928 F.2d at 104. InEl Greco Leather Products Co., Inc. v. Shoe World,Inc., 806 F.2d 392 (2d Cir.1986), cert. denied, 484 U.S.817, 108 S.Ct. 71, 98 L.Ed.2d 34 (1987), the SecondCircuit held that goods manufactured by agreement withthe holder of a trademark, but distributed without theholder's authorization, could not be considered genuinefor purposes of trademark protection. The Second Circuitheld that if the goods are not inspected by the trademark
owner to insure quality, they are not genuine. See id. In soholding, the court noted that “[o]ne of the most valuableand important protections afforded by the Lanham Act isthe right to control the quality of the goods manufacturedand sold under the holder's trademark.” Id. Similarly, inShell Oil v. Commercial Petroleum, Inc., 928 F.2d 104 (4thCir.1991), the court held the use of Shell's trademark bya bulk oil wholesaler violated the Lanham Act because“a product is not truly ‘genuine’ unless it is manufacturedand distributed under quality control established underthe manufacturer.” Id. at 107.
[9] During oral argument, Defendants also argued thatthe products they are selling are not inferior to Plaintiff's.After all, the majority of the components of the trucksare Caterpillar. However, inferiority is not a prerequisiteto a finding of a Lanham Act violation. See BabbitElectronics, 828 F.Supp. at 957 (citing Tanning ResearchLab v. Worldwide Import and Export Corp., 803 F.Supp.606, 609 (E.D.N.Y.1992)). There can be a Lanham Actviolation even if Plaintiff's and Defendants' goods are ofequal quality. See Truck Equipment Serv. Co. v. FruehaufCorp., 536 F.2d 1210, 1216 (8th Cir.), cert. denied, *616429 U.S. 861, 97 S.Ct. 164, 50 L.Ed.2d 139 (1976). Evenif Defendants' product rivals or exceeds the quality ofPlaintiff's product, the unauthorized product may stilldeprive the registrant of its ability to shape the contoursof its reputation. See Jordan K. Rand, Ltd. v. Lazoff Bros.,Inc., 537 F.Supp. 587, 597 (D.P.R.1982).
Even if Plaintiff allowed Cukurova to sell the equipmentas Caterpillars in Turkey, Defendants would still beunable to sell the product as a Caterpillar in the UnitedStates because of the sufficient differences between the twoproducts. In such a case, the scope of protection wouldturn on the degree of differences between the productauthorized for the domestic market and the allegedlyinfringing product. See Societe Des Produits Nestle S.A. v.Casa Helvetia, Inc., 982 F.2d 633 (1st Cir.1992).
“Because products are often tailored to specific nationalconditions, a trademark's reputation (and, hence, itsgoodwill) often differs from nation to nation.” SocieteDes Produits Nestle, 982 F.2d 633, 636 (citing Lever Bros.Co. v. United States, 877 F.2d 101, 108 (D.C.Cir.1989);Osawa & Co. v. B & H Photo, 589 F.Supp. 1163, 1173(S.D.N.Y.1984)). Territorial protection kicks in under theLanham Act where two merchants sell physically differentproducts in the same market and under the same name.
Caterpillar, Inc. v. Nationwide Equipment, 877 F.Supp. 611 (1994)
33 U.S.P.Q.2d 1357
© 2018 Thomson Reuters. No claim to original U.S. Government Works. 4
See Lever Bros., 877 F.2d at 107. The lawful importationof “identical” goods carrying a valid foreign trademark isallowed. See Societe Des Produits Nestle, 982 F.2d at 637.However, where material differences exist between the twoproducts, the Lanham Act honors the important linkagebetween trademark law and geography.
Defendants' liability turns on the vel non of materialdifferences between the products of a sort likely tocreate consumer confusion. “[A] reviewing court must ...be concerned of subtle differences, for it is by subtledifferences that consumers are most easily confused. Forthat reason, the threshold of materiality must be keptlow enough to take account of potentially confusingdifferences—differences that are blatant enough to makeit obvious to the average consumer that the origin ofthe product differs from his or her expectation.” Id.at 641. “The existence of any difference between theregistrant's product and the allegedly infringing gray goodthat consumers would likely consider to be relevant whenpurchasing a product creates a presumption of consumerconfusion sufficient to support a Lanham Trade–Markclaim.” Id. “Any higher threshold would endanger amanufacturers investment in product goodwill and undulysubject consumers to potential confusion by severing theties between a manufacturer's protected mark and itsassociated bundle of traits.” Id.
The Court finds the material differences between theCukurova equipment and Plaintiff's equipment are thequality control methods and the composition. Differencesin quality control methods are important to the consumer.The fact that Plaintiff did not oversee the assembly ofthe Cukurova machinery is significant. See El Greco, 806F.2d at 395 (“actual quality of the goods is irrelevant;it is the control of quality that a trademark holder isentitled to maintain”). Variance in quality control createsa presumption of customer confusion as a matter oflaw. See Shell Oil, 928 F.2d at 108. The Court is alsohesitant to dismiss as trivial the fact that Cukurovasupplied the following parts to the machinery: the bucket,counterweights and enclosed cab.
[10] The Court concludes that Plaintiffs are substantiallylikely to prevail on their claim that Defendants currentusage of Plaintiff's trademarks in their advertisementsconstitute trademark infringement, as Defendants'advertising appears to be false and confusing as to thesource of the product its customer is buying. Defendants
use of Plaintiff's trademark is likely to cause confusionin minds of potential buyers as to source, affiliationor sponsorship of products that were not approved byPlaintiff.
Advertising an article of different quality and identifyingit with Plaintiff's trademark constitutes trademarkinfringement. Once the quality of the final productdepended on how Cukurova handled the trademarkedgoods, Defendants should not be able to make unqualifieduse of Plaintiff's trademark. Plaintiff's marks serve asassurances of unchanged quality, and if such use ispermitted without consent, the trademark *617 owner isexposed to the risk that the product may not measure upto its established reputation, and the value of the mark as aguaranty would be endangered. Unauthorized referencesto the trademark of another must be truthful and must notcause confusion as to source or sponsorship of the productadvertised. The Court finds that Defendants' advertisingis likely to confuse consumers who rely on Caterpillar'strademarks as an indication of quality.
Defendants' representation to potential customers that theequipment is Caterpillar machinery constitutes trademarkinfringement and unfair competition because Defendantsfail to disclose to the public fully and truthfully themanner in which they have used Plaintiff's trademarkedcomponents to produce the equipment. Defendants'misleading and false advertising falsely conveys theimpression that Caterpillar intended the importation ofthe Cukurova machinery into the local market.
Defendants are entitled to inform its customers that thebasic components of its machinery are parts manufacturedby Caterpillar. See Forstmann Woolen Co. v. Murray SicesCorp., 144 F.Supp. 283, 290 (S.D.N.Y.1956). Defendantsmay sell the equipment so long as they clearly representthe product in such a way that there will be no reasonableprospect of confusing the purchasing public. Purchasersshould be made aware as to the true source of both thelabor and the components which make up the product.
The Court also finds that the other factors needed inorder to issue a preliminary injunction have been met.In trademark infringement cases, irreparable harm ispresumed. There is no adequate remedy at law for anydamage to Caterpillar's goodwill and business reputationcaused by Defendants alleged trademark infringement.
Caterpillar, Inc. v. Nationwide Equipment, 877 F.Supp. 611 (1994)
33 U.S.P.Q.2d 1357
© 2018 Thomson Reuters. No claim to original U.S. Government Works. 5
The purpose of the Lanham Act is to protect the publicand encourage business activity by preventing confusionas to the origin of goods and services. The public has aninterest in being able to properly identify the source ofproducts. Thus, the Court finds that an injunction willserve the public interest.
The Court also finds that Defendants will suffer noharm from being restrained from doing that which isillegal. The Court is not enjoining Defendants from sellingthe equipment so long as it is accurately and honestlyidentified.
The Court will not require Plaintiff to post asecurity bond. The Court has discretion to waive thisrequirement. See Baldree v. Cargill, Inc., 758 F.Supp.704 (M.D.Fla.1990), aff'd, 925 F.2d 1474 (11th Cir.1991);Ray v. School Dist. of DeSoto County, 666 F.Supp. 1524(M.D.Fla.1987).
Accordingly, it is ORDERED AND ADJUDGED:
(1) Plaintiff's Motion for a Preliminary Injunction (Doc.No. 2) is GRANTED;
(2) Defendants, Edward A. Kostenski and NationwideEquipment, and any of their principals, officers, agents,servants, employees, and successors are immediately
ENJOINED from: (a) using the Caterpillar trademarksin connection with the promotion, advertisement, display,sale or offering for sale of any product manufactured byCukurova using Caterpillar's components, in such fashionas to falsely connect such product as being a genuineCaterpillar; and (b) assisting, aiding or abetting any otherperson or business entity in engaging in or performing anyof the activities referred to in subsection (a); and
(3) Defendants shall immediately take steps to issueflyers to all of those previously contacted by Defendantsregarding the Cukurova equipment and notify themthat the products previously offered are not genuineCaterpillar equipment. Defendants may inform themthat the products were produced using Caterpillarcomponents. However, Defendants must sedulously avoidany usage that might convey the impression that theproduct was made by the trademark owner, Caterpillar.Defendants must also sedulously avoid any usage thatmight convey the impression that its product is sponsoredor approved by the trademark owner, Caterpillar.
DONE AND ENTERED.
All Citations
877 F.Supp. 611, 33 U.S.P.Q.2d 1357
Footnotes
1 Of Course, Defendants' good faith, or lack thereof, may influence the measure of damages, i.e., punitive, compensatory
or nominal. “The very fact that the defendant claims to have acted in good faith may even eliminate his objection to an
injunction, for in that case the defendant himself should be sincerely interested in averting any continuance of the wrong.”
3A RUDOLF CALLMAN, The Law of Unfair Competition, Trademarks and Monopolies § 21.00.50, at 2–3 (1991).
End of Document © 2018 Thomson Reuters. No claim to original U.S. Government Works.
EXHIBIT 6
Caterpillar Inc. v. Telescan Technologies, L.L.C., Not Reported in F.Supp.2d (2002)
© 2017 Thomson Reuters. No claim to original U.S. Government Works. 1
KeyCite Yellow Flag - Negative Treatment
Distinguished by Prosperity Bancshares, Inc. v. Town and Country
Financial Corp., C.D.Ill., February 5, 2013
2002 WL 1301304Only the Westlaw citation is currently available.
United States District Court, C.D. Illinois.
CATERPILLAR INC., Plaintiff,v.
TELESCAN TECHNOLOGIES, L.L.C., Defendant.
No. CIV.A. 00–1111.|
Feb. 13, 2002.
FINAL JUDGMENT
MCDADE, J.
I. INTRODUCTION
*1 Plaintiff, Caterpillar, Inc. (“Caterpillar”), filed thisaction on March 21, 2000, against defendant, TeleScanTechnologies, L.L.C. (“TeleScan”) to prevent TeleScan'suse of the CATERPILLAR and CAT word and designmarks as trademarks and domain names in connectionwith heavy equipment and related services. TeleScan'scounsel withdrew representation in this matter. Since acorporation cannot appear in court other than through itsattorneys, Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d
1423, 1427 (7th Cir.1985), the Court directed TeleScan toretain substitute counsel. TeleScan, however, has failed todo so. On January 16, 2001, the Court issued an entry ofdefault. Pursuant to that entry of default, the Court entersthe following:
II. FINDINGS OF FACT
Caterpillar has for many years been a globally known,multi-national manufacturer and distributor of large,earthmoving, mining and construction equipment (“heavyequipment”) as well as a provider of repair andmaintenance services for that equipment. Complaint,¶ 4. Over a period of many years, Caterpillar hasgenerated and maintained substantial valuable goodwill inits corporate operations and its trademarks. This goodwillhas been generated and sustained through Caterpillar'smany business operations. Complaint, ¶ 5.
Since long prior to the acts of TeleScan that formthe subject of this suit, Caterpillar adopted and hascontinuously used the inherently distinctive marksCATERPILLAR and CAT, and the design marksCATERPILLAR and CAT (the “Caterpillar Marks”)in connection with its heavy equipment goods andservices. Complaint, ¶ 6. Caterpillar owns numerousfederal registrations for the Caterpillar Marks, includingthe following:
Mark
Goods/
Services
First Use in
Commerce
Reg.
No.
Registration
Date
Caterpillar
Tractors,
tractor engines,
track links,
track shoes,
grousers,
grease guns,
agricultural
machinery
tools and
equipment,
road
construction
and
maintenance
machinery
tools and
equipment, and
9/00/04
277,417
11/11/30
Caterpillar Inc. v. Telescan Technologies, L.L.C., Not Reported in F.Supp.2d (2002)
© 2017 Thomson Reuters. No claim to original U.S. Government Works. 2
the parts for all
said goods.
Caterpillar
Tractors
adapted to
be employed
in farming
operations,
road building,
mining,
logging,
earth moving,
hauling and for
other industrial
and agricultural
purposes.
9/00/04
345,499
4/27/37
Caterpillar
Dump wagons,
wheel tractor-
sump-wagon
combinations,
and structural
parts for such
products.
00/00/41
506,258
2/1/49
Caterpillar
diesel engines
for marine
purposes;
cable-control
units for
controlling
cable actuated
equipment
associated with
tractors and the
like
1/00/39
531,626
10/10/50
Caterpillar
Tires
9/30/70
955,141
3/13/73
Caterpillar
(Design)
Lift trucks
and engines,
attachments,
and parts.
9/00/70
985,439
6/4/74
CAT (Design)
Maintenance
and repair
services in the
field of internal
combustion
engines,
vehicles
and power
equipment,
namely, trucks,
tractors,
engines,
earthmoving
10/20/88
1,579,438
1/23/90
Caterpillar Inc. v. Telescan Technologies, L.L.C., Not Reported in F.Supp.2d (2002)
© 2017 Thomson Reuters. No claim to original U.S. Government Works. 3
equipment,
material
handling
equipment,
paving
equipment,
agricultural
equipment,
generators,
and control
units for the
aforementioned
Caterpillar
(Design)
Machinery
for earth
moving, earth
conditioning
and material
handling,
namely,
loaders and
engines
therefor,
and parts
for vehicle
and internal
combustion
engines.
10/20/88
2,140,605
3/3/98
CAT (Design)
Machinery
for earth
moving, earth
conditioning
and material
handling
namely,
loaders and
engines
therefor,
and parts
for vehicle
and internal
combustion
engines;
vehicles for
earth and
material
hauling and
handling,
namely,
tractors and
engines
therefor
10/20/88
2,140,606
3/3/98
*2 These registrations are valid and subsisting,are owned by Caterpillar, and Registration numbers277,417, 345,499, 506,258, 531,626, 955,141, 985,439,
and 1,579,438 have become incontestable pursuant to 15U.S.C. §§ 1065 and 1115(b). Complaint, ¶ 8–9.
Caterpillar Inc. v. Telescan Technologies, L.L.C., Not Reported in F.Supp.2d (2002)
© 2017 Thomson Reuters. No claim to original U.S. Government Works. 4
Caterpillar has spent many millions of dollars advertisingits heavy equipment goods and services under theCaterpillar Marks through a wide variety of channelsof trade, including the Internet. Caterpillar has soldhundreds of millions of dollars worth of Caterpillarbranded heavy equipment and services through a networkof licensed, authorized dealers. These licensed dealerssell both used and new Caterpillar heavy equipment.Complaint, ¶ 10. Caterpillar's extensive advertising andsales have resulted in the Caterpillar Marks becomingsome of the most recognized and famous of marks inthe United States and represent extraordinarily valuablegoodwill owned by Caterpillar. Complaint, ¶ 11; seeStephen P. Smith, America's Greatest Brands: An InsightInto 80 of America's Strongest Brands (2001).
To sell and promote its heavy equipment, Caterpillarowns many domain names and has active web sites at thedomain names www.cat.com and www.caterpillar.com(“Caterpillar web sites”). The Caterpillar web sitesrepresent a considerable investment by Caterpillar andform an important part of its marketing strategy. Theyprovide information regarding Caterpillar's goods andservices, including new and used equipment sales andrentals. The sites also include a Dealer Locator, whichallows consumers to search for a dealership located ina certain area and to search for dealers in their areawho stock a specific piece of Caterpillar equipment.Complaint, Exhibit F.
Caterpillar selected, registered, and uses the domainnames www.cat.com and www.caterpillar.com becauseof the fame and goodwill associated with its CaterpillarMarks and the assumptions that internet users makeabout domain names in searching for particular brandedgoods, services or web sites. Internet users generally willassume that a domain name that consists of a famousmark is associated with or sponsored by the ownerof that mark. Ty, Inc. v.. Agnes M., 2001 U.S. Dist.Lexis 18852 at *20–21 (N.D.Ill. Nov. 13, 2001); FordMotor Co. v. Ford Financial Solutions, 103 F.Supp.2d1126, 1128 (N.D.Iowa 2000); Brookfield Communications,Inc. v. West Coast Entertainment Corp., 174 F.3d 1036,1055 (9th Cir.1999). Based upon this assumption, someinternet users will begin their search for a web siteby typing in a famous trademark or company namefollowed by a top-level domain, like “.com.” Internetusers also may type in famous trademarks or companynames plus some descriptive variant like “products”
or “equipment,” and then followed by a top-leveldomain. Brookfield Communications, Inc. v. West CoastEntertainment Corp., 174 F.3d 1036, 1045 (9th Cir.1999).For example, users seeking the web site for Ford MotorCompany may type in the domain name www.Ford.comor www.Fordtrucks.com. Consumers will use this methodto find web sites because they believe that the ownerof ford.com or fordtrucks.com is associated with FordMotor Company, the original equipment manufacturer.
*3 Caterpillar claims that several domain namesregistered by TeleScan infringe upon Caterpillar's rightsin the Caterpillar Marks. TeleScan has registered over50 domain names that contain famous marks of variouscompanies like John Deere, General Motors, Toyota, andPeterbilt. Complaint, ¶ 20. Among those registrations aresix domain names that are comprised of the CaterpillarMarks: catusedequipment.com; catnewequipment.com;caterpillarusedequip.com; caterpillarnewequip.com;caterpillarequipment.com; caterpillardealers.com(collectively, the “disputed domain names”). Complaint,¶ 12. TeleScan registered the disputed domain nameswithout Caterpillar's consent and with full knowledgeof Caterpillar's long prior use and ownership of theCaterpillar Marks. Complaint, ¶ 15 and 18. Four ofthese disputed domain names resolved to web pages thatwelcomed visitors to the “Caterpillar Used EquipmentWebsite,” the “Caterpillar New Equipment Website,” the“Caterpillar Equipment Website,” and the “CaterpillarDealers Website” (“disputed web sites”). Each of thesepages also purported to be “A Listing Service forCaterpillar Equipment.” Complaint, ¶ 13.
TeleScan intends to use the disputed domain names topromote its services and direct traffic to its web site atwww.heavyscan.com web site that will contain a listing ofthe heavy equipment inventories of subscribing dealers.Complaint, ¶ 12. In a manner similar to Caterpillar'sonline Dealer Locator, consumers could search the listingsby dealer. Consumers also could search the listingsby company to locate dealers who sell new and used
equipment manufactured by that desired company. 1
Complaint, ¶ 12–13. By using the Caterpillar Marks in thisway, TeleScan is trading upon Caterpillar's goodwill andreputation and giving the disputed web sites a notorietyand salability they might not otherwise obtain.
Caterpillar Inc. v. Telescan Technologies, L.L.C., Not Reported in F.Supp.2d (2002)
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III. CONCLUSIONS OF LAW
Pursuant to 15 U.S.C. §§ 1065 and 1115, Caterpillar'sregistrations and use of its Caterpillar Marks confirmthe validity of Caterpillar's exclusive right to use theCaterpillar Marks in connection with the goods andservices specified in those registrations. This exclusiveright empowers Caterpillar to enjoin any third party useof a mark that is likely to cause confusion with theCaterpillar Marks. 15 U.S.C. §§ 1114 and 1116.
The disputed domain names are likely to cause consumerconfusion especially considering that they contain some ofthe most famous marks in America—the Caterpillar marks—and that TeleScan intends to use them to sell actualCaterpillar equipment. See Trans Union LLC v. CreditResearch, Inc., 142 F.Supp.2d 1029, 1042 (N.D.Ill.2001);Paccar, 115 F.Supp.2d at 778. This situation is aggravatedby how people use the Internet. Many people mayassume that the disputed domain names are sponsoredby or associated with Caterpillar because they containthe Caterpillar Marks. Ty, Inc. v.. Agnes M., 2001 U.S.Dist. Lexis 18852 at *20–21 (N.D.Ill. Nov. 13, 2001);Ford Motor Co. v. Ford Financial Solutions, 103 F.Supp.2d1126, 1128 (N.D.Iowa 2000); Brookfield Communications,Inc. v. West Coast Entertainment Corp, 174 F.3d 1036,1055 (9th Cir.1999). The fact that the domain namesalso contain a term that describes the types of productsCaterpillar sells will not change this assumption. TeleScanexploits this incorrect assumption and has increasedthe likelihood that consumers will believe the web sitesare associated with Caterpillar by welcoming visitors tothe web sites with phrases such as “Caterpillar UsedEquipment Website” and by purporting to be “A ListingService for Caterpillar.”
*4 In sum, visitors looking at the disputed web sitesmay mistakenly believe that the web sites are affiliatedwith Caterpillar when they see the Caterpillar Marksin the domain names and on the sites and also see alisting of Caterpillar products. By using the CaterpillarMarks in this way, TeleScan is trading upon the goodwilland fame associated with the Caterpillar Marks for itsown profit. This constitutes trademark infringement. Atleast one court has already ruled that TeleScan's use ofthird party marks in domain names constitutes trademarkinfringement. In Paccar v. TeleScan, Inc., the EasternDistrict of Michigan ruled that TeleScan's use of Paccar's
marks in several different domain names for web sites thatsell Paccar products constituted trademark infringement.115 F.Supp.2d 772 (E.D.Mich.2000). Furthermore, thepurpose for which TeleScan registered the disputeddomain names and the manner in which TeleScan intendsto use the disputed domain names and the CaterpillarMarks also constitutes bad faith. Due to this finding ofbad faith which makes this an exceptional case under theLanham Act, Caterpillar is entitled to its attorney feesrelated to this action. Sanderson v. Spectrum Labs, Inc.,248 F.3d 1159 (7th Cir.2000); BASF Corp. v. Old WorldTrading Co., 41 F.3d 1081, 1099 (7th Cir.1994).
The fact that TeleScan has placed disclaimers on the websites does not alleviate the likelihood that consumers willbelieve that the web sites are associated with Caterpillar.First, disclaimers normally are ineffective. Simon Prop.Group, L.P. v. MySimon, Inc., 2001 U.S. Dist. LEXIS 852at *63–64 (N.D.Ill. Jan. 24, 2001). Second, even if thedisclaimers are effective, they will not cure the problem ofinitial interest confusion. Id. Internet based initial interestconfusion “occurs when customers seeking a particularweb site are diverted by allegedly infringing domain namesand metatags to a competing web site and then realizethat the site they have accessed is not the one they werelooking for, but nevertheless decide to use the offeringsof the infringing site.” Trans Union, 142 F.Supp.2d at1043–44. Thus, if a consumer logs onto the disputedweb sites, he or she may eventually realize that the siteis not sponsored by Caterpillar, and yet still purchaseCaterpillar heavy equipment through the unauthorizeddealers listed at the heavyscan.com web site. This typeof initial interest confusion is a violation of Caterpillar'srights in the Caterpillar Marks. Paccar v. TeleScan, 115F.Supp.2d 772, 778 (E.D.Mich.2000) (“A disclaimer thatpurports to disavow association with the trademark ownerafter the consumer has reached the site comes too late;the customer has already been misdirected. This problem,denoted as ‘initial interest confusion’ ... is a form ofconfusion protected by the Lanham Act.”)
TeleScan's use of the Caterpillar Marks also runs afoul ofthe Anticybersquatting Consumer Protection Act, whichimposes liability upon a person who (1) uses a domainname that is identical or confusingly similar to a famousor distinctive mark and (2) uses that domain name a badfaith intent to profit. 15 U.S.C. § 1125(d)(1)(A). TeleScanfulfills both prongs of this test. First, the CaterpillarMarks are among the most famous marks currently used
Caterpillar Inc. v. Telescan Technologies, L.L.C., Not Reported in F.Supp.2d (2002)
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in United States commerce, and the disputed domainnames are confusingly similar to the Caterpillar Marks.Second, TeleScan did have a bad faith intent to profitfrom its use of the Caterpillar marks. Pursuant to 15U.S.C. § 1125(d)(1)(B)(i)(VIII), this finding of bad faithcan be inferred from the fact that TeleScan has notrademark rights to the Caterpillar Marks and that thedisputed domain names were intended to divert trafficto TeleScan's www.heavyscan.com web site. Even moretelling is the fact that TeleScan not only had registeredmultiple domain names which contain famous marks,but that at least one court had already found TeleScan'sregistration of domain names containing famous marksviolated that Lanham Act. Paccar v. TeleScan, 115F.Supp. 772 (E.D.Mich.2000); see Nav–Aids Ltd. v. Nav–Aids USA, Inc., 2001 U.S. Dist. LEXIS 17619 at *25–25(N.D.Ill. October 24, 2001) (finding that the registrationof a domain name similar to plaintiff's mark was attemptto divert traffic and thus an indication of bad faith intent);15 U.S.C. § 1125(d)(1)(B) (i)(VIII) (listing registrationof multiple domain names which the person knows areconfusingly similar to other's marks as a factor favoringa finding of bad faith); Shields v. Zuccarini, 254 F.3d476, 485 (4th Cir.2001). Therefore, TeleScan's registrationand use of the disputed domain names violates theAnticybersquatting Consumer Protection Act.
*5 TeleScan's use of the Caterpillar Marks also dilutesthe distinctive quality of the Caterpillar Marks. Dilution is“the lessening of the capacity of a famous mark to identifyand distinguish goods or services.” 15 U.S.C. § 1125; SeeAgnes M., 2001 U.S. Dist. LEXIS at *45. Dilution occursin cyberspace when a defendant's use “lessens the capacityof [the plaintiff] to identify and distinguish its goods andservices by means of the Internet.” Ty, Inc. v. Perryman,2001 U.S. Dist. LEXIS 10303, 2001 WL 826893, at *13.In the Seventh Circuit, it is unnecessary for the plaintiffto demonstrate actual economic harm, only a “likelihoodof dilution based on the renown of its trademarks and thesimilarity between those marks and the allegedly dilutinguses” of the defendant. Agnes M. Ltd., 2001 U.S. Dist.LEXIS at *45. A defendant's use of plaintiff's marks as adomain name dilutes those marks because they diminishplaintiff's capacity to “identify and distinguish its goodsby means of the Internet.” Id. at *46; Paccar v. TeleScan,115 F.Supp.2d 772, 779–80 (E.D.Mich.2000) (holding thatTeleScan's use of trademarks in domain names “ ‘dilutes'the trademark by placing the trademark owner ‘at themercy’ of the web site operator”). In this case, TeleScan's
use of the Caterpillar Marks in the disputed domainnames lessens Caterpillar's ability to identify its goods andservices via the Internet.
The fair use doctrine, which renders lawful the merelydescriptive use of others' marks, does not insulateTeleScan from liability. Just as an automobile repair shopmay, without first obtaining authorization, advertise thatit “repairs [plaintiff's] cars, [it] may not do so in a mannerwhich is likely to suggest to his prospective customers thathis is part of [plaintiff's] organization of franchised dealersand repairmen.” Volkswagenwerk Aktiengesellschaft v.Church, 411 F.2d 350, 352 (9th Cir.1969). Here, TeleScan'suse of the Caterpillar Marks in the disputed domainnames as well as on its associated web pages creates animpression that TeleScan is related to or sponsored byCaterpillar, and thus confuses the public about the sourceor sponsorship of TeleScan's goods and services. Paccar v.TeleScan, 115 F.Supp.2d 772, 779 (E.D.Mich.2000). Thisis the very type of confusion the Lanham Act is meantto prevent, and the very type of use that lies outside theumbrella of the fair use doctrine.
Nor is the first-sale doctrine a valid defense. The first-sale doctrine protects a trademarked-product resellerfrom infringement liability when use of the trademark isonly “incidental to permissible resale and accompanyingadvertisement of trademarked products,” but the doctrineis not available to uses that “create confusion beyondmere resale...” Enesco Corp. v. K's Merchandise MartInc., 56 U.S.P.Q.2d 1583 (N.D.Ill.2000); see SebastianInt'l v. Longs Drug Stores Corp., 53 F.3d 1073, 1076 (9thCir.1995) (“When a purchaser resells a trademark articleunder the producer's trademark, and nothing more, thereis no actionable misrepresentation under the statute,” butfinding that use actionable when in “telephone directoryadvertising”, and “promotional literature”). Any conduct“beyond mere resale” triggers liability. For example,“active or purposeful deception, false suggestion, ormisrepresentation on the part of a reseller, designed orlikely to cause confusion about whether or not the reselleris an authorized dealer.” Enesco, 56 U.S.P.Q. at 1593.Indeed, the first sale doctrine flounders where the plaintiffmanufacturer has an established network of authorizeddealers and defendant's activity misleads consumers intothinking that defendant is part of that network. Berninaof America, Inc. v. Fashion Fabrics Int'l, Inc., 2001 U.S.Dist. LEXIS 1211 at *5–6; 2001 WL 128164 (N.D.Ill. Feb.9, 2001). Here, TeleScan's use of the Caterpillar Marks
Caterpillar Inc. v. Telescan Technologies, L.L.C., Not Reported in F.Supp.2d (2002)
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in the disputed domain names and the claims that thedisputed web sites were “A Listing Service of CaterpillarEquipment” is likely to cause confusion beyond mereresale.
*6 TeleScan's verbatim incorporation of the CaterpillarMarks in the disputed domain names and use of theCaterpillar Marks on the disputed web sites conveysan overall commercial impression that will confuseconsumers into believing that the sites and services to beprovided to them are approved, authorized, or otherwiseendorsed by Caterpillar. TeleScan's use of the CaterpillarMarks in connection with heavy equipment and motorvehicle sales, advertising, or listing services and TeleScan'suse of the Caterpillar Marks within the disputeddomain names constitutes trademark infringement, unfaircompetition, dilution, and cybersquatting. Furthermore,TeleScan's registration of the disputed domain names andintent to use the domain names to direct traffic to itswww.heavyscan.com web site constitutes bad faith andentitles Caterpillar to its attorney fees related to thisaction. For the above reasons, it is hereby ordered:
I. TeleScan, its assigns, agents, servants, affiliates,employees, attorneys, and representatives, and all thosein privity with or acting through or in connection withTeleScan, including but not limited to Ron Thomas, arepermanently enjoined from:
A. registering or maintaining registration of thedisputed domain names, or any other domain names,trademarks, designations or symbols containing theCaterpillar Marks, in whole or in part, or that areconfusingly similar to, or dilutive of, the CaterpillarMarks;
B. using the disputed domain names or any otherdomain names containing the Caterpillar Marks, inwhole or in part, or that are confusingly similar to, ordilutive of, the Caterpillar Marks;
C. using any trademarks, designations or symbolscontaining the Caterpillar Marks, in whole or in part,or that are confusingly similar to, or dilutive of, theCaterpillar Marks on any of TeleScan's web sitesor other promotional materials in a manner that islikely to give consumers the impression that TeleScan,TeleScan's goods or services, the disputed web sites orany other web sites owned by TeleScan are owned,associated with, or sponsored by Caterpillar;
D. claiming ownership of the disputed domain namesor any other domain names, trademarks, designationsor symbols containing the Caterpillar Marks, in wholeof in part, or that are confusingly similar to, or dilutiveof, the Caterpillar Marks
E. offering for sale the disputed domain names orany other domain names, trademarks, designations orsymbols containing the Caterpillar Marks, in whole orin part, or that are confusingly similar to, or dilutive of,the Caterpillar Marks;
F. transferring, to any person or entity, other thanCaterpillar, the infringing domain names or any otherdomain names, trademarks, designations or symbolscontaining the Caterpillar Marks in whole or in part,or that are confusingly similar to, or dilutive of, theCaterpillar Marks;
G. doing any other act or thing likely to induce thebelief that TeleScan's business or service is in any waylegitimately connected with, sponsored by or approvedby Caterpillar;
*7 H. doing any other act or thing likely to inducethe belief that any web sites owned or registered byTeleScan are in any way legitimately connected with,sponsored by or approved by Caterpillar; and
I. doing any act or thing likely to dilute thedistinctiveness of the Caterpillar Marks or likely totarnish the goodwill associated with them.
II. TeleScan is directed to:
A. disclose to the Court and Caterpillar all otherdomain name registrations of domain names thatcontain in whole or part the Caterpillar Marks that areowned by TeleScan through any domain name registry,in order to permit the Court and Caterpillar to considerwhether any such other registrations should be subjectto relief in this matter.
B. transfer to Caterpillar the registrations in thedisputed domain names and any other registrations asmay be determined by this Court as appropriate forrelief and with TeleScan to bear any costs associatedwith such transfer of ownership;
C. provide an accounting of all profits derived byTeleScan from its unlawful acts for the Court and
Caterpillar Inc. v. Telescan Technologies, L.L.C., Not Reported in F.Supp.2d (2002)
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Caterpillar to consider whether these profits should bepaid to Caterpillar;
D. pay to Caterpillar all of the costs of this action;
E. pay to Caterpillar the $7,5000 that the Court orderedTeleScan to pay to Caterpillar in its July 26, 2001 order;
F. pay to Caterpillar all of the attorney's fees expendedin this action;
G. deliver up for destruction all labels, signs, brochures,prints, advertisements, and any other material ofan infringing, diluting tarnishing or unfair nature in
TeleScan's possession or control as well as all meansof making the same; and file with this Court and serveon Caterpillar within thirty (30) days after the entry ofjudgment a written report under oath setting forth indetail the manner and form of TeleScan's compliancewith the terms of this Court's order.
SO ORDERED AND ADJUDGED
All Citations
Not Reported in F.Supp.2d, 2002 WL 1301304
Footnotes
1 Telescan already maintains a web site at truckscan.com that has a searchable listing of new and used trucks. As in
the current matter, Telescan linked a number of domain names that contained famous third party trademarks to the
truckscan.com web site. This practice was challenged in PACCAR, Inc. v. TeleScan Technologies, L.L.C., 115 F.Supp.2d
772, 780 (E.D.Mich.2000), and the court found that TeleScan's use of Paccar's domain names that contained famous
marks to direct traffic to the truckscan.com web site constituted trademark infringement.
End of Document © 2017 Thomson Reuters. No claim to original U.S. Government Works.
EXHIBIT 7
Mailed: March 12, 2007
U.S. DEPARTMENT OF COMMERCE PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board _____
Caterpillar, Inc.
v. Pave Tech, Inc.
_____
Cancellation No. 92041776 _____
Edward G. Weirzbicki, Mary E. Innis and Nerissa Coyle McGinn of Loeb & Loeb LLP for Caterpillar, Inc. Rebecca Jo Bishop and Michael J. O’Loughlin of Altera Law Group LLC for Pave Tech, Inc.
_____ Before Hairston, Walsh and Taylor, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: A petition has been filed by Caterpillar Inc. to cancel
a registration issued to Pave Tech, Inc. for the mark
PAVERCAT, in typed or standard character format, for
“machines and machine parts used to aid in the installation
of segmental pavers.”1
As grounds for cancellation, petitioner alleges that it
is a long-established, multi-national company with business
1 Registration No. 2684138, issued February 4, 2003, claiming first use and first use in commerce on February 23, 2000.
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Cancellation No. 92041776
2
operations in many areas, including the development,
manufacture, distribution, marketing and sale of
construction and earthmoving equipment including but not
limited to mini hydraulic excavators, road reclaimers,
asphalt pavers, tractors, and power and manually controlled
graders, scarifiers, scrapers, and rippers adapted to be
employed for the construction and maintenance of roads; that
since long prior to January 28, 2000, the date respondent
filed its application for Registration No. 2684138,
petitioner adopted and began to use the marks CAT, in typed
or standard character form, and CATERPILLAR, in typed or
standard character form, and the marks and
(“hereinafter collectively referred to as the Caterpillar
marks”)2 in commerce with these goods and services.
Petitioner further alleges that since long prior to January
28, 2000, petitioner has enjoyed substantial sales of its
products and services under its Caterpillar marks and has
spent substantial sums in advertising and promoting the
products and services sold under the Caterpillar marks in
the United States; that since long prior to January 28,
2000, the Caterpillar marks became famous; that upon
information and belief, neither respondent nor its
2 Petitioner has pleaded ownership of eleven registrations for the marks CAT and CATERPILLAR (both with and without design elements) that cover various goods and services in the construction industry.
Cancellation No. 92041776
3
predecessor or related company made commercial use of the
trademark PAVERCAT for the goods identified in Registration
No. 2684138 prior to the date respondent filed its
application for the registration; and that respondent’s use
of the trademark PAVERCAT for the identified goods is likely
to cause confusion, mistake or deception as to the source of
origin, sponsorship or approval of respondent’s products.
In its answer, respondent has admitted the allegations
contained in paragraphs 8 and 9 of the petition for
cancellation, namely that “… neither Respondent nor any
predecessor or related company of Respondent made commercial
use of the trademark PAVERCAT for the goods identified in
Registration No. 2,684,138 prior to January 28, 2000, the
date Respondent filed its application for Registration No.
2,684,138” and “Respondent’s use of the trademark PAVERCAT
is without Petitioner’s consent or permission.” Respondent
otherwise denied the salient allegations of the petition for
cancellation. Respondent also has asserted what it
characterizes as “AFFIRMATIVE DEFENSES,” but are actually
amplifications of its reasons why confusion is not likely.
THE RECORD
The record consists of the pleadings; the file of the
registration sought to be cancelled; petitioner’s testimony
depositions, with exhibits, of Kurt D. Tisdale, petitioner’s
general construction industry division manager and J.
Cancellation No. 92041776
4
Michael Hurst, one of petitioner’s trademark attorneys; and
petitioner’s notices of reliance on: status and title
copies of petitioner’s pleaded registrations; certain of
respondent’s interrogatory answers; and excerpts from the
discovery depositions, with exhibits, of respondent’s
30(b)(6) witnesses, namely, Stephen Jones, respondent’s
president, and Robert Cramer, respondent’s field services
manager.3 Respondent did not take any testimony or submit
any other evidence in support of its position.
FINDINGS OF FACT
Petitioner, Caterpillar, Inc., is the world’s leading
manufacturer of construction equipment, including building
construction and compact construction equipment.
Petitioner’s CATERPILLAR and CAT marks have been used
continuously on construction equipment since 1904 and 1948
respectively. Although initially known in large part for
heavy road building and mining equipment, Caterpillar
expanded its product line in the 1970’s to include a line of
smaller equipment known as the building construction compact
equipment line. This equipment line includes various types
of material handling machines such as skid steer loaders,
multi terrain loaders, compact wheel loaders, compact
3 Petitioner also has submitted, under notice of reliance, a copy of the registration file for respondent’s PAVERCAT mark. We note, however, that the record includes, without action by petitioner, the file of the registration. See Trademark Rule 2.122(b).
Cancellation No. 92041776
5
telehandlers, backhoe loaders, small wheel loaders hydraulic
elevators, and small track type tractors. Some of
petitioner’s material handling machines are comparable in
price to respondent’s machines. (Tisdale dep., p. 7, 12, 24-
25).4
Petitioner’s equipment is sold through a worldwide
network of independently-owned dealers, of which 57 are
located in North America. Petitioner sells to its dealers,
who in turn sell to end users and have their own rental
fleet. Petitioner’s business includes the CAT Rental
Stores, 400 of which are located in North America. The CAT
Rental Stores are owned by petitioner’s dealers and serve
the building construction, landscaping and contractor
industries, where they rent on a short-term basis, e.g.,
daily, weekly and monthly, both petitioner’s products and
other products, including hand tools, generators and compact
construction equipment. (Tisdale dep., p. 14-16).
The CAT trademark was first used in 1948 and is
prominently displayed on each of petitioner’s products.
Several of petitioner’s different business arms are branded
with the CAT trademark, such as CAT Financial Services
Corporation, CAT Logistics and the CAT Rental Store.
4 The pricing for petitioner’s compact equipment line has been marked confidential.
Cancellation No. 92041776
6
(Tisdale dep., p. 28). Petitioner also uses the CAT mark in
connection with its NASCAR program5. (Tisdale dep., p. 47).
Petitioner has extensively promoted its CAT mark
through advertisement in trade publications, the
distribution of product brochures and newsletters to its
customers and potential customers, and on the Internet at
www.cat.com. Petitioner’s other advertising efforts include
the appearance of the CAT mark on all of petitioner’s
authorized dealer’s delivery trucks and through the
licensing of its mark to a wide variety of merchandise
providers for products such as clothing, boots, golf balls,
and scale model replicas. Petitioner also promotes its CAT
mark to the general public through its NASCAR program and
two television shows, i.e., the Discovery Channel’s series
“American Chopper” for which the CAT Chopper motorcycle was
built and HGTV’s “Dream Home” Series which films the
construction of a home. Petitioner particularly has
promoted its compact equipment line in magazines, direct
mail, brochures, radio, television, billboards, trade shows
and open house promotions. (Tisdale dep., p. 93-95, Ex.
49). More generally, the CAT Rental Stores advertise in the
Yellow Pages, trade magazines, radio, television, on
5 The program includes sponsorship of a Winston Cup Series NASCAR racing car, where the CAT design mark is prominently displayed on the hood of the sponsored race car. (Tisdale dep., p. 47).
Cancellation No. 92041776
7
vehicles and in petitioner’s quarterly-published magazine.
(Tisdale dep., p. 51-52; Ex. 9).
Although Petitioner’s sales figures and advertising and
promotional expenditures have been marked “confidential,”
they are substantial, with the sales figures for
petitioner’s compact equipment line steadily increasing
since 1995. (Tisdale, ex. 67). The sales figures from 1995
through 1999 encompass petitioner’s North American
operation, while the sales figures from 2000 through 2004
are separated into North American and United States sales.6
CATERPILLAR [and CAT] has been named one of America’s
80 strongest brands by America’s Greatest Brands Inc.7 and
the 68th most valuable brand in the world by Business Week.
(Tisdale dep., p. 116-117; Tisdale Exs. 5 and 69).
Petitioner also has an aggressive trademark enforcement
program related to its CATERPILLAR and CAT trademarks as
well as CAT formative marks.8 (Hurst dep. and Exs. 73-75).
6 In this regard, we note the vast majority of the Cat Rental Stores are located in the United States. 7 In the publication America’s Greatest Brands An Insight Into 80 of America’s Strongest Brands, Volume 1, ranking “Caterpillar” as one of America’s strongest brands, America’s Greatest Brand Inc. states, in part, that the CAT and CATERPILLAR brands [marks] are “equally established” and the CAT mark “takes a more dominant position in product promotion and identification.” (Tisdale Ex. 5). 8 “Cat formative,” as used by petitioner, is “any trademark that uses the term “CAT in any type of configuration found in the mark.” (Hurst dep., p. 5).
Cancellation No. 92041776
8
What information we have regarding respondent and its
goods was obtained through respondent’s responses to
petitioner’s interrogatories and the discovery depositions,
and accompanying exhibits, of its 30(b)(6) witnesses.
Respondent, Pave Tech, “originally started as a 1986
corporation as a contractor involved in the installation of
segmental paving … [and] evolved from a construction company
to … a sales and marketing company for construction
products.” (Jones dep., p. 7-8).
“The PAVERCAT paver installation machine and the
PAVERCAT name were first used by PAVE TECH, INC. at the
World of Concrete 2000 trade show on February 23, 2000….”
(Respondent’s Response to Interrogatory No. 3). The only
products offered by respondent under the PAVERCAT name are
the motorized machine designed to aid in the installation of
segmental pavers and accessories offered for use with it.
(Respondent’s Response to Interrogatory No. 14). The
PAVERCAT product is described as a “[j]obsite material
handler. Great for light grading, sand and paver transport
and sand sweeping.” (Ex. 7 to the Jones deposition,
submitted as Ex. 72). The PAVERCAT product is further
described as a “Universal Machine … that can be fitted with
a hydraulic paver clamp, a sand bucket, a sand broom, a
rotary sand/cleaning brush and many other attachments for
Cancellation No. 92041776
9
the handling of concrete products.” (Ex. 8 to the Jones
dep., submitted as Tisdale ex. 72).
Respondent advertises and promotes its PAVERCAT product
by displaying and demonstrating the product at trade shows.
(Respondent’s Response to Interrogatory No. 13).
Before beginning our discussion, we note that
petitioner has pleaded ownership of eleven registrations in
the petition for cancellation. Among the pleaded
registrations is Registration No. 24210779 for the mark CAT
and design, as shown below,
for use on or in connection with a variety of compact
construction equipment, including “skid steer loaders.” In
its brief on the case, petitioner focuses its arguments in
favor of a finding of likelihood of confusion on its CAT and
design mark and its compact construction equipment line,
particularly the skid steer loaders. In analyzing
likelihood of confusion, we accordingly limit our discussion
to the PAVERCAT mark and recited goods vis-à-vis the Cat and
design mark for “skid steer loaders,” the skid steer loaders
being most relevant to respondent’s machines and machine
parts to aid in the installation of segmental pavers.
9 Registered January 16, 2001, and claiming July 13, 1988 as the date of first use and October 20, 1988 as the date of first use in commerce, Section 8 and Section 15 affidavits, filed.
Cancellation No. 92041776
10
PRIORITY
Respondent’s underlying application for the involved
registration was filed on January 28, 2000. Respondent
neither alleged nor proved a date of first use earlier than
this date. Thus, the operative date of respondent’s first
use for purposes of this priority dispute is January 28,
2000. Section 7(c) of the Trademark Act, 15 U.S.C. §
1057(c). See Hilson Research Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423, 1428-29, n. 13 (TTAB
1993); and Brewski Beer Co. v. Brewski Brothers Inc., 47
USPQ2d 1281, 1284 (TTAB 1998). Regarding petitioner’s use
of its mark:
To establish priority, the petitioner must show proprietary rights in the mark that produce a likelihood of confusion. These proprietary rights may arise from a prior registration, prior trademark or service mark use, prior use as a trade name, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights.
Herbko International Inc. v. Kappa Books Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) [citation
omitted].
Petitioner has made of record a status and title copy
of its pleaded Registration No. 2421077. The filing date of
the underlying application for that registration is November
12, 1999. Inasmuch as November 12, 1999 precedes any date
of first use upon which respondent may rely, priority rests
Cancellation No. 92041776
11
with petitioner with respect to the CAT and design mark for
skid steer loaders. American Standard Inc. v. AQM
Corporation, 208 USPQ 840 (TTAB 1980). Notably, respondent
does not dispute petitioner’s priority.
LIKELIHOOD OF CONFUSION
Our determination of the issue of likelihood of
confusion is based on an analysis of all the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by §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). We also must bear in mind that the fame of a
plaintiff’s mark, if it exists, plays a “dominant role in
the process of balancing the DuPont factors.” Recot Inc. v.
M.C. Becton, 214 F.3 1322, 1327, 54 USPQ2d 1894, 1897 (Fed.
Cir. 2000).
Fame of Petitioner’s Mark
As noted, we are required to consider evidence of the
fame of petitioner’s mark and to give great weight to such
evidence if it exists. See Bose Corp. v. QSC Audio Products
Inc., 293 F.3d 1367, 63 USPQ 1303, 1309 (Fed. Cir. 2002);
Cancellation No. 92041776
12
Recot Inc. v. M.C. Becton, supra; Kenner Parker Toys, Inc.
v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992).
Fame of an opposer’s10 mark or marks, if it exists plays a “dominant role in the process of balancing the DuPont factors.” Recot, 214 F.3d at 1327, 54 USPQ2d at 1897, and “[f]amous marks thus enjoy a wide latitude of legal protection. Id. This is true as famous marks are more likely to be remembered and associated in the public mind than a weaker mark, and are thus more attractive as targets for would-be copyists. Id. Indeed, [a] strong mark … cast a long shadow which competitors must avoid.” Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d at 1456. A famous mark is one “with extensive public recognition and renown.” Id.
Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
In this case, we find that petitioner’s CAT and design
mark is indeed a famous mark in the field of compact
construction equipment.11 The record reflects that the CAT
10 Fame of a petitioner’s mark likewise plays an important factor inasmuch as the analysis of the du Pont factors is the same in both opposition and cancellation proceedings. 11 Petitioner also asserts that Pave Tech’s President, Mr. Jones, admits that CAT is a world famous trademark. While there was some acknowledgment by Mr. Jones that CAT is a famous trademark, it is unclear whether Mr. Jones was referring solely to fame as it relates to petitioner’s heavy construction equipment and, accordingly, we do not find a concession as to fame as it relates to petitioner’s compact construction line. Specifically we note the following testimony of Mr. Jones during the 30(b)(6) discovery deposition:
Q. Would you agree, Mr. Jones, that “cat” is a famous trademark?
Cancellation No. 92041776
13
and design mark has been used since the late 70’s in
connection with petitioner’s compact equipment line and that
petitioner capitalized on the strength of its CAT and design
mark for heavy equipment by co-marketing both lines of
products. (Tisdale dep., p. 89-90 and the sampling of
advertisements reproduced in Petitioner’s Brief, p. 10-14).
Further, the CAT and design trademark is featured
prominently on all of petitioner’s products, licensed
merchandise and on the signage of the CAT Rental Stores, 400
of which are located in North America, 335 of which are in
the United States.
Although certain portions of the record have been
marked “confidential,” so we are unable to disclose specific
Mr. O’LOUGHLIN: Answer only if you know the answer.
A. Well, as a trademark, yes, it is quite worldwide famous, but it is also a very common term. So, in reference to heavy construction equipment, yes.
Q. I just want to clarify to make sure I understand your last
response. Is it correct that you would agree that “cat” is a famous trademark in the construction equipment industry?
A. Yes. Q. In addition to the fact that “cat” is a famous mark in the
construction industry, your last response indicated an addition to that. Could you also explain to me or, I guess, restate what the second part of your answer was?
A. Well, the term cat is used by other companies known in the
construction industry also such as Bobcat who we worked with in the past. So I guess if you are asking if the word cat in and of itself is a world famous trademark and do I recognize that, yes.
(Jones dep., p. 43-44). In any event, respondent did not dispute petitioner’s claim that its CAT and design mark is famous.
Cancellation No. 92041776
14
sales figures and advertising and promotional expenditures,
the record establishes that petitioner unquestionably has
had significant volume of sales and has extensively promoted
its CAT and design mark. Petitioner also has advertised its
mark in virtually every medium. Indeed, petitioner’s CAT
mark has been recognized as one of the world’s strongest
brands. (Tisdale dep., p. 116-117; Tisdale Exs. 5 and 69).
Additionally, petitioner’s aggressive trademark
enforcement activities reinforce the strength of its CAT
marks. See J.Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, § 11.91 (4th ed. 2005) (“… active
program of prosecution of infringers … enhances the
distinctiveness and strength of a mark”).
Based on this evidence, we find that petitioner’s CAT
and design mark is famous.
Similarity of the Marks
Considering now the marks, we must determine whether
petitioner’s CAT and design mark and respondent’s
PAVERCAT mark, when compared in their entireties, are
similar or dissimilar in terms of sound, appearance,
connotation and commercial impression. As our principal
reviewing court has indicated, while marks must be
considered in their entireties, including any descriptive
matter, in articulating reasons for reaching a conclusion
on the issue of likelihood of confusion, “there is
Cancellation No. 92041776
15
nothing improper in stating that for rational reasons,
more or less weight has been given to a particular
feature of a mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). For instance,
according to the court, “that a particular feature is
descriptive … with respect to the involved goods and
services is one commonly accepted rationale for giving
less weight to a portion of a mark …. “ Id. Furthermore,
the test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of
their overall commercial impression that confusion as to
the source of the goods and/or services offered under the
respective marks is likely to result. The focus is on
the recollection of the average purchaser who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Respondent contends that “the marks PAVERCAT … and
CAT are not sufficiently similar, especially in light of
Pave Tech’s addition of the word PAVER at the beginning
of its mark. The only similarity between the marks is
the word “cat” which is insufficient given the placement
Cancellation No. 92041776
16
and emphasis of this word in Pave Tech’s mark.”
(Respondent’s Brief, p. 4).
We disagree. In evaluating the similarity of the
marks, as admitted by respondent, the term “paver” is
generic for a segmental paver. (Jones dep., p. 16-17).
We therefore find that the dominant and distinguishing
portion of respondent’s mark PAVERCAT is the term “CAT,”
due to the genericness of the word “paver.” Thus, the
dominant portion of respondent’s mark is virtually
identical to petitioner’s mark.
The generic word “paver,” while not present in
petitioner’s mark, would not be looked to as a source-
identifying element. Nor do we find that the triangle
design, located beneath the letter “A” in petitioner’s mark,
distinguishes the parties’ marks in appearance.
Additionally, because respondent’s mark is registered in
typed format, respondent’s rights therein encompass the
letters “PAVERCAT” and are not limited to the depiction
thereof in any special form. See Phillips Petroleum Co. v.
C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971).
As the Phillips Petroleum case makes clear, when a word mark
is registered in typed form, the Board must consider all
reasonable modes of display that could be represented.
Accordingly, respondent’s mark must be considered to include
Cancellation No. 92041776
17
the same stylized lettering and/or color scheme as that in
which petitioner’s mark appears.
Contrary to respondent’s assertion, we also do not find
the placement of the generic term “paver” at the beginning
of respondent’s mark a distinguishing feature. See
Caterpillar Tractor Company v. Gehl Company 177 USPQ 343
(TTAB 1973) (the addition of the prefix “HYDRA,” a
descriptive term, to “CAT” found not sufficient to
distinguish the mark as a whole from “CAT.”).
Accordingly, we find that in their entireties, the
marks are not only substantially similar in appearance due
to the shared phrase CAT but, in light thereof, they are
substantially similar in connotation and convey a
substantially similar commercial impression. Thus, the
factor of the similarity of the marks favors a finding of
likelihood of confusion.
Similarity of the Goods/ Trade Channels/ Consumers
Turning now to a consideration of the goods, petitioner
contends that both its skid steer loaders and respondent’s
paver installation machines are material handling machines
which perform the same function. By contrast, respondent
contends that such goods covered by the respective
registrations are dissimilar. In particular, respondent
asserts that the goods are dissimilar because “[n]ot one of
Caterpillar’s asserted trademark filings identify segmental
Cancellation No. 92041776
18
paving equipment.” (Respondent’s brief, p. 4). Respondent
argues that the Board is constrained to evaluate the
similarity of the goods on the basis of the descriptions set
forth in the relevant trademark “filings” and that
petitioner’s activities are entirely irrelevant.
We concur that the issue of likelihood of confusion
must be determined based on an analysis of the
identification of goods or services set forth in defendant’s
involved registration vis-à-vis the goods or services
recited in plaintiff’s registration. See Octocom Services
Inc. v. Houston Computers Services Inc. v. Houston and
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1783 (Fed. Cir. 1992). However, 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 the 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 would 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 the cases cited therein.
Cancellation No. 92041776
19
Respondent’s registration is for “machines or machine
parts used to aid in the installation of segmental pavers.”
As observed earlier in this decision, respondent advertises
its machine as a “Universal Machine … that can be fitted
with a hydraulic paver clamp, a sand bucket, a sand broom, a
rotary sand/cleaning brush and many other attachments for
the handling of concrete products.” (Exhibit 8 to the Jones
deposition, submitted and Ex. 72). The advertisement
further touts: “[u]se the bucket to move your screening
sand into position and level it”; … “[m]oving your paving
blocks to the laying face quickly”; … “[u]se the brush to
sweep your jointing sand.” Id.
Mr. Tisdale, petitioner’s general construction industry
division manager, testified that these same tasks, namely,
installation of segmental pavers, can be performed by
petitioner’s compact equipment, especially its skid steer
loaders.12 (Tisdale dep., p. 18-19, 20-23, 26-27, 35-36, 59-
12 Mr. Tisdale specifically testified that:
Q. And could you turn the page -- let's go to the exhibit -- let's go to the sixth page of Exhibit No. 72.
A. On this page is a picture of the product called PAVERCAT. The title of the picture says PAVERCAT, capitol C-A-T, 2WD and 4WD, which refers to two-wheel drive and four-wheel drive offerings of this -- the industry term we use is material handler. It’s a small four-wheel vehicle with a front tool or attachment that is handling a -- a pallet of bricks or pavers used in a driveway, patio or sidewalk project.
Q. Which products in Caterpillar’s compact equipment line could perform the same function that you see being performed on Page 6?
Cancellation No. 92041776
20
61). More specifically, Mr. Tisdale testifies that: It is
my belief that we are more versatile. … For our skid steer
loader, we offer over 40 different attachments and tools for
the front of the machine to do these same applications [as
the PAVERCAT machine] of grading, material handling,
sweeping, etc….” Moreover, pictures in advertisements of
both parties show petitioner’s compact equipment, sold under
its CAT and design mark, performing the same or similar
tasks as respondent’s PAVERCAT paver installation machine in
the construction of driveways, patios, and sidewalks.
(Tisdale exs. 28 and 55 and Jones exs. 10, 15 and 16
submitted as Tisdale ex. 72, and reproduced in Petitioner’s
brief, p. 43-44).
A. We have machines and work tools under the skid steer
loader line, multi terrain loaders, compact wheel loaders, backhoe loaders, and telehandlers that all -- and as well as lift trucks -- that all offer material handling capabilities and can and are used in projects similar to this.
Q. And they all can and are used for moving pavers and bricks and things of that nature. Is that correct?
A. That is correct. We actually highlight in many of our own advertising and promotion pieces machines with a set of forks, a set of material handling tools, in the front that are handling pallets and groups of bricks, flagstone pavers, etc.
Tisdale Dep., p. 18-19.
Q. Would individual consumers, homeowners, people of that type, also be potential customers of the CAT Rental Stores?
A. We will take anybody who walks into the Cat Rental Store and solicit or gather their information on what their project needs are, show them what we have to offer. The targeted audience is the small contractor doing, like I mentioned, patio, driveway, landscaping, building type of projects.
Tisdale dep., P. 35-36.
Cancellation No. 92041776
21
We therefore find that respondent’s machines and
machine parts for aid in the installation of segmental
pavers and petitioner’s skid steer loaders, as identified in
the respective identifications of goods, perform the same or
very similar functions.
We also find that respondent’s attempt to distinguish
its goods from those of petitioner by stressing petitioner’s
admission that “the PAVERCAT material handler cannot perform
the same functions as a skid steer loader” unpersuasive.
(Respondent’s brief, p. 4 (emphasis in the original)).
Simply because petitioner’s skid steer loaders are more
versatile, in that they are able to perform additional
tasks, does not alter the fact that both respondent’s
machines to aid in the installation of segmental pavers and
petitioner’s skid steer loaders perform the same function,
in that they are material handling machines that can be
fitted with attachments or tools and used to, among other
things, move pavers, move sand and sweep jointing sand used
in paving projects.
Because respondent’s machines for aiding in the
installation of segmental pavers and petitioner’s skid steer
loaders perform the same or similar functions, they are
overlapping or closely related compact construction
equipment.
Cancellation No. 92041776
22
Further, in the absence of any limitations in either
petitioner’s registration or respondent’s registration with
respect to channels of trade, or classes of purchasers, we
must assume that petitioner and respondent sell their
respective goods in all of the usual trade channels for
goods of this type and to all normal classes of customers
therefor. Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, supra; and Toys R Us v. Lamps R Us, 219 USPQ 340 (TTAB
1983). Accordingly, for the purposes of our likelihood of
confusion analysis, at the very least, the parties’ trade
channels and customers overlap.
Respondent also argues that consumers of respondent’s
PAVERCAT segmental paver installation equipment and
petitioner’s compact construction equipment are
sophisticated “given the high cost of these items.”
(Respondent’s Brief, p. 6). While the items are admittedly
expensive to purchase, the record demonstrates that
petitioner’s compact equipment, such as skid steer loaders,
is often rented – for a fraction of the cost – by smaller
construction contractors or even homeowners doing a
“weekend” construction project who do not have a full time
need for such a piece of equipment. (Tisdale dep., p. 24-
25, 35-36, 69). As such, the relevant public also includes
ordinary consumers with limited construction expertise.
These less sophisticated consumers may therefore exercise
Cancellation No. 92041776
23
less care in selecting the above-mentioned construction
equipment than would commercial purchasers, thereby making
confusion more likely. See Alfacell Corp. v. Anticancer
Inc., 71 USPQ2d 1301, 1306 (TTAB 2004) (noting that where
both sophisticated and members of the general public are
relevant consumers, the standard is equal to that of the
least sophisticated consumer).
Furthermore, even sophisticated and careful purchasers
of goods can be confused as to source under circumstances
where similar marks are used on identical goods. See In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
("Human memories even of discriminating purchasers … are not
infallible.").
In view thereof, du Pont factors of the similarity of
the goods, trade channels and purchasers favor petitioner.
Respondent’s Intent
Petitioner argues that respondent adopted the PAVERCAT
mark in bad faith because of respondent’s prior knowledge of
petitioner’s use of the CAT and design mark for compact
construction equipment. Petitioner also contends that the
pattern established by respondent for its trademarks is to
combine two descriptive terms – the first being PAVER –
which is generic for segmental pavers – along with a second
Cancellation No. 92041776
24
term which would describe the individual product, such as
PAVERSPLITTER, for a tool that breaks pavers and PAVERCART
for a cart that moves pavers. Petitioner argues that
contrary to the statements of respondent’s president, the
PAVERCAT mark is not “in keeping” with the other
“trademarks” adopted by respondent and thus evidences
respondent’s attempt to profit from the fame of petitioner’s
CAT and design mark.
On the other hand, respondent argues that its “honest
recognition that it had heard of the company known as
‘Caterpillar’ prior to adopting a trademark that happens to
incorporate the letters ‘c-a-t’ hardly constitutes bad
faith.”
Although respondent admittedly knew of petitioner’s
mark prior to the adoption of its PAVERCAT mark13, mere
knowledge thereof does not establish that respondent adopted
its mark in bad faith. Ava Enterprises, Inc. V. Audio Boss
USA, Inc., 77 USPQ2d 1783 (TTAB 2006). While questionable,
we also do not find that respondent’s deviation from its
typical practice of identifying its products proves bad
faith.
Even so, it is settled that one who adopts a mark
similar to the mark of another for the same or closely
related goods or services does so at his own peril. W.R.
13 Jones dep., p. 43-44.
Cancellation No. 92041776
25
Grace & Co. v. Herbert J. Meyer Industries, Inc. 190 USPQ
308 (TTAB 1976).
Actual Confusion
Respondent contends that “despite years of concurrent
use, Caterpillar cannot point to one instance of actual
confusion caused by Pave Tech’s mark PAVERCAT.”
(Respondent’s Brief, P. 5). The record shows, however, that
respondent’s use and advertising of its mark in connection
with the goods identified in the registration has not been
substantial, and clearly not so extensive that there has
been a meaningful opportunity for any actual confusion to
have occurred. Notably, respondent’s President, Mr. Jones,
in his discovery deposition testified that: “… we currently
are not promoting the sale of [the PAVERCAT product]” (Jones
dep., p. 34); “the most we ever had at any one time was two”
(Id. at 99); and “about two years ago … we decided not to
stock [the PAVERCAT product].” (Id. at 99) As indicated in
the invoices submitted as Exhibit 22 to the Jones
deposition, during the period between September 12, 2000 and
May 2003, respondent sold only four PAVERCAT machines, along
with attachments, to three different customers. Further,
although respondent’s advertising expenditures are marked
“confidential” and therefore cannot be disclosed, they are
minimal.
Cancellation No. 92041776
26
The absence, therefore, of actual confusion is not
surprising and not legally significant. See Time Warner
Entertainment v. Jones, 65 USPQ2d 1650, 1663; and Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
Therefore, that du Pont factor is neutral.
Additional Argument
We are not persuaded by respondent’s argument that the
examining attorney’s allowance of its application and
subsequent registration of PAVERCAT should play a role in
the likelihood of confusion analysis, as the Board is not
bound by previous determinations made at the examination
level. Hilson Research Inc. v. Society For Human Resource
Management, supra; and McDonald’s Corp. v. McClain, 37
USPQ2d 1274, 1277 (TTAB 1995).
Conclusion
When all of the relevant du Pont factors are
considered, especially the fame of petitioner’s mark, we
conclude that contemporaneous use by respondent of the mark
PAVERCAT for machines and machine parts used to aid in the
installation of segmental pavers is likely to cause
confusion with petitioner’s use of its CAT and design mark
at the very least with respect to skid steer loaders.
Decision: The petition to cancel is granted and
Registration No. 2684138 will be cancelled in due course.
Cancellation No. 92041776
27
EXHIBIT 8
This Opinion is not a
Precedent of the TTAB
Mailed: September 3, 2014
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Caterpillar Inc.
v.
Big Cat Energy Corporation _____
Opposition No. 91193704
against Serial Nos. 77617945 and 77618417
_____
Christopher P. Foley, Naresh Kilaru, Stephanie H. Bald and Michael R. Justus of
Finnegan Henderson Farabow Garrett & Dunner, L.L.P., for Caterpillar Inc.
Cheryl L. Anderson and Craig R. Miles of CR Miles PC,
for Big Cat Energy Corporation.
_____
Before Bucher, Kuhlke and Masiello,
Administrative Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Big Cat Energy Corporation (“Applicant”) seeks registration
on the Principal Register of the mark BIG CAT (in standard
character format)1 and the special form mark shown at right,
both marks for goods, as amended, as follows: 2
1 Application Serial No. 77617945 was filed on November 19, 2008, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. On August 13, 2009, Applicant filed an Amendment to Allege Use (AAU)
claiming first use anywhere and use in commerce since at least as early as February 28,
2006.
Opposition No. 91193704
- 2 -
gas well equipment, namely, well bore fluid redistribution
equipment comprised of a sealing body insertable into a
well bore with ports allowing fluid to be pumped from one
geological stratum to another, pumps, valves, and pipes in
International Class 7.
Caterpillar Inc. (hereinafter “Opposer” or “Caterpillar”) has opposed these
applications on the grounds of priority and likelihood of confusion under Section 2(d)
of the Act, 15 U.S.C. § 1052(d), and likelihood of causing dilution by blurring under
Section 43(c) of the Act, 15 U.S.C. § 1125(c).3
In addition to pleading common law rights in the mark CAT in connection with a
wide range of goods and services in the oil and gas industry, including engines of oil
and gas wells, both onshore and offshore; engines for use in connection with natural
gas mining applications in coal bed methane (CBM), coal mine methane (CMM), and
Coal Seam Natural Gas (CSNG) applications, including engines for powering, drilling
and production, and well servicing; generators, pipelayers, track-type tractors,
hydraulic excavators, motor graders, trucks and generator sets; and onsite support,
repair and maintenance, Caterpillar has pleaded ownership of the following
trademark registrations:
CAT for “dump-wagons, wheel tractor-dump-wagon combinations, and structural
parts for such products” in International Class 19;
2 Application Serial No. 77618417 was filed on November 20, 2008, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. On August 13, 2009, Applicant filed an Amendment to Allege Use (AAU)
claiming first use anywhere and use in commerce since at least as early as February 28,
2006.
3 See Opposer’s “First Amended Notice of Opposition of February 21, 2012 (16 TTABVue at
10-28 of 124), as approved by the Board on October 1, 2012 (21 TTABVue). This included
Opposer’s addition of Registration No. 4045652 as a pleaded registration, and Opposer’s
claim of rights in the CAT mark resulting from an acquisition.
Opposition No. 91193704
- 3 -
“electric generators and diesel electric generator sets, and parts furnished
with said products” in International Class 21;
“diesel and other internal combustion engines adapted for employment as
the source of power for self-propelled vehicles and as stationary or portable
power units for industrial, marine and agricultural uses; scraping, carrying
and dumping units adapted to be employed for scraping and collecting
earth, rock, or like materials and transporting and dumping said materials;
power and manually controlled graders, scarifiers, scrapers, and rippers
adapted to be employed for the construction and maintenance of roads, for
moving and removing of earth, rock, snow and like materials, for preventing
soil erosion and for other industrial and agricultural uses; tractors for
industrial and agricultural purposes; and parts and service tools furnished
with said products” in International Class 23;4
CAT for “motor trucks, dump wagons, wheel tractor-dump wagon combinations,
wheel tractors, and parts therefor” in International Class 19;5
CAT for “service, maintenance and repair of trucks, tractors, engines,
earthmoving equipment and control units therefor, generators and
agricultural equipment” in International Class 37;6
CAT for “lift trucks, and engines, attachments and parts therefor” in
International Class 23;7
for “maintenance and repair services in the field of internal combustion
engines, vehicles and power equipment; namely trucks, tractors, engines,
earthmoving equipment, material handling equipment, paving equipment,
agricultural equipment, generators, and control units for the
aforementioned” in International Class 37;8
for “machinery for earth moving, earth conditioning and material handling,
namely, loaders and engines therefor, and parts for vehicle and internal
combustion engines” in International Class 7;
“vehicles for earth and material hauling and handling, namely, tractors and
engines therefor” in International Class 12;9
for “business management and consultation services, namely, product
distribution operations management services; logistics consulting services,
namely, providing contract logistics services and consulting in the areas of
inventory management freight transportation management, warehouse and
product distribution operations management” in International Class 35;
“warehousing services” in International Class 39;
“design of computerized information systems for managing logistics and
4 Registration No. 0564272 issued on September 23, 1952; fourth renewal.
5 Registration No. 0770639 issued on June 2, 1964; third renewal.
6 Registration No. 0778638 issued on October 13, 1964; third renewal.
7 Registration No. 0984444 issued on May 21, 1974; third renewal.
8 Registration No. 1579437 issued on January 23, 1990; second renewal.
9 Registration No. 2140606 issued on March 3, 1998; renewed.
Opposition No. 91193704
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product distribution processes for others” in International Class 42;10
CAT for “business management and consultation services, namely, product
distribution operations management services; logistics consulting services,
namely, providing contract logistics services and consulting in the areas of
inventory management, freight transportation management, warehouse
and product distribution operations management and designing and
managing complete logistics solutions for others” in International Class 35;
“warehousing services” in International Class 39;
“design of computerized information systems for managing logistics and
product distribution processes for others” in International Class 42;11
for “hydraulic excavators; mini hydraulic excavators; wheeled excavators;
front shovels; backhoe loaders; skid steer loaders; compact wheel loaders;
wheel loaders; integrated tool carriers; telescopic handlers; track loaders;
wheel tractor-scrapers; track-type tractors; wheel dozers; motor graders;
soil compactors; cold planers; road reclaimers; asphalt pavers; vibratory
compactors; marine engines; industrial engines; diesel generator sets; gas
generator sets; demolition machines and scrap material handlers for use
therewith, namely, blades, buckets, crushers, grapplers, hammers,
hydraulic brooms, mobile shears, pallet forks; pulverizers, and rakes; log
loaders; pipe layers; mining shovels; waste handling machines; and parts
for all the above” in International Class 7;
“off-highway trucks; articulated trucks; truck engines; agricultural tractors;
and parts for all the above” in International Class 12;12
for “attachments, namely, asphalt cutters, hydraulic brooms, vibratory
compactors, cutting jaws, multi-processors, tillers, trenchers, all of the
foregoing for use with machinery for earth moving, earth conditioning and
material handling” in International Class 7;13
for “machinery for earth moving, earth conditioning and material handling,
namely, backhoe loaders, track excavators, wheeled excavators, telescoping
material handlers, track material handlers, wheeled material handlers,
underground mining loaders” in International Class 7;14
10 Registration No. 2364591 issued on July 4, 2000; renewed.
11 Registration No. 2364592 issued on July 4, 2000; renewed.
12 Registration No. 2421077 issued on January 16, 2001; renewed.
13 Registration No. 3525811 issued on October 28, 2008; Section 8 affidavit accepted and
Section 15 affidavit acknowledged. The mark consists of yellow trim around the perimeter of
the mark, a yellow triangle at the bottom of the word “CAT,” a black background and a red
edge at the right-hand side of the mark. The word “CAT” is white. The colors yellow, black,
red and white are claimed as a feature of the mark.
14 Registration No. 3525812 issued on October 28, 2008; Section 8 affidavit accepted and
Section 15 affidavit acknowledged. The mark consists of a yellow triangle at the bottom of
the word “CAT,” a black background and a red edge at the right-hand side of the mark. The
word “CAT” is white. The colors yellow, black, red and white are claimed as a feature of the
mark.
Opposition No. 91193704
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for “attachments, namely, augers, backhoes, hydraulic brooms, cold planers,
compactors, vibratory compactors, crushers, grapples, hammers,
pulverizers, pulverizing jaws, rakes, saws, shears, snow blowers, stump
grinders, all of the foregoing for use with machinery for earth moving, earth
conditioning and material handling” in International Class 7;15
for, inter alia, “ … pipes and tubes of metal; metal plugs, … metal washers,
metal seals, metal tie downs, metal pipe nipples, … metal caps for tubing
ends, metal closures for containers, metal pipe collars, metal clamps, metal
couplings for use with hoses, … metal storage tanks, metal drain plugs, …
metallic drain traps and drain caps; metal pipe extensions; metal debris
deflectors; steel reinforcing grids for use in paving processes; clad steel
plates; metal track hardware, namely, track links, track shoes and track
pins; … parts for land vehicles … and earth moving machinery, namely,
metal gaskets for machinery and land vehicles, metal pipe connectors,
metal pipe fittings, metal cylinders for compressed gas or liquids sold
empty, metal threaded fasteners, metal hose clamps, and metal hose
fittings” in International Class 6;
“motors and engines not for land vehicles; … electric pumps; excavators;
bulldozers; … earth moving machines, namely, scarifiers, motor graders;
combustion engine fuel nozzles; water separators for use in engines; fuel …
current generators; … drilling bits being parts of machines; drilling heads
being parts of machines; drilling machines, power drills; … fuel conversion
apparatus for internal combustion engines; fuel economizers for motors and
engines; … electric pumps; … turbo-compressors; …” in Class 7;
“land vehicles; tractors and tractor engines; … vehicle parts, namely,
tracks; trucks; dump trucks; land vehicles incorporating loading,
compacting, pipe laying, and grading apparatus; …” in Class 12; and
“Non-metal seals for use on pipe joints and flanges; … non-metal gaskets for
commercial and industrial applications; … coupling and joints not of metal;
rings of rubber or of plastic for use as pipe connection seals; sealing plugs
made primarily of rubber; …” in International Class 17.16
Opposer alleges that its “CAT brand image is uniquely associated with the term
‘big’ ” and that “Opposer is routinely associated with ‘big machines,’ ‘big projects,’ ‘big
15 Registration No. 3541939 issued on December 2, 2008; Section 8 affidavit accepted and
Section 15 affidavit acknowledged. The mark consists of yellow trim around the perimeter of
the mark, a yellow triangle at the bottom of the word “CAT,” a black background and a red
edge at the right-hand side of the mark. The word “CAT” is white. The colors yellow, black,
red and white are claimed as a feature of the mark.
16 Registration No. 4045652 issued on October 25, 2011. The mark consists of a rectangular
shape with a diagonal edge, containing the word “CAT” with a triangle below the letter “A.”
We have chosen not to list all the items in International Classes 1, 2, 4, 8, 9, 11, and 20 that
seem more distantly related to
Opposition No. 91193704
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growth,’ ‘big challenges,’ ‘big power,’ and ‘big solutions’.” Finally, Opposer claims that
it “is also often referred to as ‘BIG CAT’.”
Applicant filed an amended answer by which it denied the salient allegations of
the first amended notice of opposition. Applicant also asserted fourteen “affirmative
defenses,” which we construe as amplifications of its denials – providing Opposer
early notice of how Applicant intended to defend this opposition. Ohio State Univ. v.
Ohio Univ., 51 USPQ2d 1289, 1292 (TTAB 1999). In response to the parties’ cross
motions for summary judgment, the Board, on July 15, 2013, denied both parties’
motions.17
I. Preliminary Matters
In an earlier interlocutory decision, it was determined that the expert reports
prepared by Lonnie Fuller and Raymond Garland are in compliance with Fed. R. Civ.
P. 26(a)(2) in that Opposer’s experts have set forth their opinions and the bases and
reasons for them.18 Nonetheless, Applicant’s contentions remain before us that
Opposer’s expert designations and reports should be stricken because they consist
solely of legal conclusions and that Opposer’s experts are not “trademark” experts.
According to their reports, Mr. Fuller and Mr. Garland – the top executives of
enterprises that would actually be among the potential purchasers of both parties’
products – have a combined total of more than forty years of experience in the oil and
gas industry. Based upon our experience with reliance on expert witnesses in
17 As will be discussed in more detail later, the parties then agreed to Accelerated Case
Resolution (ACR), providing for a simplified method for reaching this final decision.
18 13 TTABVue at 5 of 6, April 1, 2011.
Opposition No. 91193704
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trademark trials, Messrs. Fuller and Garland are prime examples of sophisticated
consumers having knowledge to offer opinions on du Pont likelihood-of-confusion
factors such as the relationship of the parties’ goods and services as well as the
overlap in trade channels and potential customers.
Federal Rule of Evidence 702 is part of the “liberal thrust” of the Federal Rules of
Evidence and their “general approach to relaxing the traditional barriers to “opinion”
testimony. See Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 593-94, 27
USPQ2d 1200 (1993). As finders of fact, we welcome the testimony from competent
persons having experience in technical fields such as preparing and drilling oil and
gas wells, optimizing mineral extraction from existing wells, and site reclamation of
exhausted wells. Therefore, in this case, we will admit the testimony of these
witnesses, although we will consider their qualifications in determining the weight
we give their testimony.
In another contested matter, Applicant objected to the following argument from
Opposer’s brief:
The common usage of the “Big Cat” nickname is also
supported by the deposition testimony of Mr. Oates, who
testified that during his thirty years of selling Caterpillar
equipment it was quite common to hear people refer to a
piece of Caterpillar’s massive machinery as a “Big Cat.”19
As to the supporting testimony, it is Applicant’s contention that the following
testimony of Richard Oates is inadmissible hearsay:
Q. (By Counsel Justus): So you mentioned a couple seconds ago that people
refer to Caterpillar as large machines with a nickname.
19 Opposer’s supplemental summary judgment brief of November 15, 2013, at 18, 51
TTABVue at 26 of 234.
Opposition No. 91193704
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A. (Richard Oates): Yes.
Q. What was that nickname?
A. Big CAT. ...20
A. And when people say, “Hey, I’m going to go get the big CAT,” you know,
they’re thinking a Caterpillar product. And that’s what I know. ... And
individual to, you know, different marketing meetings I’ve been to, in
the past, with Caterpillar representatives, you know, they – they’ve
referred to them just as, you know big CAT. ...
Years ago there was an operator in southwest Wyoming ... And he
worked for Searle Brothers . ... And as a salesman, I’d hear the term
“big CAT.”
And ... specifically in the Peabody mines at NERM, we had the first field
development 797 trucks, and they were referred to as the big CAT
truck.21
We find that this testimony is admissible for what it shows on its face, but may
not be relied upon for the truth of the matter asserted, i.e., that “Big Cat” is in
common usage on natural gas well sites as a nickname for Opposer, as that is
hearsay. On the other hand, a fact-finder could conclude that this testimony is
probative to the extent that it is corroborated by newspaper articles and headlines
pointing out the frequency with which Opposer, the entity – as well as its largest
pieces of Caterpillar equipment – are both referred to as “Big CAT,” infra.
II. The Record; Accelerated Case Resolution
The record includes the pleadings, and pursuant to Trademark Rule 2.122(b),
Applicant’s application files.
The parties had filed cross motions for summary judgment,22 which the Board
denied, finding genuine disputes of material fact. The parties then agreed to
20 Oates Trans. at 95, 28 TTABVue at 86 of 87.
21 Oates Trans. at 93, 95 and 96, 28 TTABVue at 85-87 of 87.
Opposition No. 91193704
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Accelerated Case Resolution (ACR), providing for a simplified method for making
evidence of record, and agreeing that the Board may resolve genuine disputes of
material fact and issue a final ruling based on the parties’ submissions.
The parties are commended for pursuing this cost-efficient alternative to trial. See
Trademark Board Manual of Procedure (“TBMP”) § 528.05(a)(2) (“Accelerated Case
Resolution”) and § 702.04(c) (“ACR Conversion – Summary Judgment Briefs”).
The Board approved the following ACR agreement between the parties, 49
TTABvue at 4-5:
1) The parties shall forego trial and an oral hearing;
2) The parties shall submit supplemental summary judgment briefs, briefing
both the claims of likelihood of confusion and dilution;
3) The parties shall rely on the evidence submitted in support of their
previously submitted cross motions for summary judgment;
4) The evidence submitted by the parties in conjunction with the summary
judgment pleadings23 may be considered by the Board without the
requirement of notices of reliance or the need for accompanying
testimony;
5) The page limit for the parties’ briefs shall be 40 pages for Opposer’s main
brief and Applicant’s response brief, and 20 pages for Opposer’s reply
brief, if any;
6) The parties are not required to submit separate statements of material fact
as part of their briefs; and
7) The parties agree that the Board may resolve genuine disputes of material
fact and issue a final ruling based on the parties’ ACR submissions.
22 We note that Opposer’s premature filing of its first Motion for Summary Judgment on
October 17, 2012, has been deemed premature, and therefore we have given it (23 TTABVue)
and the supporting documents (24 and 25 TTABVue) no consideration. See 27 TTABVue,
November 1, 2012. The reference to the parties’ cross-motions identifies Opposer’s Motion for
Summary Judgment of January 4, 2013 (28 TTABVue at 2-27 of 87) and Applicant’s
combined response to Opposer’s Motion for Summary Judgment and Cross-Motion for
Summary Judgment of February 8, 2013 (32 TTABVue at 5-25 of 217).
23 We construe the use of “pleadings” in this context to mean exhibits attached to the motions
and memoranda.
Opposition No. 91193704
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Under the ACR model selected by the parties, both parties submitted
supplemental summary judgment briefs.24 According to the prior agreement between
the parties, we render this final decision in accordance with the evidentiary burden
at trial, that is, that Opposer bears the burden of proving its claims by a
preponderance of the evidence. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
In support of its motion for summary judgment, and in opposition to Applicant’s
cross-motion for summary judgment, Opposer submitted for the record the following:
(1) a partial transcript of the testimony of Richard H. Oates, Jr., director of
sales for Wyoming Machinery Company, taken on December 13, 2012;25
(2) the declaration of Michael R. Justus, an attorney with the law firm of
Finnegan Henderson et al., dated January 3, 2013;26
(3) Status and title copies of Opposer’s registrations pleaded in its amended
Notice of Opposition;27
(4) Applicant’s responses to Opposer’s First Set of Requests for Admissions;28
(5) Applicant’s answers to Opposer’s First Set of Interrogatories;29
(6) Applicant’s responses to Opposer’s Third Set of Requests for Admissions;30
24 See Opposer’s supplemental summary judgment brief of November 15, 2013 (51
TTABVue); Applicant’s supplemental summary judgment brief of January 14, 2014 (52
TTABVue); and Opposer’s reply to Applicant’s supplemental summary judgment brief of
January 29, 2014 (54 TTABVue).
25 Oates Transcript, 28 TTABVue at 64-87 of 87.
26 29 TTABVue at 2-13 of 137.
27 Justus Decl.-Exhibit A, 29 TTABVue at 15-44 of 137.
28 Justus Decl.-Exhibit B, 29 TTABVue at 45-61 of 137.
29 Justus Decl.-Exhibit C, 29 TTABVue at 62-77 of 137.
30 Justus Decl.-Exhibit D, 29 TTABVue at 78-111 of 137.
Opposition No. 91193704
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(7) Copies of articles appearing in magazines and newspapers and transcripts
of television shows;31
(8) a copy of an article from THE TRADEMARK REPORTER;32
(9) the declaration of Ed Stembridge, Caterpillar’s Product Identity Manager,
dated October 17, 2012,33 with exhibits attached thereto;34
(10) the second declaration of Michael R. Justus, dated March 15, 2013,35 with
exhibits attached thereto;36 and
(11) the second declaration of Ed Stembridge, dated March 14, 2013,37 with
exhibits attached thereto.38
In response to Opposer’s motion for summary judgment and in support of its own
cross-motion for summary judgment, Applicant submitted for the record the
following:
(1) additional pages of the testimony transcript of Richard H. Oates, Jr.,
director of sales for Wyoming Machinery Company;39
(2) the declarations of Joseph R. Corbett, Mark Hettinger, Greg Greenough,
and Robert Vergnani;40
(3) the declaration of Tim G. Barritt, chief executive officer for Applicant,
dated February 4, 2013,41 with exhibits attached;42
31 Justus Decl.-Exhibit E, 29 TTABVue at 112-30, 135-37 of 137.
32 Justus Decl.-Exhibit F, 29 TTABVue at 131-34 of 137.
33 30 TTABVue at 2-8 of 277.
34 Stembridge Decl.-Exhibits A-G, 30 TTABVue at 9-277 of 277.
35 39 TTABVue at 2-5 of 88.
36 Justus-2 Decl.-Exhibits A-H, 39 TTABVue at 6-88 of 88.
37 40 TTABVue at 2-4 of 180.
38 Stembridge-2 Decl.-Exhibits A-B, 40 TTABVue at 5-180 of 180.
39 Applicant’s Exhibit 2: 32 TTABVue at 30-69 of 217.
40 Applicant’s Exhibit 6, 32 TTABVue at 93-104 of 217.
41 32 TTABVue at 123-32 of 217.
Opposition No. 91193704
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(4) the declaration of Cheryl L. Anderson, Applicant’s attorney, dated February
7, 2013,43 with exhibits attached;44
(5) the declaration of Shih-Kuei Chen, a law student employed by Applicant’s
attorney, dated February 6, 2013,45 with exhibits attached;46
(6) the declaration of Judy D. Kosola, Applicant’s Office Administrator, dated
January 25, 2013,47 with exhibits attached; 48
(7) the second declaration of Tim G. Barritt, dated April 3, 2013,49 with
exhibits attached;50
(8) the second declaration of Cheryl L. Anderson, dated April 4, 2013,51 with
exhibits attached;52
(9) the second declaration of Judy D. Kosola, dated March 29, 2013,53 with
attached exhibit;54 and
(10) the second declaration of Shih-Kuei Chen, dated March 29, 2013,55 with
attached exhibit.56
42 Barritt Decl.-Exhibits A-M, 32 TTABVue at 133-217 of 217.
43 33 TTABVue at 2-10 of 306.
44 Anderson Decl.-Exhibits A-O, 33 TTABVue at 11-306 of 306, and 34 and 35 TTABVUE.
45 36 TTABVue at 2-5 of 379.
46 Chen Decl.-Exhibits A-F, 36 TTABVue at 6-379 of 379.
47 37 TTABVue at 2-5 of 99.
48 Kosola Decl.-Exhibits A-B, 37 TTABVue at 6-99 of 99.
49 41 TTABVue at 26-31 of 174.
50 Barritt Decl.-Exhibits N-X, 41 TTABVue at 32-126 of 174.
51 41 TTABVue at 127-29 of 174,
52 Anderson Decl.-Exhibits P-R, 41 TTABVue at 130-53 of 174.
53 41 TTABVue at 155-56 of 174.
54 Kosola Decl.-Exhibit C, 41 TTABVue at 157-63 of 174.
55 41 TTABVue at 165-166.
56 Chen Decl.-Exhibit G, 41 TTABVue at 167-74 of 174.
Opposition No. 91193704
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III. The Parties
Opposer, Caterpillar, Inc., is a manufacturer of construction equipment. Opposer’s
CAT marks have been used continuously on construction equipment since 1948.
Opposer is known in large part for heavy road building and mining equipment.
Caterpillar’s equipment is sold through a worldwide network of independently-owned
dealers, of which more than fifty are located in the United States.57
Applicant was first formed in 1997 as Big Cat Investment Corporation, using the
designation “Big Cat” for financial investment services in the field of mining
exploration. In 2001, its name was changed to Big Cat Mining Corporation, using the
designation “Big Cat” in connection with the acquisition of mining exploration
rights.58 Then in 2006, upon acquiring new hydrogeological technology for use in the
oil and gas and mining industries, Applicant changed its name to “Big Cat Energy
Corporation.”59 Applicant started using both the applied-for marks in early 2006.60
Applicant’s majority shareholders are the inventors of Applicant’s proprietary
hydrogeological technology.61 Applicant initially offered its products and services on a
field test basis to gas well owners and operators without charge. Later, Applicant
began leasing the technology and offering it for sale, and has continued to do so
thereafter.62 Applicant claims to have offered and promoted its technology using
57 Stembridge Decl., 30 TTABVue at 2-7 of 277.
58 Barritt Decl. ¶¶ 2-5, Exhibits C, 32 TTABVue at 124, 145-47 of 217.
59 Id. at ¶ 10, Exhibit G, 32 TTABVue at 126, 159-67 of 217.
60 Id. at ¶ 9, Exhibit F, 32 TTABVue at 125-26, 155-58 of 217.
61 Id. at ¶ 6, 32 TTABVue at 125 of 217.
62 Id. at ¶¶ 9, 12-16, Exhibits F and I, 32 TTABVue at 125-27, 155-58, 171-87 of 217.
Opposition No. 91193704
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Applicant’s marks in a variety of ways, including product labels and product
marking, vehicle and building signage, direct mail, use of an active website at
bigcatenergy.com, distribution of brochures and other marketing material, phone
book listings, calls, meetings, site visits, demonstrations, exhibits, trade show
participation, and attendance and participation at professional meetings and
conferences.63
In order for a prospective customer to lease or purchase the technology, a
geological evaluation of the proposed well site, the proposed well bore, and data from
the well, along with water quality testing, must be done and all of this is performed
by Applicant. A regulatory permit for the well must then be obtained; if a proposed
site is deemed appropriate for installation and use of the technology, installation is
done by Applicant or contractors trained and certified by Applicant.64 Applicant deals
directly with its customers, working primarily with those persons responsible for and
most knowledgeable regarding well bore produced water management.65 Applicant’s
customers may require that formalized procurement procedures be followed in
leasing or purchasing Applicant’s technology.66
IV. Standing
Caterpillar has made of record numerous valid and subsisting registrations for its
CAT marks, and has established use of those marks in connection with a wide range
63 Id. at ¶¶ 20-23, Exhibits D and M, 32 TTABVue at 128-29, 148-52, 195-217 of 217.
64 Id. at ¶¶ 18-19, 24-25 and Exhibit K and L, 32 TTABVue at 127-29, 190-94 of 217.
65 Id. at ¶ 23, 32 TTABVue at 129 of 217.
66 Id. at ¶¶ 17-18, 25, Exhibit K, 32 TTABVue at 127-29, 190-91 of 217.
Opposition No. 91193704
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of products and services in the field of construction, including construction in the
field of the oil and gas industry. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc., v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Hence, we find that Opposer
has established its standing under Section 13(a) of the Trademark Act, 15 U.S.C.
§ 1063(a). In fact, at no point in this proceeding has Applicant contested Opposer’s
standing to bring this opposition.
V. Priority
In view of Opposer’s ownership of valid and subsisting registrations of its pleaded
marks, priority is not in issue with respect to its CAT marks as to the goods
identified and services recited in those pleaded and proven registrations. King
Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). There is before the Board no counterclaim challenging Opposer’s registrations
and we must accord them all the presumptions afforded by Section 7(b) of the
Trademark Act.67 Accordingly, Applicant is barred from arguing priority as to any of
the goods or services encompassed within these thirteen registrations.68
On the other hand, priority remains an issue with regard to Opposer’s pleaded
common law uses that are not specifically recited in any of its registrations.
Applicant contends that its rights should be deemed senior to Opposer’s common law
67 We further note that, in its briefs, Applicant never argued that Opposer’s registrations
should be cancelled or modified.
68 In a ruling of October 1, 2012, it was determined that Opposer could amend its notice of
opposition to expand Opposer’s pleading to add to its twelve earlier-pleaded marks
Registration No. 4045652 (which issued October 25, 2011) listing goods in eleven classes. 21
TTABVue at 6-8 of 10.
Opposition No. 91193704
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rights with respect to certain goods and services. To the extent that it is necessary for
Opposer to rely upon its common law rights, we have chosen to consider these
arguments in our discussion of the parties’ goods and services, infra.69
Accordingly, we turn to the issue of likelihood of confusion under Section 2(d).
VI. Likelihood of Confusion
Statement of the Law
Our likelihood of confusion determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also, In re Majestic Distilling Co. Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1205 (Fed. Cir. 2003) (“ … mistaken belief that [a good or service] is manufactured or
sponsored by the same entity … is precisely the mistake that Section 2(d) of the
Lanham Act seeks to prevent”); In re Save Venice New York, Inc., 259 F.3d 1346, 59
USPQ2d 1778, 1784 (Fed. Cir. 2001) (“The related goods test measures whether a
reasonably prudent consumer would believe that non-competitive but related goods
sold under similar marks derive from the same source, or are affiliated with,
connected with, or sponsored by the same trademark owner”).
69 This extensive litigation contains substantial evidence and arguments as to the timing,
significance and impact of the parties’ relative priorities growing out of Opposer’s expanding
common law uses (especially since January 2006) and Applicant’s claims of technical
trademark use, use analogous to trademark use, tacking, etc. We have chosen to consider all
of this evidence as a whole. See West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d
1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994). We have also concluded that the doctrine of a
zone of natural expansion of trade (as applied to Applicant and to Opposer) requires specific
analyses that do not appreciably add to our understanding of the relatedness of the goods
and services in this case. See General Mills Inc. v. Fage Dairy Processing Industry SA, 100
USPQ2d 1584, 1598 (TTAB 2011).
Opposition No. 91193704
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The parties presented evidence and argument on the du Pont factors of the fame,
strength and renown of the marks, the relationships of the goods and services and
their respective channels of trade, the conditions under which and buyers to whom
sales are made, the similarities and dissimilarities of the marks, the number and
nature of similar marks in use on similar goods or services, as well as the nature and
extent of any actual confusion.
A. Goods and Services, and Channels of Trade
1. On the face of the registrations and applications
We turn first to our consideration of the relationship between Opposer’s and
Applicant’s goods and services, as well as their respective channels of trade. We must
make our determinations under these factors based upon the goods and services as
they are recited in the applications and registrations. See Octocom Systems Inc. v.
Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787-88 (Fed. Cir.
1990). The respective goods and services do not have to be identical or even
competitive in order to determine that there is a likelihood of confusion. It is
sufficient that the respective goods are related in some manner, or that the
conditions surrounding their marketing are such that the goods will be encountered
by the same purchasers under circumstances that would give rise to the mistaken
belief that they originate from the same source. See On-line Careline Inc. v. America
Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Opposer argues that its products (e.g., machinery and equipment used to prepare,
dig, and reclaim gas-well sites) are closely related to those covered by Applicant’s
Opposition No. 91193704
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applications for the BIG CAT Marks (e.g., specialized natural gas well equipment). For
example, Opposer’s registrations list trucks and heavy, earth-moving machines, such as
track-type tractors, hydraulic excavators, and motor graders that are used to prepare oil
and gas well sites, and then are used again in site reclamation; the registrations also list
generators and gensets used as a power source at oil and gas wells; and its identified
pipelayers are used in laying pipes for conveying oil, gas and water in the vicinity of the
natural gas borehole.
Applicant itself has admitted that Caterpillar’s CAT-branded products and services
are used on the same job sites as Applicant’s BIG CAT products, and that Caterpillar’s
CAT products such as Opposer’s variety of earth-moving equipment are “not
uncommonly used in well site preparation work (clearing a site, creating an access road,
and the like).” Also, “Applicant admits that Applicant’s BIG CAT and Big Cat Energy
Corp-branded products are used at coal bed methane or coal seam methane well sites
where Opposer’s CAT-branded products are operated.”).70 However, Applicant argues
that it does not offer goods or services related in any way to Opposer’s heavy earth-
moving and construction-type machinery and equipment, parts, accessories, and
attachments therefor, industrial engines and generators, and services for these goods.
Rather, Applicant’s technology involves hydrogeological equipment, namely, subsurface
water redistribution equipment.71
In this context, we review briefly the respective parties’ involvement over the history
of a gas well. Applicant acknowledges that Opposer’s heavy equipment (or that of any
number of other heavy equipment manufacturers) may sometimes be used by contractors
70 Justus Decl. ¶¶ 6-10, Justus Exhibits C and D, 29 TTABVue at 8-9, 50-54, 69 of 137.
71 Barritt Decl. ¶ 7, Barritt Exhibit D, 32 TTABVue 125, 148-52 of 217.
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to prepare a new well site. From start to finish, the range of CAT-branded equipment on
gas well sites may include Opposer’s generator sets (“gensets”) powered by large
Caterpillar engines. After the well site has been prepared, a third party will drill the well
bore, but may well depend upon Opposer’s CAT-branded machinery and equipment. At
some later point, Applicant’s specialized proprietary subsurface water redistribution
technology may be installed down into a well bore, where it remains until removed.
Applicant provides ongoing services for its technology after installation.72 During the life
cycle of a well, Opposer’s ongoing services may include maintenance and repair services
on well site power equipment including internal combustion engines, generators and
control units. During the active period when natural gas is being extracted from the well,
testimony shows that Opposer’s pipe layers and trenchers may be used in connection
with the operations of the well. Years later, upon completion of mineral extraction from
an exhausted well, the gas well extraction equipment, possibly including Applicant’s well
bore fluid redistribution equipment, is removed by the contractor to move on to another
job. At that point, Opposer’s equipment (or that of its competitors) may well be used to
reclaim the well site. Accordingly, we readily find that the parties’ respective goods will
be used by an overlapping universe of customers, namely owners and operators of gas
wells. As a corollary, we find that the respective goods and services will travel through
overlapping channels of trade to these same classes of purchasers.
On the other hand, we agree with Applicant that simply because Opposer’s CAT-
branded products are used on the same job sites as Applicant’s BIG CAT technology, and
both will be sold and used in the same “field” or “industry” (i.e., to extract natural gas
72 Barritt Decl. ¶ 24, 32 TTABVue 129 of 217.
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from wells), this finding does not compel a finding that the parties’ products and services
are complementary, and hence “related” for purposes of our likelihood-of-confusion
analysis. Bose v. QSC Audio Prods, 63 USPQ2d at 1310; Cooper Indus., Inc. v.
Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983). Even in cases where marks are
substantially identical, significant differences between the goods or services of the
parties can preclude any likelihood of confusion. See, e.g., Elec. Design & Sales, Inc. v.
Elec. Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388, 1393 (Fed. Cir. 1992), reh’g denied
1992 U.S. App. LEXIS 1505 (Fed. Cir., Feb. 4, 1992), and reh’g, en banc, denied 1992 U.S.
App. LEXIS 2473 (Fed. Cir., Feb. 20, 1992); Conwood Corp. v. J.B. Williams Co., 475
F.2d 643, 177 USPQ 331, 332 (CCPA 1973); Nat’l Assoc. of Blue Shield Plans v. Standard
Mattress Co., 478 F.2d 1253, 178 USPQ 153 (CCPA 1973). In this case, the record shows
no specific examples where Opposer’s goods or services are actually shown to be used in
close association or combination with Applicant’s technology. The record contains no
evidence that third parties who make heavy construction and generator equipment used
in oil and gas wells also sell subsurface water redistribution systems.
Nonetheless, as discussed infra, we have concluded that Opposer’s CAT marks are
famous, in no small measure because, as the record shows, CAT-branded equipment is
pervasive on natural gas well sites throughout the entire life-cycle of the well. Hence,
based upon all of the evidence in the record, including the respective registrations and
applications, there exists a relationship between Applicant’s hydrogeological technology
and Opposer’s listed heavy machinery, engines and generator sets.73
73 First Barritt Decl., ¶ 28, Applicant points out that its specialized technology bears no
similarity to heavy equipment or machinery, engines or generators, nor is its purpose or
function in any way similar. 32/130/217 See Dkt. No. 32, Barritt Decl., ¶ 29).
Opposition No. 91193704
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2. Actual usage of Opposer’s equipment in creating water
holding/evaporation ponds
In addition to the examples discussed above drawn from the life-cycle of a natural
gas well, Opposer alleges that for decades it and its licensees have continuously used
the CAT mark in connection with specific products in the oil and gas industry that
are closely related to Applicant’s products.74 In fact, Opposer has pointed to one very
specific usage of its CAT-branded heavy earth-moving and construction-type
machinery and equipment to build culverts and reservoirs for coal bed methane
water and to lay pipes for conveying such gas and water. We turn specifically to the
declaration of Caterpillar’s Product Identity Manager, Ed Stembridge:
3. As detailed below, Caterpillar has expanded its offerings
over the years and it presently provides an overwhelming
number of other products and services used in the oil and
gas, mining, and pipeline industries. Indeed, CAT-branded
engines have drilled the majority of the world’s oil and gas
wells – both onshore and offshore. (See website printouts
and promotional materials attached as Exhibit A.)
4. Caterpillar has also sold or rendered the following CAT-
branded products and services for decades: pumps and
compressors for oil and gas well applications; generators
and gensets to use as a power source at oil and gas wells;
pipelayers to lay oil and gas pipes; track-type tractors,
hydraulic excavators, motor graders, and trucks to prepare
an oil and gas well site; GPS (“global positioning system”)
and laser based guidance systems for automated rock
recognition to ensure accurate drill management; onsite
support, repair and maintenance services; and drills and
other equipment to drill the boreholes or oil and gas wells.
Through its network of CAT dealers, Caterpillar provides
well-servicing for maintaining well equipment in optimum
condition. (See Exhibit A.)
74 Opposer’s supplemental summary judgment brief of November 15, 2013, at 12-13, 51
TTABVue at 20-21 of 234.
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5. Caterpillar’s products and services are commonly used at
gas-well sites. For example, CAT-branded earth moving
machines are used to prepare the well site for drilling;
CAT-branded engines are used in drilling the well bore;
CAT-branded generators provide power to pumps for
withdrawing water and gas; CAT-branded heavy
machinery is used to build culverts and reservoirs for coal
bed methane water; CAT-branded compressors compress
gas from the wells; CAT-branded pipelayers are used in
laying pipes for conveying gas and water; and other CAT-
branded products are used in site reclamation. CAT-
branded products are used to dig ponds and/or lay pipes for
receiving water from gas wells … 75
As seen above, according to Mr. Stembridge, CAT-branded products are used to
dig ponds and lay pipes for receiving water from gas wells. Opposer argues that this
“demonstrates a directly competing alternative to the device promoted under
Applicant’s BIG CAT Marks.” Similarly, Richard Oates, Director of Sales at Wyoming
Machinery Company, and one who has been involved with the sale of Caterpillar
products for more than thirty years, testified about numerous CAT-branded products
used in connection with oil and gas well sites and well bore drilling:
On any location there’s various products of Caterpillar that
are present before, during, and after the ... well is
produced.
And the equipment that is present on a job site – and this
may not be inclusive of everything that I’ve seen on a job
site. But first you got to get into the job site. So they’ll use
a grader. And they may even use a scraper to, you know,
level the road. They may use some kind of an excavator to
put in culverts on the way in to the road. Then they may
use a CAT dump truck articulator thereabouts; load it with
gravel to gravel the road. ...
And depending on where they’re drilling and what their
permit requires, they may have to dig a mud pit or they
75 Stembridge decl. ¶¶3-5, 30 TTABVue at 3-4 of 277.
Opposition No. 91193704
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may bring in some kind of a container to hold circulation
material for when they’re drilling. Then the drilling or
work over rig may show up, and you may have – and it’s
customary nowadays that we have an integrated tool
carrier on site which provides a loading tool, both for
material with a bucket or it can be used as a forklift to load
and unload pipe and the like.
The drilling rig itself, it may be CAT-powered. ... Today a
lot of these rigs are electric. So we provide a 3512 generator
package. And depending, again, on what the permits
require, we may provide some kind of a Caterpillar
selective catalyst reduction unit, SCR, which helps. ...
After the completion of the well ... we have pipelayers, CAT
pipelayers, and we have CAT excavators digging the – the
line in. The pipelayers lay the pipe in the hole. ...
… You know, that’s what you’re going to see on that site in
general. You know, so the scrapers, motor graders, loaders,
backhoes, IT machines, engines, generators to drive the
pumps, and – you know, there’s a lot of CAT product. 76
Opposer argues in this regard that inasmuch as CAT-branded heavy machinery is
often used to build culverts, lay pipes and dig evaporation ponds for receiving coal
bed methane water from gas wells, its claimed machines are used to construct a
directly-competing alternative to the installation of Applicant’s named goods,
namely, its “well bore fluid redistribution equipment.”77 The testimony of Mr.
Richard Oates corroborates the gist of Mr. Stembridge’s declaration above, stating
that gas well customers use CAT-branded products, including pipelayers, to convey
gas and water from gas wells.
What – what Caterpillar does is we provide equipment to
our customers that work on those sites, and I know that
they use methods to transfer product and water through
76 Oates Trans. at 77-79, 28 TTABVue at 77-79 of 87.
77 Stembridge Decl. ¶ 5, 30 TTABVue at 3 of 277.
Opposition No. 91193704
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pipelines. And our guys dig the pipelines, and they install
the pipe … 78
While Applicant acknowledges that Opposer’s CAT-branded products and services
are likely used at some of the same coal bed methane natural gas well sites as are
Applicant’s BIG CAT products,79 Applicant argues that functions for building culverts
or digging onsite reservoirs for water is not a directly-competing alternative to the
device it promotes under its BIG CAT marks. Certainly, Opposer does not claim to
offer or sell any device that allows gas well operators to separate water and gas
within the well bore so that only gas comes to the surface.80
However, we find convincing Opposer’s argument that inasmuch as treating large
volumes of water at coal bed methane / coal seam natural gas well sites is such a
challenging problem, Opposer and Applicant are offering the operator alternative
ways of dealing with this issue. For example, instead of paying a third-party for
water treatment / reclamation, or rather than pumping produced water from the
surface back down into an injection well, a well site operator also faces two
alternative options: using Applicant’s technology to reduce the volume of produced
water, or using Opposer’s equipment to build ponds for evaporation / disposal. In this
sense, we find that Opposer’s machines are likely to be used to construct an
alternative to the installation of Applicant’s named goods.
Applicant, even if not conceding that these alternatives are directly competitive,
seems to acknowledge some connection between the two when arguing in its
78 Oates Trans. at 84, 28 TTABVue at 84 of 87, and 32 TTABVue at 57 of 217.
79 Justus Decl. at ¶¶ 8-9, 29 TTABVue at 10 of 137.
80 33 TTABVue at 105 of 306.
Opposition No. 91193704
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literature that operators who use its technology can avoid the cost and environmental
impact of evaporation or holding ponds. While it is possible that a gas well owner or
operator taking advantage of Applicant’s involved technology might opt not to build a
holding pond for surface water near the wellhead, Mr. Barritt argues that, it is
logical to conclude, based upon his knowledge of the field, that such evaporation
ponds might still be constructed for other uses, including as an integral part of the
emergency management plan for the well site.81 We are unpersuaded by this
argument. While cognizant of quite different financial, environmental, regulatory
and technical choices for dealing with produced water faced by the well operator at a
specific gas well site, we find this specific application of Opposer’s equipment (e.g., in
creating water evaporation ponds) to be strong evidence that indeed Opposer’s goods
and services are related, for purposes of an analysis of likelihood of confusion, to
Applicant’s technology.
Finally, as to this factor, we also find compelling Opposer’s arguments that
Applicant’s BIG CAT marks are not only likely to cause confusion with Caterpillar’s
famous CAT marks at the point-of-sale, but also in the post-sale context of dealing
with produced water from the well sites. See In re Artic Electronics Co., Ltd., 220
USPQ 836, 838 (TTAB 1983) (finding both point-of-sale confusion and post-sale
confusion). Given the renown of the CAT marks generally, in the oil and gas industry
specifically, and the ubiquitous presence of CAT-branded equipment at gas well sites,
we agree that it is likely that during the life of the well, a range of persons, including
miscellaneous contractors, well owners, and/or operators might well be confused
81 Barritt Decl. ¶ 29, 32 TTABVue at 130 of 217.
Opposition No. 91193704
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regarding the source of Applicant’s technology upon exposure to the BIG CAT marks
on a well site inundated with Caterpillar’s CAT-branded products and services.82
3. Compressors
We find many places in the record that large CAT-branded engines are used in a
variety of applications in the drilling, production and transmission of oil and natural
gas. Within CAT-branded gensets used in land-based as well as offshore drilling rigs,
some gensets seem to have only CAT-branded components (i.e., CAT-engines paired
with CAT-branded generator ends).
By contrast, where CAT-branded engines are used with gas compression
installations, these CAT-branded engines are included with compressor packages
marketed under third-party marks. At least prior to December 2012,83 we find no
evidence that Opposer offered or sold CAT-branded compressors.84 Hence, we should
note that we have given no consideration to Opposer’s alleged use of its CAT marks
on compressors.85
For all the reasons discussed above, this critical du Pont factor favors a finding of
likelihood of confusion herein.
82 Oates Trans. at 77-84, 28 TTABVue at 77-84 of 87.
83 Caterpillar did announce the creation of a joint venture (Black Horse LLC) between
Caterpillar and Ariel Corporation (maker of separable reciprocating gas compressors) to
provide pressure-pumping solutions to oil and gas customers (40 TTABVue at 179 of 180).
Although there is no corroboration about how the Joint Venture will market these products,
Opposer alleges that these combined products will be branded and sold under the CAT mark
and distributed through the CAT dealer network.
84 Oates Trans. at 74-75, 32 TTABVue at 48-49 of 217.
85 Similarly, we note Opposer’s argument that the “pipes” in its registration should be
construed as being identical to the “pipes” identified in the involved applications. We are not
persuaded. “Pipes” are not identified as discrete goods in the application, but only as
components of Applicant’s gas well equipment, which are, in nature, very different from
simple “pipes” and pipe fittings.
Opposition No. 91193704
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B. Fame/Strength
We turn then to the strength of Opposer’s CAT marks in order to determine the
scope of protection to be accorded to Opposer’s pleaded marks. In the case at bar,
Opposer’s CAT marks are arbitrary as applied to Opposer’s listed goods and services.
Hence, CAT is an inherently distinctive mark, and as such, we find that it is a
conceptually-strong mark.
Whenever fame exists it “plays a ‘dominant’ role in the process of balancing the
du Pont factors.” Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed.
Cir. 2000). Famous marks enjoy a wide latitude of legal protection since they are
more likely to be remembered and associated with a single source in the public mind
than is the case with weaker marks, and thus they are more attractive as targets for
would-be copyists. For this reason, a famous mark “casts a long shadow which
competitors must avoid.’” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005); Recot, 54
USPQ2d at 1897, quoting Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963
F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992); Loreal S.A. v. Marcon, 102
USPQ2d 1434, 1437 (TTAB 2012) (“[E]xtreme deference [is] accorded to a famous
mark in terms of the wide latitude of legal protection it receives … ”). As a corollary,
well-settled law teaches that as the fame or strength of a mark increases, the degree
of similarity between the marks and goods and services necessary to support a
conclusion of likelihood of confusion declines. Bose v. QSC Audio Prods, 293 F.3d
1367, 63 USPQ2d 1303, 1308-10 (Fed. Cir. 2002). Under our precedent, any doubts as
to the registrability of an Applicant’s mark must be resolved in favor of the prior
Opposition No. 91193704
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registrant of a famous mark. See Specialty Brands, Inc. v. Coffee Bean Distribs., Inc.,
748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984) (“When balancing the interest in
a famous, established mark against the interests of a newcomer, we are compelled to
resolve doubts against the newcomer.”); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1691 (Fed. Cir. 1993) (“Doubt is resolved against the newcomer, … for
the newcomer has the opportunity of avoiding confusion, and is charged with the
obligation to do so.”).
The commercial strength of a mark “may be measured indirectly, among other
things, by the volume of sales and advertising expenditures of the goods or services
traveling under the mark, and by the length of time those indicia of commercial
awareness have been evident.”86 Bose Corp. v. QSC Audio Products, Inc., 293 F.3d
1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). In addition, some context in which to
place raw statistics may be necessary. Id. at 1309.
This extensive record demonstrates the renown of Opposer’s CAT marks:
• Opposer owns one registration for the mark CAT that issued in 1952 –
claiming use since the 1940s.87 The record shows that the CAT mark has
been in use in commerce in the United States for more than 70 years.88
• In support of its assertion that its mark is famous, Opposer argues that
tens of thousands of Caterpillar’s black-and-yellow vehicles prominently
displaying the iconic CAT brand are ubiquitous throughout the United
States. In fact, Caterpillar’s CAT-branded products and services reach a
large number of consumers in myriad forms, from large machines to
86 For purposes of likelihood of confusion, the Board generally accepts and considers evidence
related to likelihood of confusion for the period up to the time of trial, and this includes
evidence of the fame of a plaintiff’s mark. This is distinct from a claim of dilution under
Section 43(c) of the Trademark Act where an element of the claim is the acquisition of fame
prior to the defendant’s first use or application filing date.
87 Justus Decl. at ¶ 3, Justus Exhibit A, 29 TTABVue at 3, 17 of 137.
88 Stembridge Decl. ¶ 2, 30 TTABVue at 2 of 277.
Opposition No. 91193704
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electrical generators and related products, and from financial services to
CAT-branded merchandise.89
• Caterpillar has a national network of fifty CAT dealers and over 53,000
employees in the United States.90
• Prior to any priority date that Applicant can claim, Caterpillar’s total
revenues had exceeded $100 billion.91 Looking at sales through the time
of trial herein, Caterpillar has enjoyed revenues exceeding $200 billion
in the U.S. since 2000 alone.92
• The volume of past sales is significant inasmuch as the lifetime of CAT-
branded large machines and related products is measured in decades.93
• Over the years, Caterpillar has invested hundreds of millions of dollars
in advertising and promoting the CAT mark nationwide in virtually
every medium (e.g., national and local television and radio programs, in
books, on the Internet, in newspapers, national print publications, trade
journals, and at large industry trade shows),94 including staging the
largest-ever exhibit at the MINExpo trade show in Las Vegas in 2012.95
Caterpillar and its products and services have been featured in
newspaper and magazine articles in the nation’s most widely-circulated
publications, such as The New York Times, Chicago Tribune, Forbes,
and many more.96
• CAT has 30% market share in global construction machinery – several
percentage points higher than its next largest competitor.97
• The CAT mark and name is prominently displayed at the top of each
page of Caterpillar’s website at cat.com, which is visited by millions of
users each year.98
• Furthermore, the CAT mark appears on numerous third-party dealer
websites in connection with Caterpillar’s products and services.99
89 Id. at ¶¶ 6, 7, 10, Exhibit B., 30 TTABVue at 4-5, 83-153 of 277.
90 Id. at ¶¶ 8, 9, Exhibits B - D, 30 TTABVue at 5, 83-194 of 277.
91 Id. at ¶ 12, Exhibits C – D, 30 TTABVue at 5, 154-94 of 277.
92 Id. at ¶ 13 Exhibits C – D, 30 TTABVue at 5, 154-94 of 277.
93 Id. at ¶ 11, 30 TTABVue at 5 of 277.
94 Id. at ¶¶ 15, 20, 30 TTABVue at 5-6 of 277; Justus Decl. at ¶23, Justus Exhibit F, 29
TTABVue at 12-13, 115-137 of 137.
95 Stembridge Decl. ¶ 16, Stembridge Exhibit E, 30 TTABVue at 5-6, 195-217 of 277.
96 Id. at ¶ 20, 30 TTABVue at 6 of 277; Justus Decl. at ¶ 23, Justus Exhibit F, 29 TTABVue
at 12-13, 115-137 of 137.
97 39 TTABVue at 87 of 88.
98 Stembridge Decl. ¶ 17, 30 TTABVue at 6 of 277.
Opposition No. 91193704
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• Opposer uses the CAT mark in connection with its NASCAR program.100
• Opposer points out that in light of the substantial unsolicited national
media attention and publicity Opposer’s consumers have referred to and
identified the company Caterpillar as simply CAT for decades.101
• Caterpillar was included as No. 46 on the 2012 Fortune 500 list.102
Caterpillar was listed as No. 20 overall on Fortune magazine’s 2013 list
of the World’s Most Admired Companies, and #1 in the “Industrial and
Farm Equipment” category.103 Interbrand has consistently ranked the
Caterpillar’s brand among the top 75 most valuable global brands, and
it climbed to No. 61 in 2012.104 And Opposer points out that even
Applicant admitted that the CAT mark is well-known.105
• Caterpillar’s CAT brand has been featured in more than twenty feature
films dating back to the 1920s.106
• Caterpillar has been vigilant in protecting the CAT mark against
likelihood of confusion and dilution.107 For example, Caterpillar has
initiated hundreds of enforcement actions against third parties claiming
confusingly similar CAT-formative marks, and has often prevailed in
such actions, based in part on the renown of its CAT marks.108
99 Id.
100 Stembridge Decl. at ¶ 18, 30 TTABVue at 6 of 277. The program includes sponsorship of a
Winston Cup Series NASCAR racing car, where the CAT design mark is prominently
displayed on the hood of Jeff Burton’s No. 31 race car.
101 Id. at ¶19, 30 TTABVue at 6 of 277.
102 Justus Decl. ¶ 21, Justus Exhibit E, 29 TTABVue at 12, 112-14 of 137.
103 Justus-2 Decl. ¶ 9, Exhibit H, 39 TTABVue at 4, 86-88 of 88.
104 Stembridge Decl. at ¶ 22, 30 TTABVue at 7 of 277. Opposer notes that in the 2012
Interbrand rankings, Caterpillar’s brand is ranked ahead of the following brands, among
others, which have been held famous by the TTAB or the federal courts: BURBURRY, VISA,
STARBUCKS, PORSCHE, and CARTIER.
105 Justus Decl. ¶ 20, Justus Exhibit D, 29 TTABVue at 11, 100-09 of 137.
106 Stembridge Decl. at ¶ 21, 30 TTABVue at 6-7 of 277.
107 Justus Decl. ¶ 2, 29 TTABVue at 2 of 137.
108 As recently as 2007, this Board found that Caterpillar’s “aggressive trademark
enforcement activities reinforce the strength of its CAT marks.” Caterpillar Inc. v. Pave Tech,
Inc., Cancellation No. 92041776 (TTAB March, 12, 2007) (holding that the CAT mark is
“famous” and “has been recognized as one of the world’s strongest brands”; cancelling
defendant’s registration for PAVERCAT for paving machines and attachments); see also
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 11.91 (4th ed.
2010) (“ … active program of prosecution of infringers … enhances the distinctiveness and
strength of a mark”); Caterpillar Tractor Co. v. Gehl Co., 177 USPQ 343, 345 (TTAB 1973)
(finding likelihood of confusion between “well-known” CAT mark and the mark HYDRACAT
Opposition No. 91193704
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In summary, Opposer argues that its CAT marks stand as the cornerstone of the
Caterpillar brand portfolio, that CAT has achieved universal name recognition and is
one of the most iconic brands in the world. In fact, various industry, media, and
brand leaders have long recognized the CAT marks as among the most famous and
valuable trademarks in the world. As seen above, Caterpillar owns prior rights in its
CAT marks for various products in the oil and gas industry (machinery and
equipment used to prepare, dig, trench, and reclaim gas-well sites). Given this
showing, Applicant admits that Opposer’s CAT marks are well-known for products
used in the oil and gas industry.109 As a result, Opposer argues that, as a matter of
law, its claimed CAT marks are entitled to a broad scope of protection.
As discussed above, under our precedent, any doubts as to the registrability of
Applicant’s BIG CAT marks must be resolved in favor of Caterpillar as the prior
registrant of a famous mark. We find that the CAT mark has reached an
extraordinary level of fame, not only in the oil and gas industry, but also with respect
to the general consuming public.110
Applicant has dedicated a substantial portion of this litigation to an attempt to
weaken opposer’s showing of commercial strength with evidence of third-party use of
for vehicles); Caterpillar Tractor Co. v. Katrack Vehicle Co., 172 USPQ 409, 411 (TTAB 1972)
(finding likelihood of confusion between “well-known” CAT mark and the mark KATRAK for
vehicles); Caterpillar Inc. v. Telescan Techs., LLC,., 2002 WL 1301304, at *4 (C.D. Ill. Feb.
13, 2002) (holding that the CAT mark is “among the most famous marks currently used in
United States commerce”) Opposer contends that CAT is a household name that is
encountered by the general consuming public on a regular basis. Id. at *3 (given its wide
recognition, court held that the CAT mark is one of “the most famous marks in America”).
109 Justus Decl. ¶ 20, Justus Exhibit D, 29 TTABVue at 11, 100-09 of 137.
110 See Opposer’s Brief at 24-31, 51 TTABVue at 32-39 of 234.
Opposition No. 91193704
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a variety of CAT marks. We are unpersuaded by this contention, and find in those
cases where third-party competitors have moved at all close to Opposer’s famous
marks, Caterpillar has demonstrated a rigorous enforcement effort.
Finally, as seen above, Applicant itself has admitted that the CAT mark is well
known for construction equipment generally, and specifically for construction
equipment in the oil and gas industry. Not surprisingly, in light of the CAT brand’s
fame, Applicant admitted that it was well aware of the CAT marks prior to filing its
applications for the BIG CAT marks. 111
Accordingly, we find on this record that Opposer’s CAT marks are extremely well
known and are therefore entitled to a broad scope of protection. Recot, 54 USPQ2d at
1897.
C. Similarities of the marks
Opposer argues that the similarity between the parties’ respective marks as to
sound, appearance, and overall commercial impression is irrefutable inasmuch as the
mere addition of the highly descriptive term “big” in Applicant’s mark fails to
distinguish the parties’ marks. See In re Rexel, 223 USPQ 830, 832 (TTAB 1984)
(LITTLE GOLIATH for a stapler and staples held to be confusingly similar to
GOLIATH for pencils). We agree with Opposer’s contention that potential consumers
of Applicant’s technology will consider its BIG CAT marks as merely a variation of
Opposer’s famous CAT marks. See, e.g., In re Chatam Int’l Inc., 380 F.3d 1340, 71
USPQ2d 1944, 1946-48 (Fed. Cir. 2004); In re El Torito Restaurants Inc., 9 USPQ2d
111 Justus Decl. ¶ 20, Justus Exhibits B and D, 29 TTABVue at 11, 48, 100-09 of 137.
Opposition No. 91193704
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2002, 2004 (TTAB 1988); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985).
We also find that Opposer’s CAT marks and Applicant’s BIG CAT marks contain an
identical dominant element, i.e., the distinctive “Cat” term. See Giant Food, Inc. v.
Nation’s FoodService, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983);
Keebler Co. v. Murray Bakery Prods., 866 F.2d 1386, 9 USPQ2d 1736, 1739-40 (Fed.
Cir. 1989) (holding that it is proper to give less weight to weaker portion of marks).
As to the difference in appearance with Applicant’s addition of a feline design to
its “BIG CAT & design” mark, we find that this does not avoid a likelihood of
confusion. The wording in this composite mark, and especially the word “Cat,” is the
dominant portion of the mark, which will make the greatest impression on
consumers. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d
1375, 1380 (Fed. Cir. 2002) (“The words dominate the design feature.”); In re 1st USA
Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586-87 (TTAB 2007) (“If a mark comprises
both a word and a design, then the word is normally accorded greater weight because
it would be used by purchasers to request the goods or services.”). Moreover, the
addition of the words “Energy Corp.” to Applicant’s design mark is not sufficient to
avoid a likelihood of confusion. It is well-settled that adding generic matter to
another’s mark will not avoid a likelihood of confusion. See Motion Picture
Association of America, Inc. v. Respect Sportswear, Inc., 83 USPQ2d 1555, 1561
(TTAB 2007) (RATED R SPORTSWEAR for clothing confusingly similar to RATED R
mark for film ratings).
Applicant argues that the parties’ trade dress (i.e., especially different color
combinations) is different such that confusion is unlikely. Trade dress usage,
Opposition No. 91193704
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however, is largely irrelevant to this opposition proceeding, as we do not rely for our
ultimate decision on rights Opposer holds only in common law marks. Instead, we
focus on the similarity of the marks as depicted in the parties’ applications and
registrations. See Octocom Sys., Inc., 16 USPQ2d at 1787-88 (“The issue in an
opposition is the right of an applicant to register the mark depicted in the application
for the goods identified therein.”).112
As to pronunciation, we agree with Opposer that the aural differences between
these marks are minor inasmuch as Applicant’s “Big Cat” marks contain the entire
literal portion of Opposer’s CAT marks, differing only by the addition of the
laudatory term “big.” See Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d
1910, 1914 (TTAB 2000).
As to connotation, Applicant argues that both of its BIG CAT marks are
sufficiently distinct to avoid a likelihood of confusion with Caterpillar’s CAT marks.
Applicant’s primary argument regarding the dissimilarity of the parties’ marks is
that the “Big Cat” wording in its BIG CAT marks is a “unitary term” having “a
specific and well recognized meaning” connoting “large animals of the feline species
who have the ability to roar and typically reside in the wild ... .” In this context,
Applicant argues that the word “big” is not merely a laudatory way of referring to a
“cat.”
On this point, we agree with Opposer. “Big” is a separate word with a readily
understood, descriptive meaning. By contrast, examples of coexisting marks raised by
112 As to the marks themselves, Applicant’s special form drawing for its “BIG CAT & design”
composite mark identifies no colors, and only three of Opposer’s thirteen claimed marks
identify the colors yellow, black, red and white as features of the marks.
Opposition No. 91193704
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Applicant, such as BEARCAT, BOBCAT, POLECAT, and WILDCAT, are arguably
unitary terms113 creating readily understood visual impressions quite different from
the imagery prompted by the word “Cat” alone. With Applicant’s BIG CAT marks,
much like the reported decision of the coined term, HYDRACAT (where the “Hydra”
prefix was viewed as a shortened form of “hydraulic,” which in turn describes a
feature of the respondent’s product),114 the addition of such a descriptive term to
“CAT” is not sufficient to distinguish the parties’ marks.
Moreover, the possibility consumers might think of “Big Cat” as referencing “large
animals of the feline species” would not necessarily avoid a likelihood of confusion
given the facts before the Board, such as the fame of Opposer’s CAT marks, the
overlapping trade channels and customers, and the relatedness of the goods and
services. See TBC Corp. v. Holsa, Inc., 126 F.3d 1470, 44 USPQ2d 1315, 1317-18
(Fed. Cir. 1997) (finding likelihood of confusion between GRAND AM and GRAND
SLAM despite different connotations because there was no evidence that the relevant
purchasers were familiar with applicant’s proffered meaning).
Finally, the record reveals evidence of a competing definition of the term “Big
Cat,” namely, as a laudatory attribution used by the consuming public and the media
to refer to the size, popularity, and widespread recognition of Caterpillar and/or its
113 See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir.
1991) (“A unitary mark has certain observable characteristics. Specifically, its elements are
inseparable. In a unitary mark, these observable characteristics must combine to show that
the mark has a distinct meaning of its own independent of the meaning of its constituent
elements.”).
114 Caterpillar Tractor Co., 177 USPQ at 345.
Opposition No. 91193704
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products.115 This evidence suggests that over the years, much of the thrust of
Opposer’s commercial imagery has been transformed from that of a “caterpillar” to
that of a “feline.” Specifically, the sustained and consistent nickname usage (i.e., the
term “Big Cat”) belies Applicant’s position on the dissimilarities of the respective
connotations under this du Pont factor, and greatly increases the likelihood of
confusion.116
In support of this position, what follows is a representative sampling of the
hundreds of examples where the “big Cat” nickname was used by well-recognized
newspapers and national magazines. For example, consumers and the media refer to
a piece of Caterpillar’s large machinery as a “Big Cat,” while Opposer itself is
regarded as a bellwether with respect to the economy117 such that it is commonly
referred to as “Big Cat” by the media and others in the financial world.118
HEADLINE: Train Wrecks: Then and now
At the wreck, the Big Cats are unloaded and rather than gingerly picking over
the rubble of crunched train cars for transport, the whole train wreck is simply
pushed into the ditch … . 119
HEADLINE: A lift – and a letdown / Caterpillar profit jumps 49%, but outlook takes hit
Photo caption: At a trade show last month, Dmitry Golitsyn, of Moscow,
checked out a big Cat earth mover. 120
115 Stembridge Decl. ¶ 24, 30 TTABVue at 7 of 277.
116 Norac Co., Inc. v. Occidental Petroleum Corp., 197 USPQ 306, 315 (TTAB 1977);
Volkswagen A.G. v. ThermoChem Corp., 185 USPQ 560 (TTAB 1975); Coca Cola Co. v. Busch,
52 USPQ 377 (D.C. E.Pa. 1942).
117 Caterpillar is included in the prestigious “Dow 30” list of companies, which comprise the
Dow Jones Industrial Average. (Justus Decl. ¶ 22.)
118 Stembridge Decl. ¶ 24, 30 TTABVue at 7 of 277, Stembridge-2 Decl. ¶ 2, 40 TTABVue at 2
of 180.
119 Sentinel-Standard (Ionia, Michigan) at A-1, January 27, 2013, 40 TTABVue at 7 of 180.
120 Chicago Tribune, at C-1, October 23, 2012, 40 TTABVue at 9 of 180.
Opposition No. 91193704
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HEADLINE: Is Cat Ready to Run? Don’t Jump the Gun
Is the big Cat back? … 121
HEADLINE: The Big Cat Plows Ahead on Better US Growth Prospects
… Caterpillar is the world’s largest maker of construction equipment and farm
machinery… 122
HEADLINE: Students get to work with big Cat technology
… Oak Creek High School and the Caterpillar Inc. have formed a partnership
… 123
HEADLINE: Did Big Cat Just Purr?
… Is Caterpillar losing its mojo? … 124
HEADLINE: 'Cat' roars in with high hopes
… There's every reason to believe that Caterpillar will be an economic boon to
our area. Let the big Cat roar. 125
HEADLINE: Et tu Caterpillar? Then fall America!
… The larger question for the American people and Washington policymakers
is this: Why won't the Big Cat just build its new factory in Illinois and export its
miniexcavators to China? … 126
HEADLINE: A small contender with a big backer; Cat Auction Services of Shakopee, a
seller of used construction equipment, finds ways to keep the big Cats, and
customers, purring.
… The David in this saga is a Shakopee construction equipment auction
company, Cat Auction Services, which peddled consignments worth about $48
million in 2009, its first year in business. 127
HEADLINE: Looking for a moving experience? Dig This
… The engine roars, and the big Cat starts to lift. … 128
121 Investor's Business Daily, National Ed., at B04, February 16, 2012, 40 TTABVue at 11 of
180.
122 Midnight Trader, February 3, 2012, 40 TTABVue at 13 of 180.
123 Milwaukee Journal Sentinel (Wisconsin), at 3, September 8, 2011, 40 TTABVue at 14 of
180.
124 Benzinga.com, July 22, 2011, 40 TTABVue at 16 of 180.
125 Winston-Salem Journal (North Carolina), at 20, November 13, 2010, 40 TTABVue at 38 of
180.
126 Chicago Tribune, at C-13, October 12, 2010, 40 TTABVue at 39 of 180.
127 Star Tribune (Minneapolis, MN), at 1-D, June 3, 2010, 40 TTABVue at 42 of 180.
128 The Denver Post, at B05, August 3, 2008, 40 TTABVue at 44 of 180.
Opposition No. 91193704
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HEADLINE: Owens Does the Heavy Lifting
Big Cat needed to dig itself out of deep trouble in the early 1980s. … 129
HEADLINE: Machinery Stocks Power Ahead On Int'l Building, Mining Boom
… Big Cat's shares are up nearly 35% so far this year. … 130
HEADLINE: Limestone landslide traps man in tractor
… The big Cat dug at the mountain next to the trapped vehicle and built a
smaller hill of limestone with the material it removed. 131
HEADLINE: Residents Emerge, Start Digging;
… Raton emergency workers on Monday sent a D-6 Caterpillar bulldozer
rumbling up a rural mesa to rescue nine elk hunters holed up in a cabin. As of late
afternoon, the big cat was chugging its way back to town - followed by the
hunters in their vehicles. … 132
HEADLINE: Creek group perseveres despite theft
… Richmond firefighters responded to the site to put out what was left of a
Caterpillar 320 excavator, a piece of heavy equipment valued at about $65,000,
said subcontractor Brett Schreiner. The Big Cat was burned so completely it had
to be disassembled to be moved.
133
HEADLINE: Caterpillar Crashes after Big Warning on Housing Slump; Big Cat
Shares Dive 14.5%; Heavy equipment giant misses Q3 views, slashes 2006, 2007
forecasts 134
HEADLINE: Thompson celebrates new home
… Having the ability to service the big Cats, as well as sell them, was a major
reason for the move. 135
HEADLINE: Big ‘Cat’ Family Business Is Sold
… Beckwith Machinery, known primarily as a Caterpillar equipment dealer,
employed about 750 when the sale closed last week. 136
129 Investor's Business Daily, at A04, February 5, 2008, 40 TTABVue at 46 of 180.
130 Investor's Business Daily, at A01, June 21, 2007, 40 TTABVue at 58 of 180.
131 Green Bay Press-Gazette (Wisconsin), at 3-A, March 4, 2007, 40 TTABVue at 60 of 180.
132 Albuquerque Journal (New Mexico), at A-1, January 2, 2007, 40 TTABVue at 62 of 180.
133 The San Francisco Chronicle (California), at B1, November 7, 2006, 40 TTABVue at 65 of
180.
134 Investor's Business Daily, at A01, October 23, 2006, 40 TTABVue at 67 of 180.
135 The Leaf-Chronicle (Clarksville, Tennessee), at 9B, October 20, 2006, 40 TTABVue at 69
of 180.
136 Pittsburgh Post-Gazette (Pennsylvania), at F-1, October 12, 2005, 40 TTABVue at 77 of
180.
Opposition No. 91193704
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HEADLINE: Big Cat
… Until now, no one had ever rebuilt the 994, the biggest loader in
Caterpillar's mining-equipment line … 137
Big Cat jumps on analyst report. Caterpillar gained 1.5% to 102.20 after
Lehman Bros. said a meeting with the firm’s management increased the
brokerage’s confidence that margins will improve in the second half of ‘05 and in
‘06. The heavy equipment maker’s orders should remain strong and price
increases appear to be sticking, said Lehman. … 138
HEADLINE: IBD’S Top 10
Caterpillar Up On Dividend, Split
#8 - The heavy equipment maker rose 2% to 96.58 after it hiked its quarterly
dividend by 22% to 25 cents a share, payable Aug. 19, and said it'll split 2-for-1 on
July 13. Earlier, Prudential upgraded Caterpillar, saying it should easily beat
profit forecasts due to strong volume. Big Cat was one of the best Dow
components on Wed. … 139
HEADLINE: Collector cars get spin at GPC
The big cat: Mark Pawuk returns to a favorite track … and this weekend will
be racing under some new colors. In a sport dominated by aftermarket automotive
sponsorship, Pawuk brings new blood in the form of Ohio Cat, the state-wide
Caterpillar company. 140
HEADLINE: Techs Can Repair Really Big Cats
… Next month, 12 students will graduate from Mesa Community College’s new
Caterpillar Technician Training program … 141
HEADLINE: Equipment drivers to show skills in roadeo
A Heavy Equipment Roadeo on Saturday will feature big Cats but no broncs
or bulls. Those are Cats as in the big yellow Caterpillar vehicles common at
construction sites. … 142
HEADLINE: Rahco’s equipment is making the grade
… "We wanted to do a product that looks, smells and tastes Cat," Col says.
And, if all goes well, roars like the big cats, too. 143
137 Charleston Gazette (West Virginia), at 1C, July 6, 2005, 40 TTABVue at 78 of 180.
138 Investor's Business Daily, at A02, June 22, 2005, 40 TTABVue at 83 of 180.
139 Investor's Business Daily, at A01, June 9, 2005, 40 TTABVue at 85 of 180.
140 Plain Dealer (Cleveland), at D6, May 20, 2005, 40 TTABVue at 86 of 180.
141 The Arizona Republic (Phoenix), at 1, April 19, 2005, 40 TTABVue at 90 of 180.
142 Tucson Citizen, at 8A, September 30, 2004, 40 TTABVue at 92 of 180.
143 Spokesman Review (Spokane, WA), at A-6, April 6, 2004, 40 TTABVue at 93 of 180.
Opposition No. 91193704
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HEADLINE: Colorful characters
… [Baltimore Colts kicker Jim O’Brien]: “I learned how to operate a big Cat
(Caterpillar construction equipment) and how to build framing and flooring and
electrical and plumbing. …” 144
HEADLINE: Monster Machines Are Waging War Against Lake Erie Shoreline Surges
… At the bottom, the Big Cat waited - Mike Huffman Jr.’s Caterpillar 330L.
The Big Cat had the task of carefully and precisely positioning the rocks along
the 315-foot long shoreline erosion-control area. … 145
HEADLINE: Cat Building Leaves Tracks
Watch out in the elevator lobbies in the new Caterpillar Financial Services
Corp. building on West End Avenue.
There are Cat tracks in the floors.
And screens on the overhead lighting that resemble the scoops on the big
Cats.
There’s even an old Cat in the lobby. 146
HEADLINE: Big Cat learns to think small 147
HEADLINE: Bulldozer ‘Toast’ After Line Rupture
… [O]ne of the tracks of the big Cat slid off a level area and into a trenched
area, where it fractured a 4-inch gas line. The Cat’s driver escaped without injury,
but the gas ignited. … 148
HEADLINE: Saving Sears: Former Workers Collect Pieces of Plant
… Betty White works fast because the big Caterpillar tractor that’s scooping
up huge loads of concrete chunks … “I’m making a rock garden,” White says over
the din of the big Cat. “I used to work out here. It’s all gone. I’m kind of sad about
it. I have some good memories out here.” 149
HEADLINE: The Sound of Oil
The camp lay a few miles offshore, a collection of orange trailers parked in
parallel lines, home to 83 workers and 33 vehicles. Big Cat tractors were
rumbling nearby, bulldozing a new road system. Far out in the blinding glare of
ice, dots that were seismic rigs inched along the horizon. 150
144 St. Petersburg Times (Florida), at 1C, January 25, 2004, 40 TTABVue at 98 of 180.
145 Plain Dealer (Cleveland, Ohio), at 1B, November 1, 2000, 40 TTABVue at 110 of 180.
146 The Tennessean, at 2E, April 3, 2000, 40 TTABVue at 112 of 180.
147 The Times Union (Albany, NY), at C1, July 18, 1999, 40 TTABVue at 117 of 180.
148 Albuquerque Journal (New Mexico), at D2, June 30, 1999, 40 TTABVue at 119 of 180.
149 News & Record (Greensboro, NC), at B1, June 12, 1998, 40 TTABVue at 126 of 180.
150 Anchorage Daily News (Alaska), at 4F, May 17, 1998, 40 TTABVue at 131 of 180.
Opposition No. 91193704
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HEADLINE: New Plant’s Output Is Coveted ‘Big Cat’ Hopes High for Sarpy-Made
Combine
It’s as wide as a downtown street, big as a bungalow and heavier than some
Army tanks. Friday, the Lexion combine harvester was on display in downtown
Omaha, as Caterpillar Claas America announced plans to mass produce the
machine in Sarpy County. Secretary of State Scott Moore, who was on hand for
the announcement, called it simply the “Big Cat.” 151
HEADLINE: Small Machines for The Big Cat 152
HEADLINE: How to Move a Whole Lot of Earth
… The man who keeps the big Cats running despite heat, grit and dust is
Mike Monnot, equipment superintendent for Atkinson-Washington-Zachry, the
water district's contractor tapped for building the dam at the west end of the
valley. … 153
HEADLINE: Thieves lift 25-ton tractor; Theft is Hurst’s 2nd large equipment heist
HURST - Case 97-5908.
The Stolen Big Cat.
It was slow, it was yellow, and it weighed 25 tons.
But someone still took it - a Caterpillar track loader – early yesterday from a
highway construction site on Northeast Loop 820.
Think Andy Sipowicz has big cases on NYPD Blue? He’s got nothing on
detectives in Hurst. 154
HEADLINE: Caterpillar Touts 600-HP Engine
… The 600-hp engine won't be in full production until January 1998, but it
already has been dubbed “The Big Cat 600” by drivers and others aware of its
development. … 155
HEADLINE: “Cat” may give developers new life in W. Broward
… But developers have awesome plans for West Broward's nowhere – another
100,000 homes. Providing, of course, this big Cat can dig them out of a public
relations chasm [associated with blasting]. 156
151 Omaha World Herald (Nebraska), at 1, May 2, 1998, 40 TTABVue at 137 of 180.
152 Engineering News-Record, Vol. 239, No. 19, at 19, November 10, 1997, 40 TTABVue at 140
of 180.
153 Orange County Register (California), at A08, August 17, 1997, 40 TTABVue at 143 of 180.
154 Fort Worth Star-Telegram (Texas), at Metro-1, August 6, 1997, 40 TTABVue at 146 of 180.
155 Automotive News, at 18, March 24, 1997, 40 TTABVue at 148 of 180.
156 The Miami Herald, at 7C, December 8, 1996, 40 TTABVue at 150 of 180.
Opposition No. 91193704
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Applicant argues that this showing is de minimis, and urges us to consider
instead an Internet search of “big cat” where allegedly Caterpillar did not show up
among the first 200 search results. However, we do find Opposer’s showing above to
be compelling. Stretching over a period of more than twenty years, the record shows
actual examples of the use by quoted persons, reporters and headline writers of the
term “Big Cat” as an unmistakable reference to Opposer and its large equipment.
This evidence further supports the conclusion that confusion is likely when Applicant
uses its BIG CAT marks on its named goods.
Accordingly, given the previous discussion, we find that this du Pont factor weighs
in favor of a finding of a likelihood of confusion.
D. Number and nature of similar marks in use on other goods
and services
Attempting to counter opposer’s evidence of commercial strength, applicant has
submitted evidence to show third-party use of marks in support of its argument that
opposer’s mark is weak. Applicant has argued that various third-party names and
marks containing the word “CAT” diminish the strength and scope of protection to
which Caterpillar’s CAT mark is entitled. Specifically, Applicant has submitted
various third-party registrations and website printouts.157
However, any relevant third-party goods and services in the case at bar would
have to relate to heavy construction equipment or the oil and gas industry.
Accordingly, we find that much of Applicant’s evidence is irrelevant as it relates to
completely unrelated goods and services (e.g., radon detection device, armored
157 36 TTABVue and 37 TTABVue.
Opposition No. 91193704
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vehicles, supply chain management system, surveillance system, forestry and logging
equipment, highway and utility markers, vegetation harvesting systems, etc.), or
involves marks (e.g., BOBCAT, POLECAT, WILDCAT, etc.) that convey commercial
impressions quite different from those of Opposer’s CAT marks.158
Furthermore, Opposer points to a series of past cases wherein Caterpillar’s
rigorous enforcement efforts have been recognized by this Board. The instant record
likewise shows not only that Opposer’s federal trademark registrations remain valid
and subsisting, but that Opposer’s trademark enforcement actions also are still
underway. Given these efforts, and the limited usage by third parties with respect to
heavy equipment or uses in the oil and gas fields, Applicant has failed to
demonstrate that third-party marks in more distant fields should provide cover for
Applicant’s adoption of its BIG CAT marks for gas-well equipment – a field in which
Caterpillar is a prominent participant and in which the CAT marks are famous.
158 For instance, in 36 TTABVue, Applicant has submitted website printouts relating to an
AIRCAT radon testing device (at 9–12 of 379), an AQUA CAT scuba diving company (p. 16-17
of 379), a BIG CAT rifle gun (at 36-37 of 379), a BEAR CAT vacuum cleaner (at 180-81 of
379), a FACTORY CAT industrial floor scrubber (at 184-85 of 379), KIT KAT chocolate bars
(at 199-200 of 379), and POWERCAT portable fans and blowers (at 219 of 379). Similarly, in
37 TTABVue, Applicant has submitted website printouts relating to a climate assessment
tool called CAT developed by the EPA (at 10-12 of 99), a wildlife photographer’s collection of
cat photographs entitled “Big Cats (and small cats...)” (at 36-38 of 99), a fishing company
called “Big Cat Guide Service” (at 39 of 99), an event called the “10th Annual Big Cat Poker
Run” (at 40-41 of 99), a website for “Big Cat Records” (at 42-45 of 99), a “Mad Cat Bike Shop”
(at 81-82 of 99), a “Tom Cat Bakery” (at 85 of 99), and a medical website explaining the
meaning of CAT scans (at 83-84 of 99).
See also Caterpillar v. Gehl, 177 USPQ at 345 (“These third-party registrations and uses
are, however, insufficient to establish that ‘CAT’, per se, is in any way lacking in trademark
significance or distinctiveness as applied to earthmoving and material handling equipment
because twenty-one of the twenty-six registrations pertain to goods distinctly different from
those here involved and the remaining registrations and third-party uses cover such marks
as ‘BEARCAT’, ‘BOBCAT’, ‘POLECAT’, and ‘WILDCAT’, which, as unitary terms, have well-
known and recognized meanings which are sufficiently different from and do not conjure up
the same image as ‘CAT’, per se.”)
Opposition No. 91193704
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Indeed, Applicant dedicates a substantial portion of its brief and declarations to
its position that alleged third-party use and/or registration of CAT-formative marks
somehow precludes or materially weakens Caterpillar’s claims in this opposition
proceeding by diminishing the strength of the CAT mark to such an extent that no
likelihood of confusion exists. Such alleged third-party marks are only relevant,
however, if the evidence of record establishes that “the marks have been used to such
an extent that customers have become accustomed to seeing the marks and hence
have learned to distinguish them based on minor differences in the marks.”
Pro Quest Information & Learning Co. v. Jacques R. Island, 83 USPQ2d 1351, 1357
(TTAB 2007); see Palm Bay Imps., Inc., 73 USPQ2d at 1693-94 (“The probative value
of third-party trademarks depends entirely upon their usage.”). Here, Applicant’s
evidence fails to establish that any of the alleged third-party uses have been so
widespread as to have had any impact on consumers of Applicant’s technology. 7-
Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1729 (TTAB 2007).
Even assuming for the sake of argument that some of these third-party marks are
relevant, the existence of such marks does not justify the registration of another
confusingly similar mark. Id. (“If the particular marks involved in a proceeding are in
conflict, the fact that others may have used and/or registered marks comprising a
feature common to the marks in issue is of no particular significance. That is, third-
party registration or use cannot justify the registration of what possibly may be
another confusingly similar mark.”); In re Helene Curtis Indus., Inc., 305 F.2d 492,
134 USPQ 501 (CCPA 1962); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153
USPQ 406 (CCPA 1967).
Opposition No. 91193704
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E. Actual Confusion
Applicant argues that a lack of actual confusion evidence is sufficient to avoid a
likelihood of confusion. However, given the inherent difficulty of obtaining reliable
actual-confusion evidence, it is well-established that actual confusion is not required
for a finding of likelihood of confusion. Weiss Associates, Inc. v. HRL Associates, Inc.,
902 F.2d 1546, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990); Giant Food, 218 USPQ at
395-96 (holding that “it is unnecessary to show actual confusion in establishing
likelihood of confusion”); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101
USPQ2d 1826, 1834 (TTAB 2012) (recognizing that “evidence of actual confusion is
difficult to obtain”).159 The difficulty of obtaining actual confusion evidence is
compounded by the fact that the overlap in the parties’ products involves an
extremely niche market (i.e., coal bed methane well operators and companies
providing services to those operators), the fact that Applicant operates only in a
limited geographic area in Wyoming, and because Applicant has had comparatively
minimal sales and promotional activity. Under these circumstances, it would hardly
159 Also, recognizing that “it is very difficult, and often impossible, to obtain reliable evidence
of actual confusion,” courts and the Board do not require such evidence for various reasons.
4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:12 (4th ed.
2010). First, “[i]n an impersonal marketplace,” confusion may not be discoverable because
consumers “ordinarily do not disclose their state of mind.” Restatement (Third) of Unfair
Competition § 23 cmt.d, (1995). Second, consumers may have been confused without realizing
it. See Int’l Kennel Club of Chicago v. Mighty Star, Inc., 846 F.2d 1079, 6 USPQ2d 1977, 1987
n.6 (7th Cir. 1988). Third, those who later learn “of their deception will often not bother to
report the fact.” 3 McCarthy at § 23:12. Fourth, the “vast majority” of confused persons do
not contact either party. Kinark Corp., et al. v. Camelot, Inc., 216 USPQ 111, 126 (D.N.J.
1982).
Opposition No. 91193704
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be surprising if no evidence of actual confusion had come to light.160 See Nina Ricci,
S.A.R.L. v. E.T.F. Enterprises, Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir.
1989).
Nonetheless, Caterpillar uncovered an instance of asserted actual confusion in
this case. Lonnie Fuller, the President of Fuller Construction, located in Moorcraft,
Wyoming, testified as follows:
I am familiar with Big Cat Energy, as Fuller Construction
works with the same customers as Big Cat Energy in the
Powder River Basin. I understand that Big Cat Energy is
developing a device that provides an alternative for
depositing coal bed methane water in a reservoir. When I
first learned of the name BIG CAT in connection with this
company, I associated this use with Caterpillar and
Caterpillar equipment because of Caterpillar’s use of the
CAT brand. 161
We do note that Applicant questions Mr. Fuller’s credibility, describes his
statement as conclusory in nature without any factual support, and criticizes Fuller’s
(and other similar) testimony on this point as irrelevant, inasmuch as the claims
simply represent instances of “calling to mind,” which are not probative on the
question of likelihood of confusion.
The predecessor to our primary reviewing court has held that even a single
instance of actual confusion is entitled to weight. See Libbey-Owens-Ford Glass Co. v.
160 Applicant submitted four declarations from individuals who purportedly work in the oil
and gas industry, containing virtually identical boilerplate denials of confusion between the
BIG CAT Marks and Caterpillar’s CAT mark. (See Applicant’s Corbett Decl., Hettinger Decl.,
Greenough Decl., and Vergnani Decl.) As argued by Opposer, however, duplicative, self-
serving declarations like these are entitled to little or no weight. See Hexcel Corp. v. Ineos
Polymers, Inc., F/K/A BP MRP-RNB Amoco Polymers, Inc., 681 F.3d 1055, 1063-64 (9th Cir.
2012) (faulting “virtually identical boiler-plate general denials” contained in eight
declarations).
161 Lonnie Fuller Rpt. ¶ 6, 33 TTABVue at 141-42 of 306.
Opposition No. 91193704
- 47 -
Thermoproof Glass Co., 390 F.2d 770, 156 USPQ 510, 511 (CCPA 1968) (where the
Board had dismissed a single instance of actual confusion, the Court of Customs and
Patent Appeals reversed, inter alia, on the ground it was entitled to consideration);
Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975) (holding that even a
single instance of actual confusion is at least “illustrative of a situation showing how
and why confusion is likely”).
Opposer argues that this instance of asserted actual confusion is entitled to even
greater weight herein because Mr. Fuller is a professional with over thirty years of
experience in the oil and gas industry, as opposed to a layperson who arguably might
be more easily confused. See Kemp v. Bumble Bee Seafoods, Inc., 398 F.3d 1049, 73
USPQ2d 2002, 2009-10 (8th Cir. 2005) (holding that when even professional buyers
are confused, it serves as strong evidence of likelihood of confusion); Union Carbide
Corp. v. Ever-Ready, Inc., 531 F.2d 366, 188 USPQ 623, 638-39 (7th Cir. 1976);
Morningside Group Ltd. v. Morningside Capital Group, L.L.C., 182 F.3d 133, 51
USPQ2d 1183, 1189 (2d Cir. 1999).
Inasmuch as we cannot be sure whether Mr. Fuller was truly initially confused
(as Opposer argues) or whether he was merely associating the two marks (as argued
by Applicant), we find this to be a neutral du Pont factor in our determination of
likelihood of confusion herein.
F. Sophistication of Purchasers
We acknowledge that Opposer’s products and service are generally quite
expensive. Moreover, we also find relevant the complex nature of Applicant’s
Opposition No. 91193704
- 48 -
proprietary technology, site specific issues such as complex geological assessments,
state and federal regulatory approval processes, etc. Hence, Applicant will
necessarily be involved in detailed interactions with its customers. Of course, even
sophisticated purchasers can be confused by very similar marks. See Weiss
Associates, Inc. 14 USPQ2d at 1841-42. Furthermore, the alleged expertise of owners
and operators of gas wells is neither controlling nor persuasive when one considers
an array of contractors in the post-sale context. See Octocom Systems Inc., 16
USPQ2d at 1787. On balance, this du Pont factor weighs slightly against a finding of
a likelihood of confusion.
G. Other factors
Finally, Applicant argues that inasmuch as its technology is the subject of
multiple patents, it could not be made, offered, or sold by Opposer. We agree that
valid utility patents provide Applicant the right to exclude others from offering this
technology. However, patent rights are wholly distinct from trademark rights and the
fact that Applicant has patent protection for its technology is irrelevant to our
decision on trademark registrability under Section 2(d) of the Lanham Act. See San
Juan Products, Inc. v. San Juan Pools, Inc., 849 F.2d 468, 7 USPQ2d 1230, 1235 (10th
Cir. 1988). Accordingly, this factor is neutral.
H. Determination
Caterpillar has proven as a matter of law its prior rights for products that are
related to the technology listed in Applicant’s involved applications. We have
carefully considered all of the evidence pertaining to the relevant du Pont factors, as
Opposition No. 91193704
- 49 -
well as all of the parties’ arguments with respect thereto, including any evidence and
arguments not specifically mentioned or discussed in this opinion.
In spite of the cost of the involved goods and services, and the sophistication of the
respective purchasers, in balancing the relevant factors we conclude that inasmuch
as Opposer’s CAT marks are famous (in fact, Applicant has admitted that
Caterpillar’s CAT marks are well-known for products used in the oil and gas
industry), and hence, as a matter of law, the CAT marks are entitled to a broad scope
of protection, given that the similarities of the marks in their entireties outweigh the
dissimilarities, the goods and services are related, travel in the same channels of
trade and are purchased by the same consumers, there is a likelihood of confusion
herein that dictates judgment in Caterpillar’s favor.
VII. Dilution
In view of our determination as to the claim of likelihood of confusion, we do not
reach the claims of dilution by blurring. See Miss Universe L.P. v. Cmty. Mktg. Inc.,
82 USPQ2d 1562, 1572 (TTAB 2007).
VIII. Decision
Decision: Based upon our finding of likelihood of confusion, the opposition is
hereby sustained under Section 2(d) of the Lanham Act, and registration of these two
marks by Applicant is denied.
EXHIBIT 9
Hearing: Mailed:
April 15, 2015 September 30, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE _____
Trademark Trial and Appeal Board
_____
Caterpillar Inc.
v.
Rodney C. Kelly
_____
Opposition No. 91210124
to Serial No. 85710127
_____
Christopher P. Foley and Naresh Kilaru of Finnegan, Henderson, Farabow, Garrett
& Dunner for Caterpillar Inc.
John S. Egbert, Kevin S. Wilson and Michael F. Swartz of Egbert Law Offices PLLC
for Rodney C. Kelly.
_____
Before Quinn, Zervas and Taylor,
Administrative Trademark Judges.
Opinion by Taylor, Administrative Trademark Judge:
Rodney C. Kelly (“Applicant”) seeks registration on the Principal Register of
the standard character mark PETRACAT for “oil and gas well testing; engineering
This Opinion is Not a
Precedent of the TTAB
Opposition No. 91210124
2
services in the field of oil and gas well testing; consulting in the field of engineering”
in International Class 42.1
Registration has been opposed by Caterpillar Inc. (“Opposer”) on the grounds
of priority and likelihood of confusion under Section 2(d) of the Act, 15 U.S.C.
§1052(d) and dilution under Section 43(c) of the Act, 15 U.S.C § 1125(c). Opposer
particularly alleges prior common law use of the CAT mark to identify a wide range
of goods and services in the oil and gas industry, including engines for oil and gas
drilling and production, well servicing, pumps, and compression applications,
generators, engine driven generator sets (gensets), pipelayers, track-type tractors,
hydraulic excavators, motor graders, trucks, GPS (“global positioning system”) and
laser-based guidance systems for automated rock recognition to ensure accurate
drill management, and onsite support, repair and maintenance services. Opposer
further alleges that its CAT-branded engines have drilled the vast majority of the
world’s oil and gas wells for years – both on shore and off shore; that it renders
maintenance and repair and support services for its products in connection with its
CAT name and mark and that it offers consulting services, including technical
consulting, related to a wide range of its products under the CAT name and mark.
Opposer also has pleaded ownership of the following registrations:
Reg. No. Mark Goods and Services
05642722 CAT Dump-wagons, wheel tractor-dump-wagon combinations, and
structural parts for such products in Class 7;
1 Application Serial No. 85710127 was filed on August 22, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Opposition No. 91210124
3
Electric generators and diesel electric generator sets, and parts
furnished with said products in Class 12; and
Diesel and other internal combustion engines adapted for employment
as the source of power for self-propelled vehicles and as stationary or
portable power units for industrial, marine and agricultural uses;
scraping, carrying and dumping units adapted to be employed for
scraping and collecting earth, rock, or like materials and transporting
and dumping said materials; power and manually controlled graders,
scarifiers, scrapers, and rippers adapted to be employed for the
construction and maintenance of roads, for moving and removing of
earth, rock, snow and like materials, for preventing soil erosion and for
other industrial and agricultural uses; tractors for industrial and
agricultural purposes; and parts and service tools furnished with said
products in Class 7
07706393 CAT Motor trucks, dump wagons, wheel tractor-dump wagon combinations,
wheel tractors, and parts therefor in Class 12
07786384 CAT Service, maintenance and repair of trucks, tractors, engines,
earthmoving equipment and control units therefor, generators and
agricultural equipment in Class 37
09844445 CAT Lift truck, and engines, attachments and parts therefor in Class 7
15794376
Maintenance and repair services in the field of internal combustion
engines, vehicles and power equipment; namely trucks, tractors,
engines, earthmoving equipment, material handling equipment, paving
equipment, agricultural equipment, generators, and control units for
the aforementioned in Class 37
2 Issued September 23, 1952; fourth renewal, and claiming February 17, 1949 as the date of
first use anywhere and in commerce of the “dump wagons, wheel tractor-dump-wagon
combinations, and structural parts for such products” identified in Class 7, December 6,
1948 as the date of first use anywhere and in commerce of the remaining Class 7 goods and
December 9, 1948 as the date of first use anywhere and in commerce of the Class 12 goods.
3 Issued June 2, 1964; third renewal, and claiming February 17, 1949 as the date of first
use anywhere and in commerce.
4 Issued October 13, 1964; third renewal; and claiming 1951 as the date of first use
anywhere and in commerce.
5 Issued May 21, 1974; third renewal, and claiming January 30, 1973 as the date of first
use anywhere and in commerce.
6 Issued November 7, 1988; second renewal, and claiming October 20, 1988 as the date of
first use anywhere and in commerce.
Opposition No. 91210124
4
21406067
Machinery for earthmoving, earth conditioning and material handling,
namely, loaders and engines therefor, and parts for vehicle and
internal combustion engines; vehicles for earth and material hauling
and handling, namely, tractors and engines therefor in Class 7
23645928 CAT Business management and consultation services, namely, product
distribution operations management services; logistics consulting
services, namely, providing contract logistics services and consulting in
the areas of inventory management, freight transportation
management, warehouse and product distribution operations
management and designing and managing complete logistics solutions
for others in Class 35;
Warehousing services in Class 39; and
Design of computerized information systems for managing logistics and
product distribution processes for others in Class 42
23645919
Business management and consultation services, namely, product
distribution operations management services; logistics consulting
services, namely, providing contract logistics services and consulting in
the areas of inventory management, freight transportation
management, warehouse and product distribution operations
management and designing and managing complete logistics solutions
for others in Class 35;
Warehousing services in Class 39; and
Design of computerized information systems for managing logistics and
product distribution processes for others in Class 42
242107710
Hydraulic excavators; mini hydraulic excavators; wheeled excavators;
front shovels; backhoe loaders; skid steer loaders; compact wheel
loaders; wheel loaders; integrated toolcarriers; telescopic handlers;
track loaders; wheel tractor-scrapers; track-type tractors; wheel dozers;
motor graders; soil compactors; cold planers; road reclaimers; asphalt
pavers; vibratory compactors; marine engines; industrial engines;
diesel generator sets; gas generator sets; demolition machines and
scrap material handlers for use therewith, namely, blades, buckets,
crushers, grapplers, hammers, hydraulic brooms, mobile shears, pallet
forks; pulverizers, and rakes; log loaders; combines; pipelayers; mining
shovels; waste handling machines; and parts for all the above in Class
7; and
7 Issued March 3, 1998; renewed, and claiming July 13, 1998 as the date of first use
anywhere and October 20, 1988 as the date of first use in commerce.
8 Issued July 4, 2000; renewed, and claiming December 1996 and the date of first use
anywhere and in commerce for all classes of services.
9 Issued July 4, 2000; renewed, and claiming December 1996 and the date of first use
anywhere and in commerce for all classes of services.
10 Issued January 16, 2001, renewed, and claiming July 13, 1988 and the date of first use of
the mark anywhere and October 20, 1988 as the date of first use of the mark in commerce.
Opposition No. 91210124
5
Off-highway trucks; articulated trucks; truck engines; agricultural
tractors; and parts for all the above in Class 12
352581111
Attachments, namely, asphalt cutters, hydraulic brooms, vibratory
compactors, cutting jaws, multiprocessors, tillers, trenchers, all of the
foregoing for use with machinery for earthmoving, earth conditioning
and material handling in Class 7
352581212
Machinery for earthmoving, earth conditioning, and material handling,
namely, backhoe loaders, track excavators, wheeled excavators,
telescoping material handlers, track material handlers, wheeled
material handlers, underground mining loaders in Class 7
354193913
Attachments, namely, augers, backhoes, hydraulic brooms, cold
planers, compactors, vibratory compactors, crushers, grapples,
hammers, pulverizers, pulverizing jaws, rakes, saws, shears, snow
blowers, stump grinders, all of the foregoing for use with machinery for
earthmoving, earth conditioning, and material handling in Class 7
404565214
Non-electric cables and wires of common metals; pipes and tubes of
metal; metal pipe clips, metal pipe nipples, metal pipe collars, metal
pipe extensions; parts for land vehicles, agricultural machinery, and
earthmoving machinery, namely, metal gaskets for machinery and land
vehicles, metal pipe connectors, metal pipe fittings, metal cylinders for
compressed gas or liquids sold empty in Class 6;
11 Issued October 28, 2008; Section 8 and 15 combined affidavit; accepted and
acknowledged, and claiming January 2, 2007 as the date of first use of the mark anywhere
and in commerce. The registration includes the following statements: “The mark consists of
yellow trim around the perimeter of the mark, a yellow triangle at the bottom of the word
‘CAT’, a black background and a red edge at the right-hand side of the mark. The word
‘CAT’ is in white. The color(s) yellow, black, red and white is/are claimed as a feature of the
mark.”
12 Issued October 28, 2008; Section 8 and 15 combined affidavit; accepted and
acknowledged, and claiming January 2, 2007 as the date of first use of the mark anywhere
and in commerce. The registration includes the following statements: “The mark consists of
a yellow triangle at the bottom of the word ‘CAT’, a black background and a red edge at the
right-hand side of the mark. The word ‘CAT’ is in white. The color(s) yellow, black, red and
white is/are claimed as a feature of the mark.”
13 Issued December 2, 2008; Section 8 and 15 combined affidavit; accepted and
acknowledged, and claiming August 20, 2007 as the date of first use of the mark anywhere
and in commerce. The registration includes the following statements: “The mark consists of
yellow trim around the perimeter of the mark, a yellow triangle at the bottom of the word
‘CAT’, a black background and a red edge at the right-hand side of the mark. The word
‘CAT’ is in white. The color(s) yellow, black, red and white is/are claimed as a feature of the
mark.”
14 Issued October 25, 2011. The registration includes the following description: “The mark
consists of a rectangular shape with a diagonal edge, containing the word ‘CAT’ with a
triangle below the letter ‘A.’” Color is not claimed as a feature of the mark.
We note, too, that the registration includes both additional goods in Classes 6, 7, 9, 17 and
20 and additional classes of goods. Only those goods highlighted in Opposer’s brief are set
forth above.
Opposition No. 91210124
6
Motors and engines not for land vehicles; valves being parts of
machines; electric pumps; excavators; bulldozers; earthmoving
machines, namely, loaders; feller bunchers; earthmoving machines,
namely, scrapers; asphalt paving machines; cutting machines;
vibratory soil compactors, soil compactors, vibratory asphalt
compactors, and pneumatic compactors; forestry machines, namely,
skidders; oil, air, and gas filters for motors and engines; belts for
machines; blades as machine parts; steam rollers, being parts of
machines; power-operated lifting and moving equipment, namely, pipe
laying machines; attachments for vehicles, namely, grapple buckets for
moving earth and loose objects; hydraulic jacks; electric welding
machines; pavement profilers; earthmoving machines, namely,
scarifiers, motor graders; combustion engine fuel nozzles; water
separators for use in engines; fuel heaters for engines; power-operated
cultivators and harvesters; agricultural machines, namely, threshers;
road heading machines, tunnel heading machines, cold heading
machines; agricultural machines, namely, reapers; hay binding
machines; agricultural machines, namely, mowing machines, and
tractor-towed harrows; ploughs and tractor-towed hay rakes; agitators
for circulating liquid media; air condensers; alternators for land
vehicles; compressed air pumps; compressors for machines; current
generators; milling cutters; cutting machines, drilling bits being parts
of machines; drilling heads being parts of machines; drilling machines,
gear grinding machines; precision grinding machines; guards being
parts of machines; hammers being parts of machines; pneumatic
hammers; handling apparatus, namely, loading and unloading
machines; hoists; hoppers for mechanical discharging; power jacks;
lawnmowers; lift belts; lifting installation for the transport of goods;
powered loading ramps in the form of conveyors; lubricating pumps;
metal working machines; pneumatic transporters; pulleys being parts
of machines; electric pumps; rammers; reduction gears other than for
land vehicles; mechanical power shovels; shaft couplings for machines,
bearings for transmission shafts being parts of machines; spraying
machines; superchargers for motors and engines; threading machines;
threshing machines; transmission chains and shafts, other than for
land vehicles; transmissions for machines; turbines other than for land
vehicles; turbocompressors; vehicle washing installations;
vulcanization machines; waste disposers being parts of machines;
watering machines for agricultural purposes; parts and fittings for all
the aforesaid goods sold as a unit with the goods; mechanical engine
parts for land vehicles, agricultural machinery, and earthmoving
machinery, namely, starting motors, alternators, pistons, cylinder
heads, cooling systems parts, turbochargers, lubricating systems parts,
air compressors, and blocks; crank shafts for engines, engine
camshafts, engine bearings; mufflers for engines and motors; engine
exhaust caps; exhaust silencers for engines; radiators and radiator caps
for vehicles; exhausts for engines; hand-held gas welding apparatus,
namely, heat welding guns; electric cutting torches in Class 7;
Computer hardware and software for sensing and recording operational
data to monitor the performance and maintenance needs of vehicles,
equipment, and machinery used for earthmoving, earth conditioning,
Opposition No. 91210124
7
material handling, construction, mining, paving, agriculture, and
forestry; welding apparatus, namely, welding respirators, welding
helmets, welding goggles, welding jackets, welding gloves, welding
coats, and welding blankets; electronic and optical communications
instruments and components, namely, digital transmitters, electronic
control systems for machines, global positioning systems, laser object
detectors for use on vehicles, navigation apparatus for vehicles in the
nature of on-board computers, radios for vehicles, voltage regulators,
voltage stabilizers, and voltmeters; machine parts, namely, control
mechanisms for machines, engines, or motors; fuel/air ratio controls for
engines; speed governors for machines, engines, and motors. in Class 9;
Land vehicles; tractors and tractor engines; haulage trucks and trailer
wagons; vehicle chassis; tires for vehicle wheels; vehicle wheels; vehicle
parts, namely, tracks; trucks; dump trucks; land vehicles incorporating
loading, compacting, pipe laying, and grading apparatus; tire valves for
vehicle tires; air pumps for vehicles; hydraulic apparatus for use in
moving work tools attached to vehicles and not for engines or motors,
namely, hydraulic drives, hydraulic gears, hydraulic pumps, and
hydraulic shock absorbers; parts and fittings for land vehicles, namely,
engines, connecting rods for vehicles other than parts of motors and
engines, transmissions for land vehicles, and structural, repair, and
replacement parts therefor in Class 12;
Non-metal seals for use on pipe joints and flanges; coupling and joints
not of metal; rings of rubber or of plastic for use as pipe connection
seals; sealing plugs made primarily of rubber; parts and fittings for all
the aforesaid goods sold as a unit with the goods; pipe sealant for use in
sealing pipe joints and fittings in Class 17; and
Valves of plastic, other than machine parts in Class 20.
Applicant, in its answer, has denied the salient allegations in the notice of
opposition. Applicant admitted that he is affiliated with PetraCat Energy Services,
LLC.15
I. Preliminary Matters
Evidentiary Objections – Adequacy of Pleadings vis-à-vis Scope of Arguments and Evidence
15 Applicant’s first affirmative defense is hereby stricken inasmuch as the notice of
opposition clearly states claims upon which relief can be granted. As to the remaining
“affirmative defenses,” they are more in the nature of amplifications of Applicant’s denials
and are treated as such.
Opposition No. 91210124
8
Applicant has made several “evidentiary objections” stemming from his
contention that Opposer failed to properly plead and prove use of the CAT mark on
goods and services not recited in the pleaded registrations. The objections are as
follows:
In numerous instances throughout its Trial Brief, the
Opposer has improperly interjected references to Opposer
conducting “well servicing services” and other services
that were not plead in the Opposer’s Notice of
Opposition.16
…
The Opposer did not plead any common laws uses of the
term “CAT” for use with any other services [i.e., not
recited in Opposer’s pleaded registration].17
…
[E]ven if Mr. Stembridge had testified that Caterpillar
offers “well servicing,” that testimony would be improper,
because those services were never plead in the Opposer’s
Notice of Opposition.18
Pursuant to Trademark 2.104 (a) “[t]he opposition must set forth a short and
plain statement showing why the opposer believes he, she or it would be damaged
by the registration of the opposed mark and state the grounds for opposition.” The
elements of each claim should be stated concisely and directly, and include enough
detail to give the defendant fair notice. See Fed. R. Civ. P. 8(e)(1); see also Harsco
Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570, 1571 (since function of pleadings
is to give fair notice of claim, a party is allowed reasonable latitude in its statement
16 15 TTABVUE 11.
17 15 TTABVUE 13.
18 15 TTABVUE 14.
Opposition No. 91210124
9
of its claims). A review of the notice of opposition shows that besides specifically
pleading use of the CAT mark in connection with “well servicing,” Opposer
additionally pleaded common-law use of the CAT mark for a variety of goods and
services in the oil and gas industry. We note particularly the following allegations:
3. Opposer also uses the CAT mark to identify a wide
range of goods and services for use in the oil and gas
industry, including engines for oil and gas drilling and
production, well servicing, pumps, and compression
applications, generators, engine driven generator sets
(gensets), pipelayers, track-type tractors, hydraulic
excavators, motor graders, trucks, GPS (“global
positioning system”) and laser based guidance systems for
automated rock recognition to ensure accurate drill
management, and onsite support, repair and
maintenance.19
4. Opposer uses the CAT mark in connection with
products and services in connection with oil and gas
mining applications. For example, at the Barnett Shale
natural gas site near Fort Worth, Texas, Opposer’s CAT
engines are used on drilling rigs, and more than 500miles
of pipeline have been laid to transport gas from the gas
field using CAT pipelayers and other CAT equipment.20
5. In addition, CAT products and services are used
particularly in oil and gas applications, including engines
for powering drilling and production, well servicing,
pumps, and compression applications, generators,
pipelayers, track-type tractors, hydraulic excavators,
motor graders, trucks, and gensets, and onsite support,
repair and maintenance services. Opposer has also
participated in oil and gas conferences and events.21
19 1 TTABVUE 14.
20 Id.
21 Id at 14-15.
Opposition No. 91210124
10
6. Opposer’s CAT-branded engines have drilled the
vast majority of the world’s oil and gas wells for years -
both on shore and offshore.22
7. Opposer is engaged in the advertising and
rendering of maintenance, repair, and support services for
its products in connection with its CAT name and mark.
Opposer also offers consulting services, including
technical consulting, related to a wide range of its
products and services under the CAT name and mark.23
22. Opposer, itself or through its predecessors-in-
interest, related companies, or licensees, has continuously
and extensively used the CAT name and mark in
commerce in connection with the sale and advertising of
the goods and services covered by the registrations listed
above, as well as with a wide variety of other goods and
services, including but not limited to, those products and
services listed in Paragraphs 2 through 19 above,
(cumulatively, “Opposer’s Products and Services”), still
well before the filing date of the application for
Applicant’s PetraCat Mark, and/or any dates of first use
that may be established by Applicant for its PetraCat
Mark.24
By these allegations, Opposer has adequately pleaded, and Applicant was given fair
notice of, Opposer’s intent to rely on its common law use of the CAT name and mark
on and in connection with well-servicing and the remaining above-enumerated
goods and services in the oil and gas industry. Accordingly, Opposer’s objections are
overruled and we will consider the arguments and evidence presented by Opposer
on its common law claims in our decision. As regards Applicant’s contention that
Opposer failed to prove its common law use of the CAT mark, we will discuss our
findings thereon, in detail, infra.
22 Id. at 15.
23 Id.
24 Id. at 29.
Opposition No. 91210124
11
Sanctions
As part of its response in opposition to Applicant’s objections, Opposer, in its
reply brief at footnote 1, intimates that given the “blatant nature of Applicant’s
misrepresentations to the Board” as to Opposer’s asserted failure to plead use of the
CAT mark in connection with “well servicing,” the Board has the discretion to
consider whether sanctions are warranted”25 under Fed. R. Civ. P. 11, or its
inherent authority to manage cases on its docket. The power to enter sanctions,
whether under Rule 11 or under the Board’s inherent authority, must be exercised
with restraint. Carrini Inc. v. Carini SRL, 57 USPQ2d 1067, 1071-72 at fn. 3 citing
to Chambers v Nasco, Inc. 501 U.S. 32, 44 (1991). Here, we do not find Applicant’s
failure to fully appreciate the breadth of the common law claims set forth in the
notice of opposition, and his zealous advocacy to persuade the Board to decline to
consider argument and evidence regarding what he perceives, albeit wrongly, as an
unpleaded claim, warrant entry of Rule 11 or other sanctions.
II. The Record26
By operation of Trademark Rule 2.122, 37 CFR §2.122, the record includes
the pleadings and the file of the subject application. The record also includes the
following testimony and evidence:
Opposer’s Evidence
25 16 TTABVUE 7.
26 Citations to the record throughout the decision include references to TTABVUE. The
number preceding “TTABVUE” corresponds to the docket entry number; the number(s)
following “TTABVUE” refer to the page number(s) of that particular docket entry. Portions
of the record have been designated “confidential” and have been treated as such. All
citations to the record refer to the redacted, publicly available versions of each submission.
Opposition No. 91210124
12
1. The testimony deposition, with exhibit Nos. 1-19, of Roger
Edward Stembridge (“Stembridge test.”), a marketing professional
with a specialty in product and parts branding.
2. Opposer’s first notice of reliance on Applicant’s responses to
Opposer’s first set of interrogatories, Nos. 1, 7, 8 and 11.
3. Opposer’s second notice of reliance on various Internet
materials, namely:
(i) web pages from Opposer’s website showing use of the
CAT mark in connection with services in the oil and gas
industry. (Exs. 1 and 3);
(ii) a research report from Morgan Stanley (Ex. 2);27
and
(iii) an article from HPP INSIGHT concerning Opposer’s
joint venture with Ariel Corporation (Ex. 4).
4. Opposer’s rebuttal notice of reliance on:
(i) definitions from online dictionary sites showing the
meaning of “petro-,” “petr-,” and “petroleum” (Ex. 1);
(ii) web pages showing that the term PETRA- is commonly
used by companies in the oil & gas industry (Ex. 2);
(iii) web pages from Applicant’s website at
www.petracat.com showing his involvement in the oil and
gas industry (Ex. 3); and
(iv) web pages showing Opposer’s use of its CAT mark in
the oil and gas industry and/or Opposer’s involvement in
the oil and gas industry (Ex. 4).
Applicant’s Evidence
1. Applicant’s first notice of reliance on third-party registrations
for marks that include the term “CAT” (“in its various forms and
permutations”) (Ex. A).
2. Applicant’s second notice of reliance on web pages from
Applicant’s website (Ex. B).
3. Applicant’s third notice of reliance on:
27 Although this type of information is not generally acceptable via notice of reliance, we
note it was also made of record via the Stembridge deposition.
Opposition No. 91210124
13
i. an entry from Wiktionary for “petra” (Ex. C);
ii. an entry from Wikipedia for “petra” (Ex. D); and
iii. an entry from biblehub.com for “petra” (Ex. E).
III. The Parties
Opposer
Opposer is a manufacturer of construction equipment, including earthmoving
equipment, engines, and generator sets (gen sets) for use in, among others, the oil
and gas industry. Opposer’s CAT marks have been used continuously on
construction equipment, including large machinery, since the late 1940’s. Opposer
started its petroleum division in the late 1960’s offering, under its CAT mark,
engines, transmissions, generators and gen sets used to power oil and gas well
operations. In addition to CAT-branded earthmoving equipment and other heavy
equipment, such as track type tractors, excavators, motor graders, pipelayers and
trucks, all of which would be used to prepare a well site, Opposer has a line of CAT-
branded well fracking pumps and surface drill rigs and engines used for onshore
drilling of bore holes and in fracking operations. Opposer also offers extensive CAT-
branded onsite support, repair, and maintenance services tied to its products that
are used in connection with well servicing.28
28 Stembridge test., 12 TTABVUE at 14- 29. See also, ex. 5, (a brochure titled “Cat® Power
Solutions” with a copyright date of 2009); ex. 9 (web pages from Opposer’s website at
www.cat.com/oil-and-gas concerning Opposer’s oil and gas operations); ex. 11 (a brochure
titled “Transmissions for the Petroleum Industry” with a copyright date of 2011); ex. 12 (a
brochure titled “Power Solutions Cat® Generator Sets for Petroleum Applications” with a
copyright date of 2008); ex. 13 (a brochure titled “3500C Cat® Engines for Petroleum
Applications” with a copyright date of 2010); and ex. 14 (a brochure titled “Petroleum
Custom Solutions Engineered for All Your Petroleum Needs” with a copyright date of 2008).
We note in particular that the highlighted exhibits to the Stembridge testimony, as well as
Opposition No. 91210124
14
Applicant
According to Applicant’s website, “[i]n the 21st century, the global oilfield is a
small place.”29 Applicant “is a global company providing a method of data collection
and analysis that is fast, accurate, cost effective, and risk free.30
IV. Discussion
Standing
Opposer has demonstrated through the USPTO database printouts made of
record with its notice of opposition that it is the owner of its pleaded registrations
and that those registrations are valid and subsisting. Because Opposer’s
registrations are properly of record, Opposer has established its standing. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Lipton Industries v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
Priority
Because Opposer has properly made of record its pleaded registrations,
priority of use is not an issue in the opposition with respect to its CAT mark as to
the goods and services listed in those registrations. See King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). However, with
respect to its claim of common law use of the CAT mark in connection with various
Exhibit 1 to Opposer’s Notice of Reliance No. 2 (7 TTABVUE 6-17), discuss, in detail,
Opposer’s well servicing products and services. We further note that Applicant offered no
testimony or other evidence concerning any use of its mark prior to the filing date of its
involved application.
29 9 TTABVUE 8.
30 Id.
Opposition No. 91210124
15
goods and services in the oil and gas industry, the mark must be distinctive,
inherently or otherwise, and Opposer must show priority of use. See Otto Roth &
Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Applicant
has not raised an issue as to the distinctiveness of Opposer’s common law CAT
mark or otherwise put Opposer on notice of this defense, and we know of no reason
why the mark would not be distinctive, we therefore find that the mark is
inherently distinctive. See Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629,
1634 (TTAB 2007) (absent argument or evidence from applicant, opposer’s mark is
deemed distinctive). We further find that through the deposition of Roger
Stembridge, Opposer has demonstrated that, prior to Applicant’s filing date,31
Opposer used its CAT mark in connection with various goods and services in the oil
and gas industry, including engines for oil and gas drilling and production, pumps,
and compressors, generators, engine driven generator sets (gensets), pipelayers,
well fracking pumps, surface drill rigs and engines which are used for off shore
drilling and onshore drilling and fracking, and well servicing. See discussion, infra.
We turn next to the issue of likelihood of confusion.
Likelihood of Confusion
Our likelihood of confusion determination under Section 2(d) is based on an
analysis of all of the probative evidence of record bearing on a likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
31 An applicant may rely on the filing date of its application to establish constructive use.
Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (“applicant
may rely without further proof upon the filing date of its application as a ‘constructive use’
date for purposes of priority”).
Opposition No. 91210124
16
(CCPA 1973) (“du Pont”). See also, In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “Not all of the du Pont factors are
relevant to every case, and only factors of significance to the particular mark need
be considered.” In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259
(Fed. Cir. 2010).
The parties presented evidence and argument on the du Pont factors of fame,
the relationship between the goods and services and their respective channels of
trade and classes of consumers, the conditions under which and buyers to whom
sales are made, the similarities and dissimilarities of the marks, the number and
nature of similar marks in use on similar goods or services, and whether there has
been actual confusion.
a. Fame
We begin our likelihood of confusion analysis with the fifth du Pont factor,
which requires us to consider evidence of the fame of Opposer’s mark and to give
great weight to such evidence if it exists. See Bose Corp. v. QSC Audio Products
Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
Fame of an opposer’s mark or marks, if it exists, plays a
“dominant role in the process of balancing the DuPont
factors,” Recot, 214 F.3d at 1327, 54 USPQ2d at 1456, and
“[f]amous marks thus enjoy a wide latitude of legal
protection.” Id. This is true as famous marks are more
likely to be remembered and associated in the public mind
than a weaker mark, and are thus more attractive as
targets for would-be copyists. Id. Indeed, “[a] strong mark
Opposition No. 91210124
17
… casts a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d at
1456. A famous mark is one “with extensive public
recognition and renown.” Id.
Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305. Any doubts as to the
registrability of an Applicant’s mark must be resolved in favor of the prior
registrant of a famous mark. See Specialty Brands, Inc. v. Coffee Bean Distribs.,
Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984) (“When balancing the
interest in a famous, established mark against the interests of a newcomer, we are
compelled to resolve doubts against the newcomer.”).
In assessing fame, we consider all relevant evidence, including sales under
the mark, advertising, and length of use of the mark. du Pont, 177 USPQ at 567.
However, some context in which to place raw statistics may be necessary. Bose
Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1309.
We find that the record clearly demonstrates the fame of Opposer’s CAT
marks, including in the oil and gas industry.32 Opposer owns one registration for
the mark CAT that issued in 1957, claiming use since the 1940’s in connection with
heavy machinery. In addition, the record shows that the CAT mark has been in use
in commerce for more than 60 years and, since the 1960’s when Opposer started its
oil and gas division, Opposer has offered a wide variety of CAT-branded oil and gas
products and services, including CAT-branded engines and transmissions, which
have been used to drill the majority of the world’s oil and gas wells. Hundreds of
32 We make this finding based on the record in this case, and not on the federal court and
TTAB decisions previously finding Opposer’s CAT mark to be famous. Nonetheless, we
point out that the Board recently found, on a similar record, the CAT mark to be famous in
the oil and gas industry.
Opposition No. 91210124
18
CAT machines and engines are currently being used for the Barnett Shale natural
gas site outside Fort Worth, Texas, which is expected to become the largest
producing natural gas field in the United States.33
Opposer also claims fame through the tens of thousands of its black-and-
yellow vehicles – all prominently displaying the CAT mark – present across the
United States. Opposer has also promoted its CAT mark via an extensive licensing
program for over a decade that has generated revenues in the “many” millions of
dollars, with its CAT-branded products and services encompassing a myriad of
collateral products and services, ranging from clothing, footwear, and headwear to
financial services.34
Over the years, Opposer has sold hundreds of billions of dollars’ worth of
products and services under the CAT mark. Over the last five years alone, the sale
of CAT-branded products and services has generated over $200 billion in revenues
globally, and revenues in the tens of billions of dollars in the United States.35
For a five-year period preceding the submission of its testimony, and prior to
the filing date of the involved application, Opposer spent hundreds of millions of
dollars in advertising and promoting its CAT-branded products – many millions of
which were spent advertising and promoting products and services in the oil and
gas industry.36 Opposer advertises and promotes its CAT-branded products and
33 Stembridge test., 11 TTABVUE 14-15, 25, 29, 31, 40 and ex. 6.
34 Id. at 16, 19-21.
35 Id. at 18.
36 Id. at 19; exs. 2, 5, 7, 8, 10-14 and 17)
Opposition No. 91210124
19
services via the Internet, print publication, including the New York Times and The
Wall Street Journal, and industry trade shows. With respect to the Internet, the
CAT mark and name is prominently displayed at the top of each page of Opposer’s
website at www.cat.com (including the oil and gas section of the website at
www.catoilandgas.com), and that website is visited by many millions of users each
year.37 Opposer uses the CAT mark in connection with its NASCAR program, where
the CAT mark is prominently displayed on the hood of the car, as well as in
connection with its sponsorship of a Formula 1 racing car.38 Opposer also has
promoted its CAT brand through product placement in feature films. For example,
the opening sequence of the James Bond film Skyfall features various equipment
prominently displaying the CAT mark.39
In addition to advertising undertaken by Opposer to support its CAT marks,
Opposer points to substantial unsolicited media coverage featuring Opposer’s CAT
mark on national television, on radio programs, and in books, newspapers, and
magazines, including nationally circulated publications such as The New York Time
and The Wall Street Journal.40 Interbrand has ranked Opposer’s brand (of which
Opposer considers the CAT marks as the flagship mark most known to the general
37 Id.at 22-23, 33, ex. 9.
38 Id. at 24.
39 Id. at 23-24.
40 Id. at 19.
Opposition No. 91210124
20
public) among the top 75 most valuable global, ranking it No. 58 in 2013 with a
brand valuation of $7.125 billion..41
Major investment banks have recognized the high market share that the CAT
brand enjoys in the well-fracking industry. For example, a 2011 research report by
Morgan Stanley made the following observation:
[T]here are two major trends which accelerate the
structural opportunity for CAT: 1) the gradual shift of
production from easier, but aging, onshore fields to more
power intensive, challenging offshore production; and 2)
the rise of shale gas, shale oil, and hydraulic fracturing
(fracking), with huge power requirements. … Fracking
shale for gas and oil are even better markets, where CAT
has high share.42
Lastly, Opposer’s aggressive trademark enforcement activities reinforce the
strength of its CAT marks.43 See J.Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition, § 11.91 (4th ed. 2015) (“… active program of prosecution of
infringers … enhances the distinctiveness and strength of a mark”).
In sum, as discussed above, Opposer’s CAT mark has been used in commerce
for over 60 years – more than 40 of those in the oil and gas industry; Opposer has
spent tens of millions of dollars promoting the CAT mark through various media;
the CAT mark has appeared in feature films and on national television, as well as
in national magazines and newspapers; Opposer has enjoyed revenues of tens of
billions of dollars in the last five years alone; and the CAT mark has received
substantial unsolicited media attention throughout the United States. Under those
41 Id. at 19-20, ex. 3
42 Id. at 27, ex. 4.
43 Id. at 55-57.
Opposition No. 91210124
21
circumstances, we find that Opposer’s CAT marks are famous not only with respect
to heavy equipment, but also in the oil and gas industry. As a result, Opposer’s CAT
marks are entitled to a broad scope of protection.
We find Applicant’s argument that Opposer failed to meet its burden to
establish fame unavailing. Of particular note are Applicant’s contentions that
Opposer did not prove industry-specific fame and that the evidence does not
“segregate” the impact of the mark “CAT” from that of the trademark and trade
name, “CATERPILLAR.” With regard to proving industry-specific fame, as noted
above, the record establishes that CAT-branded engines and transmissions have
been used to drill the majority of the world’s oil and gas wells44, and that hundreds
of CAT machines and engines are currently in use at the Barnett Shale natural gas
site outside Fort Worth, Texas, a site that is expected to become the largest natural
gas field in the United States.45 Also, major investment banks have recognized that
“Cat has high share” in the well-fracking industry.”46
We make clear that the evidence noted above, of which we find sufficient to
establish fame, primarily pertains to Opposer’s use of, and the public’s awareness
of, Opposer’s “CAT” mark, not its “CATERPILLAR” trade name and mark. In
addition, while we acknowledge that some context for raw statistics may at times be
necessary, given the vast sums, we find Opposer’s testimony regarding its revenue
44 11 TTABVUE 28, 43 and ex. 15.
45 Id. at ex. 6.
46 Id. at ex. 3.
Opposition No. 91210124
22
and advertising expenditures in the United Stated for its products and services in
the oil and gas industry, presents a compelling case of fame.
b. Third-party Registrations
Next we consider the sixth du Pont factor, namely the number and nature of
similar marks in use on similar goods. Applicant argues that Opposer’s CAT mark
is a “weak” mark that is entitled to a limited scope of protection, and relies on
various third-party registrations47 for marks that include the word CAT “in its
various forms and permutations”48 to support this position. Applicant claims that
“[a]s a result of the preponderance of third party [sic] marks featuring the term
‘CAT’ [for goods and services in the oil and gas industry], consumers have been
continually exposed to trademark uses of the term ‘CAT’”; that an overwhelming
number of third party [sic] trademarks incorporat[ing] the term ‘CAT’ have
peacefully coexisted with Opposer’s “CAT” Marks for many years” and that “small
differences between Applicant’s ‘PETRACAT’ mark and Opposer’s ‘CAT’ Marks are
sufficient to prevent confusion.”49 Applicant highlighted the registrations excerpted
below.50
47 Applicant’s submission includes several third-party applications, i.e., application Serial
Nos. 85470685, 85923540, 79130420, 85791265, 77618417, 77617945 and 86019947. These
third-party applications have no probative effect as they are evidence only of the fact that
they have been filed. In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 (TTAB 2011) citing
Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003).
Further, Serial Nos. 85470685, 77618417, 77617945 have abandoned and, therefore, are of
no evidentiary value.
48 Applicant’s First Notice of Reliance, 8 TTABVUE.
49 Applicant’s br. pp. 9-13, 9 TTABVUE 16-22.
50 As regards the remaining registrations (i.e., Registration No. 2977285 for the mark TOP
CAT for “engineering consulting services in the field of inspection, repair and maintenance
Opposition No. 91210124
23
Trademark Reg. No. Goods and Services
POLYCAT 1790905 …oil field chemicals, especially additives for
fluids for the drilling, completion and workover
of oil wells
C.A.T.S. 2778228 Engineering and consultation services in the
field of oil and gas onshore and offshore
projects…
WELLCAT(stylized)
WELLCAT and large cat paw
design
1655778
1661095
Drilling tool rental services; oil well control
services; namely furnishing services for others
consisting of analyzing problems of uncontrolled
flow of oil, gas, or water from oil well and
providing services to bring such flow under
control
WINCATT 3988930 …computer hardware and software, that
interacts with external hardware to provide
monitoring and control of tubular connections for
use in oil and gas well drilling
CAT-CHECK 4095351 …collecting, analyzing and reporting catalyst
performance and catalyst activity to users of
catalysts for processing oil products
BLACK CAT 1055919 … chain for oil field use
BLACK CAT and design 4069659 Ceramic proppant used in oil and gas well
fracturing operations to stimulate production
ALPHAKAT 3737104 …oil refinery machines, namely, catalytic
converters and industrial chemical reactors.
WILDCAT 3549215 Automated drilling systems for use in oil and gas
exploration, namely, a multi-parameter drilling
controller
KRISCAT 2353313 Chemicals for use as catalyst in the … oil
refining, and petrochemical processing industries
WESCAT 2316313 Starch for use in the manufacture of paper and
textiles and for use in the oil and gas industry
CAT 1806637 nonionic polymer additive for water-based
drilling fluids used in drilling oil and gas wells
of chemical refining plants”; Registration No. 4347133 for the mark Kwik-Cat for “business
brokerage”; Registration No. 4493518 for the mark CATGUARD for calibration, namely,
measuring of [sic] variations of fluids associated with the drilling of boreholes …”;
Registration No. 1380941 for the mark CAT-AN for “polymeric organic compounds … used
in enhanced oil recovery operations”; Registration No. 4485541 for the mark TOPKAT for
various filtering materials and filters; Registration No. 4014509 for the mark NCAT for
goods and services relating to greenhouse gas emissions; Registration No. 3592742 for the
mark WILDCAT for “gas powered welding machines”; Registration No. 2422498 for the
mark TWINCAT for goods and services relating to natural gas generator set and gas
turbines; and Registration No. 4519720 for the mark KATflow for goods and services
relating to gas testing and gas flow), none are for goods and services related to the oil and
gas industry and, as such, have no probative value. In addition, the mark HOT CAT for
catalytic heaters for, inter alia, gas pipelines, arguably conveys a somewhat different
commercial impression from that conveyed by Opposer’s CAT marks.
Opposition No. 91210124
24
CAT-I 1721030 Cationic polymer containing water-based drilling
fluids used in drilling oil and gas wells
C.A.T.S. 4049815 Computer software for project management and
data gathering services in the oil and gas
industry
The above-listed third-party registrations, however, do not persuade us that
“CAT”, in and of itself, is lacking in trademark significance as applied to earth
moving and other heavy machinery for use in the oil and gas industry, including,
engines for oil and gas drilling and production, pumps, and compression
applications, generators, engine driven generator sets (gensets), pipelayers, well
fracking pumps, and surface drill rigs, as well as well servicing. We find so because
the goods identified in Registration Nos. 1806637 and 1661095, while having
applications in the oil and gas industry, are for polymers, and the remaining
registrations cover marks (e.g., POLYCAT, C.A.T.S., WINCATT, CAT-CHECK,
BLACK CAT, WILDCAT, KRISCAT, WESCAT, ALPHAKAT) that are either
unitary terms which have known and recognized meanings or otherwise create
commercial impressions different than the one conveyed by “CAT”, per se.
Only Registration Nos. 1655778 and 1661095 for the marks WELLCAT,
stylized and with a design, for drilling equipment and oil well control services may
be relevant. However, apart from a failure to evidence use of the marks, the
existence of two commonly-owned registrations does not persuade us that
consumers are accustomed to seeing marks containing the word “CAT” in the heavy
machinery and oil and gas industries such that they have learned to distinguish
among them based on minor differences. Cf. Juice Generation, Inc. v. GS Enters.
Opposition No. 91210124
25
LLC, — F.3d, —, 115 USPQ2d 1671 (Fed. Cir. 2015) (finding third-party
registrations relevant to prove that some segment of the composite marks which
both contesting parties use has normally understood and well-recognized
descriptive or suggestive meaning); Jack Wolfskin Ausrustung Fur Draussen GmbH
& Co. KGAA v. New Millennium Sports, S.L.U, 797 F.3d 1363, — USPQ2d — (Fed.
Cir. 2015).
Finally, it is well established that third-party registrations do not justify the
registration of a mark that is likely to cause confusion with a previously registered
mark. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). As
the Board stated in In re Chica Inc., 84 USPQ2d 1845, 1849 (TTAB 2007):
[A]n applicant does not overcome a likelihood of confusion
refusal by pointing to other registrations and arguing that
they are as similar to the cited registration as applicant's
mark. While third-party registrations may be used to
demonstrate that a portion of a mark is suggestive or
descriptive, they “cannot justify the registration of
another confusingly similar mark.” In re J.M. Originals
Inc., 6 USPQ2d 1393, 1394 (TTAB 1987), quoting Plus
Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544
(TTAB 1983).
Moreover, the Board is not bound by the prior decisions of examining attorneys in
allowing marks for registration. It is well established that each case must be
decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some
characteristics similar to [applicant’s] application, the PTO’s allowance of such prior
registrations does not bind the Board or this court.”); In re Merrill Lynch, Pierce,
Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
Opposition No. 91210124
26
c. The Similarities/Dissimilarities of the Marks
We now consider first du Pont likelihood of confusion factor which involves an
analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of
the marks, but instead ‘whether the marks are sufficiently similar in terms of their
commercial impression’ such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting
Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d, 1901, 1905
(TTAB 2007)).
Our analysis cannot be predicated on dissection of the involved marks. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014). Rather, we are obliged to consider the marks in their
entireties. Id. See also, Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). Nonetheless, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties. Stone Lion, 110 USPQ2d at 1161.
Opposition No. 91210124
27
With these principles in mind, we compare Opposer’s CAT mark to
Applicant’s mark PETRACAT. Opposer argues that because both parties’ marks
contain the identical CAT term, which is the dominant element in Applicant’s
marks given the suggestive nature of “Petra,” and in view of the broad scope of
protection to be accorded Opposer’s famous CAT mark, the Board should find its
mark and Applicant’s PETRACAT mark similar in overall commercial impression.
Applicant, on the other hand, contends that its PETRACAT mark imparts a
markedly different connotation and commercial impression than that conveyed by
Opposer’s CAT mark. This is so, Applicant argues, because the arbitrary term
PETRA dominates its mark, especially since it is the first portion of the mark; that
it is commonly understood that the term PETRA is derived from ancient Greek and
means “rock” or “stone”; that the connotation associated with the term PETRA is
that of a strong, enduring rock; and that the connotation conveyed by its mark is of
a “strong-as-a-rock” cat, whereas the connotation of Opposer’s mark is a shortening
of the term CATERPILLAR, Opposer’s house mark.
We disagree with Applicant and find that the parties’ marks, when viewed as
a whole, are substantially similar in overall commercial impression. First, the
obvious similarity in appearance and sound between the parties’ marks stems from
the fact that Applicant’s proposed mark, PETRACAT, incorporates Opposer’s
previously used, registered and famous CAT mark in its entirety.
In similar cases, a likelihood of confusion has frequently been found. “When
one incorporates the entire arbitrary mark of another into a composite mark, the
Opposition No. 91210124
28
inclusion of a significant, non-suggestive element will not necessarily preclude a
likelihood of confusion. [Internal citations omitted]. An inclusion of a merely
suggestive or descriptive element, of course, is of much less significance in avoiding
a likelihood of confusion.” The Wella Corp. v. California Concept Corp., 558 F.2d
1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer
design is similar to the mark CONCEPT). See also Coca-Cola Bottling Co. v.
Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL
LANCER and Bengal Lancer soldier design is similar to the mark BENGAL); In re
Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (E-CELL is
similar to the mark E).
In addition, we find PETRA suggestive of Applicant’s services and hence a
weaker component that the term CAT. The suggestive nature of the term PETRA is
supported by the fact that it is commonly used as a trade name by companies in the
oil and gas industry or to identify products and services in the oil and gas industry,
including the following:51
• “Petra Energy” being used as a business name for a
company that “trades various refined petroleum products
globally”
• “Petra” being used as the name of a software application
that helps geologists and engineers locate and analyze oil
and gas reservoirs
• “Petra Global Energy Group” being used as the name of a
business whose mission “is to grow a profitable upstream
oil and gas company with long-term benefits”
51
Opposer’s rebuttal notice of reliance, ex. B, 12 TTABVUE 13-27.
Opposition No. 91210124
29
• “Petra Oil Company” being used as a business name for a
company that offers various petroleum products to the
automotive industry
• “Petra-Tech Environmental” being used as the name of an
environmental consulting firm which commonly serves
clients in the gasoline and petroleum industry and whose
services include “petroleum underground storage tank
management, assessment, and removal”
• “Petra Nova” being used as the name of a subsidiary
company which uses captured carbon dioxide at coal-fueled
generation plants “to make the project economically viable
through Enhanced Oil Recovery on mature oil fields”
• “Petra Petroleum Inc.” being used as the name of a
company that engages in “high impact exploration ventures
in the emerging and under-explored oil and gas basins of
Europe, Africa and the Middle East”
• “Petra Oil” being used as the name of a company that
“specializes in importing a wide range of petroleum
products and exporting crude oil and low pour fuel oil to
different refineries and storage tanks around the world.”
Indeed, Applicant admitted in an interrogatory response that he “sought a mark
that was suggestive of the oil field….”52 See e.g., Interstate Brands Corp. v. Celestial
Seasonings, Inc. 576 F.2d 926, 929 (CCPA 1978) (finding “a party’s earlier contrary
opinion may be considered relevant and competent”).
In view of the lesser significance of PETRA, it is the term CAT that
dominates Applicant’s proposed mark.
To state the obvious, in view of our findings above, Applicant’s contention
that PETRA is the dominant portion of its mark is unavailing. We so find despite
PETRA’s position as the first portion of mark. We also find unavailing Applicant’s
reliance on multiple unrelated definitions of PETRA, e.g., Jesus Christ’s disciple,
52 Opposer’s notice of reliance no. 1, 6 TTABVUE 6.
Opposition No. 91210124
30
Peter, a Christian rock band, a Marvel Comics character, or a West German
merchant ship,53 as it is axiomatic that we must determine the connotation and
commercial impression of Applicant’s mark in relation to the services set forth in
Applicant’s application. See In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB
1987); In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). Moreover, even if we
accept Applicant’s assertion that the connotation of PETRA is rock or stone, PETRA
remains suggestive in relation to Applicant’s services because it may describe
elements present at fracking drilling sites which necessitate the use of Applicant’s
well-testing services.
For the reasons discussed, we find that when viewed as a whole, the marks
are not only similar in appearance due to the shared phrase CAT but, in light
thereof, as well as the lesser significance accorded to the suggestive term PETRA,
they are similar in connotation and convey a similar overall commercial impression.
Thus, the factor of the similarity of the marks favors a finding of likelihood of
confusion.54
d. Relatedness of the Goods and Services/Channels of Trade and Classes of
Consumers
We turn then to a consideration of the parties’ respective goods and services.
In this regard, the registrability of an applicant’s mark generally must be
determined on the basis of the goods and services as identified in the application
and in the pleaded registrations. Octocom Systems Inc. v. Houston Computers
53 Applicant’s third notice of reliance, 10 TTABVUE.
54 We do not find credible Opposer’s arguments and evidence relating to its assertion that
“PETR-”means petroleum, as the first portion of Applicant’s mark is PETRA.
Opposition No. 91210124
31
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787-88 (Fed. Cir. 1990); Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002). Here, Opposer may also rely on its common law rights acquired through use
of its mark on the additional goods and services for which Opposer has established
prior rights. We therefore compare Applicant’s “oil and gas well testing; engineering
services in the field of oil and gas well testing; consulting in the field of engineering”
with Opposer’s equipment and services used in connection with well fracking,
namely, well fracking pumps; engines and transmissions used to power the drilling
of the well bore and the entire fracking operation; well servicing; machinery and
equipment used to prepare, dig, and reclaim gas-well sites.55
The respective goods and services do not have to be identical or even
competitive in order to determine that there is a likelihood of confusion. It is
sufficient that the respective goods and services are related in some manner, or that
the conditions surrounding their marketing are such that they will be encountered
by the same purchasers under circumstances that would give rise to the mistaken
belief that they originate from the same source. See On-line Careline Inc. v. America
Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Applicant maintains that the services rendered under his PETRACAT mark
are vastly different and commercially unrelated to the goods and services associated
with Opposer’s CAT marks. Applicant particularly argues that “[t]he individuals
55 We limit our discussion to these enumerated goods and services because they are the
ones upon which Applicant and Opposer focused the discussion in their briefs.
Opposition No. 91210124
32
working in an oil field that would encounter the ‘PETRACAT’ mark would not view
oil and gas well testing or the other services rendered under the ‘PETRACAT’ mark
as being related to earthmoving equipment, frac pumps, engines, and
transmissions.”56 In making this argument, Applicant appears to focus on what he
perceives to be the goods and services “properly pleaded” by Opposer. As just noted,
Opposer may not only rely on the goods and services listed in its pleaded
registrations, but also on the goods and services, noted above, for which it has
proven prior trademark rights. By way of example, we explicitly address Applicant’s
statement that “Opposer submitted no evidence whatsoever that it conducts oil and
gas well testing, provides engineering services in relation to oil and gas well testing,
and/or provides consulting in the field of engineering.” As Opposer aptly notes in its
reply brief, in response to questions from Applicant’s counsel, Mr. Stembridge
testified as follows:
Q. Does Caterpillar perform oil and gas well testing?
A. Explain what you mean by testing.
Q. Does a representative of Caterpillar go to the oil and
gas wellhead, put any sort of product on it and then test
that product in order to see how things are performed?
A. The products that we sell which are connected to
the wellhead, yes, we would be monitoring and testing our
engine, transmission pump, so certainly, yes…
…
Q. Does Caterpillar perform engineering services in
the field of oil and gas well testing?
56 Applicant’s br. p. 21, 15 TTABVUE 28.
Opposition No. 91210124
33
A. Again, as we look at some of the marketing
materials, we do offer custom solutions to our customers,
so we are offering engineering services for the products
that we sell to optimize our engine, our transmission, our
pumps to work best with that particular site.
Q. Does Caterpillar perform consulting in the field of
engineering?
A. Yes, with our customers.57
As further regards Opposer’s engineering services and consulting services in the
field of engineering, a brochure including a discussion of CAT CUSTOM WELL
SERVICE PACKAGES states:
If your application presents unique challenges or complex design
issues, Caterpillar can engineer a custom well solution service
power package to maximize your productivity. A seamless
integration of proven Cat components offers you single-source
consistency, unparalleled performance, and streamlined
procurement. Your one-of-a-kind package also comes with
documentation, factory testing reports, and the peace of mind of a
Caterpillar warranty.58
Opposer maintains that its various equipment and services used in
connection with well fracking (e.g., well fracking pumps; engines and transmissions
used to power the drilling of the well bore and the entire fracking operation; well
servicing; machinery and equipment used to prepare, dig, and reclaim gas-well
57 Stembridge test., 11 TTABVUE 58-59. While this testimony is unequivocal, it does not
provide sufficient information to ascertain the specific nature of Opposer’s well testing or
engineering services, and accordingly, we rely on Mr. Stembridge’s testimony, discussed
infra, regarding the complementary nature of the parties’ respective goods and services.
58 Ex. 11 to Stembridge test., id. at 189.
Opposition No. 91210124
34
sites) are complementary and closely related to the services covered by Applicant’s
application.59
By way of background, we note and as explained by Mr. Stembridge in his
testimony, that “for a typical mine site, there’s more than just drilling a hole.”60
Opposer “[has] equipment that would be used for preparing the site [including]
earth moving equipment from bulldozers to trucks to carry materials, motor graders
to maintain roads, service vehicles, service parts, service tools to support and
maintain all of that equipment[;] … basically, any fracking related product.”61 Mr.
Stembridge further explained that fracking is “the process of injecting a fluid or
chemical under pressure down into a well to fracture the rock structure to basically
create pathways for the natural gas to then escape and be collected.”62 The record
reflects that in addition to the CAT-branded engines and transmissions that power
a fracking operation, Caterpillar sells CAT-branded hydraulic pumps that inject the
fluid down into the well to fracture the rock. The CAT-branded engine,
transmission, and pump are typically mounted on a flatbed semi-trailer, or frack
trailer, and sold as a unit.63
59 To the extent that Opposer also contends that Applicant’s services are within its natural
zone of expansion, even within an inter partes proceeding, we have found that the doctrine
requires a specific, complicated analysis that does not appreciably add to our understanding
of the relatedness of the goods and services in most cases. General Mills, Inc. and General
Mills IP Holdings II, LLC v. Fage Dairy Processing Industry S.A., 100 USPQ2d 1584 (TTAB
2011).
60 Stembridge test., 11 TTABVUE 18.
61 Id.
62 Id. at 44-46.
63 Id. at 31.
Opposition No. 91210124
35
While we limit our comparison of the respective goods and services to the
services as identified in Applicant’s application, we have reviewed website evidence
introduced by Applicant for the purpose of clarifying the services provided under his
PETRACAT mark. We point out that Applicant performs the identified well testing
services by collecting or capturing data from quartz resonant pressure gauges
(provided by Applicant), and by subsequent processing and analysis of that data by
Applicant’s engineering division.64
Against that backdrop, we note that during Mr. Stembridge’s testimony
deposition, he was handed a marketing document produced by Applicant which
provides information regarding Applicant’s services. Mr. Stembridge was asked to
indicate on the document where the CAT-branded equipment would be found in
relation to how Applicant performs its oil and gas well testing services. Mr.
Stembridge’s annotations on the document are shown below:
64 Applicant’s Second Notice of Reliance, ex. 19; 9 TTABVUE 12.
Opposition No. 91210124
36
Mr. Stembridge further explained the relationship between Applicant’s
services and the “CAT-branded” equipment as follows:
[Applicant’s] equipment, going by the photographs, is
attached to the wellhead which our CAT engine
transmission and pump would also be attached to that
same wellhead, and since our product is providing
pressurized fluids and chemicals in the wellhead and
PetraCat product is measuring the pressure, I would
assume that the information gleaned from the PetraCat
product in turn would be used to monitor and possibly
adjust the running and operation of our CAT equipment.65
Because Applicant’s testing services are provided by attaching equipment to
the same well heads that may utilize CAT-branded equipment (i.e., the CAT-
branded engine, transmission, and pump unit – such engines and transmissions
65 Id. at 33.
Opposition No. 91210124
37
being identified both in the pleaded registrations and proven as used) and because
Applicant’s testing results can be used to modify the pump pressure in a well
fracking operation, we find Applicant’s oil and gas well testing services and
Opposer’s engine, transmission, and pump units to be complementary and related
for purposes of our likelihood of confusion analysis.66 See e.g., In re Cook Medical
Tech. LLC, 105 USPQ2d 1377, 1380 citing Martin’s Famous Pastry Shoppe 223
USPQ at 1290 (“If goods are complementary in nature, or used together, this
relatedness can support a finding of likelihood of confusion); Octomom Sys., 16
USPQ2d at 1788 (OCTOCOM for modems held confusingly similar to OCTACOMM
for computer programs because programs and modems are commonly used
together). We further find that the parties’ respective goods and services may be
utilized by customers for the same ultimate purpose, namely, the optimal extraction
of natural gas from a well.
Applicant’s primary argument regarding the marketing document drawing
shown above is that it “does not purport to be drawn to scale,” which therefrom, he
apparently extrapolates that “several miles” could separate the area where
Applicant performs his testing and the CAT equipment is located. For that reason,
Applicant argues that it is “possible” that consumers coming into contact with its
well-testing services would never see the CAT equipment. Apart from the fact that
66 We need not discuss Applicant’s engineering services in the field of oil and gas well
testing and consulting in the field of engineering, because a finding of likelihood of
confusion as to any one of the services in a single class would result in a finding of
likelihood of confusion for the entire class. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Opposition No. 91210124
38
this argument overlooks well-settled law that marks are not subject to side-by-side
comparison,67 Applicant offers no evidence whatsoever to support his assertion.
Further, in the absence of any limitations in the identifications as to
channels of trade and classes of purchasers in Applicant’s application and Opposer’s
pleaded registrations, we must presume that the identified goods and services will
be purchased in the usual channels of trade for those goods and services and by the
usual classes of purchasers for those goods and services. According to Applicant’s
response to Opposer’s Interrogatory No. 7, the normal customers of Applicant’s
services are “exploration and production companies as well as oil field companies.”68
These are the same customers to whom Opposer has offered its goods and services.
According to Mr. Stembridge, Opposer offers is CAT-branded oil and gas products
and services to “exploration and production companies, oil field service companies
… [and] the owners and operators of the gas wells, and drilling companies.”69 In
addition, the goods and services established by common law use move in the same
trade channels and to the same customers. Opposer promotes its CAT mark at some
of the oil and gas industry’s trade shows and Mr. Stembridge testified that
67 As previously stated, the proper test is whether the marks are sufficiently similar in
terms of their commercial impressions such that persons who encounter the marks would
be likely to assume a connection between the parties. See Coach Servs. v. Triumph
Learning, 101 USPQ2d at 1721.
68 Opposer’s Notice of Reliance No. 1, 6 TTABVUE 7.
69 Stembridge test., 11 TTABVUE at 34-35. Indeed, although the names of Applicant’s
customers are confidential, Mr. Stembridge testified that Opposer has sold CAT-branded oil
and gas products to the exact same customers. Id. at 54-55.
Opposition No. 91210124
39
companies offering services of the type identified in Applicant’s application attend
those same shows.70
Applicant’s unsupported contention that Applicant and Opposer will interact
with different decision makers who possess purchasing powers at any of the
companies that Applicant and Opposer could potentially both have as customers in
unconvincing. Thus, at a minimum, the channels of trade and classes of purchasers
overlap. In re Elbaum, 211 USPQ 639 (TTAB 1981).
For the reasons discussed above, the du Pont factors of the relatedness of the
goods and service, channels of trade and classes of purchasers favor Opposer.
e. The conditions under which and buyers to whom sales are made
We next consider the conditions under which and buyers to whom the parties’
respective goods and services are provided. Applicant contends that the services
rendered under his PETRACAT mark as well as the goods and services offered and
rendered under Opposer’s CAT marks are directed to discerning oil and gas well
operators and owners, who exercise “extra care” when deciding what companies will
be hired to service their very expensive equipment. With further regard to
Opposer’s goods and services, Applicant contends that they are expensive and are
sold through a dealer network.71
Even in the absence of specific evidence as to costs, we acknowledge that the
nature of Opposer’s products and services dictate that they are likely to be quite
70 Id. at 35-38.
71 Although Opposer pleaded that its parts and equipment are provided to customers by a
global retail network of CAT dealers, 50 of which are in the United States, there is no
testimony or other evidence in the record to prove this allegation.
Opposition No. 91210124
40
expensive. We further recognize the complex nature of Applicant’s services and the
expertise required by Applicant in rendering those services. Given the expense and
complex nature of both Applicant’s services and Opposer’s goods and services, it is
not unlikely that the owners and operators of oil and gas well operations will
exercise some degree of care in their purchasing decisions. Even so, even careful
purchasers can be confused by similar marks used in connection with highly related
and complementary services. As recognized by our primary reviewing court, “[t]hat
the relevant class of buyers may exercise care does not necessarily impose on that
class the responsibility of distinguishing between similar trademarks for similar
services.” In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986) quoting Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of
discriminating purchasers … are not infallible.”).
In this case, the similarity between Applicant’s mark and Opposer’s marks,
as well as the relationship between Applicant’s services and Opposer’s goods and
services, tend to outweigh any sophisticated purchasing decision. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (similarities of goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods); Refreshment Machinery Inc. v. Reed
Industries, Inc., 196 USPQ 840, 843 (TTAB 1977) (selling to a sophisticated
purchaser does not automatically eliminate the likelihood of confusion because “[i]t
Opposition No. 91210124
41
must also be shown how the purchasers react to trademarks, how observant and
discriminating they are in practice, or that the decision to purchase involves such
careful consideration over a long period of time that even subtle differences are
likely to result in recognition that different marks are involved”). Therefore, we find
this factor to favor Applicant.
f. Actual Confusion
Applicant contends that there is no evidence of actual confusion between his
mark PETRACAT and Opposer’s CAT marks, which, in Applicant’s view, weighs
against a finding of likelihood of confusion. He specifically maintains that
“Opposer’s failure to proffer any evidence on this point undermines the Opposer’s
likelihood of confusion claim, particularly since the ‘PETRACAT’ mark has been in
use since 2012.”72 We disagree. While a showing of actual confusion would of course
be highly probative of a likelihood of confusion, the opposite is not true. Given the
recognized difficulty in obtaining actual-confusion evidence, it is well-established
that actual confusion is not required for a finding a likelihood of confusion. Weiss
Associates v. HRL Associates, 14 USPQ2d at 1842-43. See also Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d 1565 218 USPQ 390, 395-396 (Fed. Cir. 1983)
(finding “it is unnecessary to show actual confusion in establishing likelihood of
confusion”); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826,
1834 (TTAB 2012) (recognizing that “evidence of actual confusion is difficult to
obtain”). Moreover, Applicant indicates that it began using its PETRACAT mark on
72 Applicant’s Br. p. 29, 9 TTABVUE 36.
Opposition No. 91210124
42
or about September 5, 201273 and, so the parties’ marks had coexisted in the
marketplace for only a little over a year. Thus, the absence of any actual confusion
during such a short period is insignificant. See Chemetron Corporation v. Morris
Coupling and Clamp Company, 203 USPQ 537 (TTAB 1979) (evidence of lack of
confusion found insignificant in view of the fact that only a year and a half elapsed
between applicant’s asserted date of first use and the filing of the notice of
opposition). We also point out that the record is devoid of any information regarding
Applicant’s sales or promotional activity, and therefore we cannot even ascertain
whether there was any meaningful opportunity for confusion to occur. See e.g., Nina
Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir.
1989). Accordingly, we conclude that this factor is neutral.
g. Conclusion
We have carefully considered all of the evidence pertaining to the relevant du
Pont factors, as well as all of the parties’ arguments with respect thereto, including
any evidence and arguments not specifically discussed in this opinion.
Notwithstanding the high costs of the involved goods and services, and the
care exercised by the respective purchasers, in balancing the relevant factors we
conclude, given the fame of Opposer’s CAT marks and their resulting entitlement to
a broad scope of protection, that given the similarities of the marks and the
complementary nature of respective goods and services, as well as the overlapping
73 Opposer’s first notice of reliance, ex. 1, 6 TTABVUE 7.
Opposition No. 91210124
43
channels of trade and classes of purchasers, there exists a likelihood of confusion
between Applicant’s PETRACAT mark and Opposer’s CAT marks.
V. Dilution
In view of our determination as to the claim of likelihood of confusion, we do
not reach the claim of dilution. See Miss Universe L.P. v. Community Marketing
Inc., 82 USPQ2d 1562, 1572 (TTAB 2007).
VI. Decision
Decision: The opposition is hereby sustained under Section 2(d) of the Act,
based upon our finding of likelihood of confusion. Registration to Applicant of its
PETRACAT mark is refused.
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