estta tracking number: estta1032861 01/31/2020

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 )

http://estta.uspto.gov

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.


Mark


Appeal Board

177 USPQ 343


Gehl Company

HYDRACAT


Appeal Board

Opposition No. 56,436

to application Serial No.

442,478 filed

November 3, 1972


Electric Carrier

Corporation

ELECTRICAT


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


Appeal Board

Cancellation No.

92041776 against

Registration No.

2684138

2007 Caterpillar, Inc. v. Pave

Tech, Inc.

PAVERCAT


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.


Mark


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

[email protected]

[email protected]

[email protected]

[email protected]

[email protected]

Attorneys for Petitioner Caterpillar Inc.

mailto:[email protected]




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

[email protected]

/Travis Smith/

Trademark Legal Assistant

EXHIBIT 1

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#V1

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.




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).




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




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




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




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.”




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




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”.




——————————————————————————————

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.

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33 U.S.P.Q.2d 1357


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

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33 U.S.P.Q.2d 1357


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.












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33 U.S.P.Q.2d 1357


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.











33 U.S.P.Q.2d 1357


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)


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

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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



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.

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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.











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













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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















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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 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


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.


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.


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).


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.


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).


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).


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


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.


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


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);


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?


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.


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


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


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


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


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.


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?


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.


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.


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


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


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.


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.


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.


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.


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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


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.


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“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.


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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.


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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


- 6 -

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.


- 7 -

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.


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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.


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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.


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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.


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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.


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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.


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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.


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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.


66 Id. at ¶¶ 17-18, 25, Exhibit K, 32 TTABVue at 127-29, 190-91 of 217.


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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.


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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).


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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


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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).


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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.


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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.


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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.


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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.


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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.


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.


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.


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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


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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.



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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.


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.



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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


- 31 -

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.


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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.


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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,


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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.


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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.


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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


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.


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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.


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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.


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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.



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.


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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.


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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.


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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.


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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.”)


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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).


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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).


- 46 -

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.


- 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


- 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


- 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

_____


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


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


Trademark Act.


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.


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.


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


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


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.


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,


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.


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.


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.


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.


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.


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.


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


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.


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”).


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


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.


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)


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.


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.


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.


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


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.


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.


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).


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.


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


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.


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.


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.


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.


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.


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.


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.


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.


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.


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).


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.


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.


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


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.


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.


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.

estta tracking number: estta1032861 01/31/2020

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