Caterpillar Inc. v. Rodney C. Kelly

This Opinion is Not a
Precedent of the TTAB

Hearing: Mailed:
April 15, 2015 September 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Caterpillar Inc.
v.
Rodney C. Kelly
_____

Opposition No. 91210124
to Serial No. 85710127
_____

Christopher P. Foley and Naresh Kilaru of Finnegan, Henderson, Farabow, Garrett
& Dunner for Caterpillar Inc.

John S. Egbert, Kevin S. Wilson and Michael F. Swartz of Egbert Law Offices PLLC
for Rodney C. Kelly.
_____

Before Quinn, Zervas and Taylor,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Rodney C. Kelly (“Applicant”) seeks registration on the Principal Register of

the standard character mark PETRACAT for “oil and gas well testing; engineering
Opposition No. 91210124

services in the field of oil and gas well testing; consulting in the field of engineering”

in International Class 42.1

Registration has been opposed by Caterpillar Inc. (“Opposer”) on the grounds

of priority and likelihood of confusion under Section 2(d) of the Act, 15 U.S.C.

§1052(d) and dilution under Section 43(c) of the Act, 15 U.S.C § 1125(c). Opposer

particularly alleges prior common law use of the CAT mark to identify a wide range

of goods and services in the oil and gas industry, including engines for oil and gas

drilling and production, well servicing, pumps, and compression applications,

generators, engine driven generator sets (gensets), pipelayers, track-type tractors,

hydraulic excavators, motor graders, trucks, GPS (“global positioning system”) and

laser-based guidance systems for automated rock recognition to ensure accurate

drill management, and onsite support, repair and maintenance services. Opposer

further alleges that its CAT-branded engines have drilled the vast majority of the

world’s oil and gas wells for years – both on shore and off shore; that it renders

maintenance and repair and support services for its products in connection with its

CAT name and mark and that it offers consulting services, including technical

consulting, related to a wide range of its products under the CAT name and mark.

Opposer also has pleaded ownership of the following registrations:

Reg. No. Mark Goods and Services

05642722 CAT Dump-wagons, wheel tractor-dump-wagon combinations, and
structural parts for such products in Class 7;

1 Application Serial No. 85710127 was filed on August 22, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.

2
Opposition No. 91210124

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.

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Opposition No. 91210124

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.

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Opposition No. 91210124

Off-highway trucks; articulated trucks; truck engines; agricultural
tractors; and parts for all the above in Class 12
352581111 Attachments, namely, asphalt cutters, hydraulic brooms, vibratory
compactors, cutting jaws, multiprocessors, tillers, trenchers, all of the
foregoing for use with machinery for earthmoving, earth conditioning
and material handling in Class 7
352581212 Machinery for earthmoving, earth conditioning, and material handling,
namely, backhoe loaders, track excavators, wheeled excavators,
telescoping material handlers, track material handlers, wheeled
material handlers, underground mining loaders in Class 7
354193913 Attachments, namely, augers, backhoes, hydraulic brooms, cold
planers, compactors, vibratory compactors, crushers, grapples,
hammers, pulverizers, pulverizing jaws, rakes, saws, shears, snow
blowers, stump grinders, all of the foregoing for use with machinery for
earthmoving, earth conditioning, and material handling in Class 7
404565214 Non-electric cables and wires of common metals; pipes and tubes of
metal; metal pipe clips, metal pipe nipples, metal pipe collars, metal
pipe extensions; parts for land vehicles, agricultural machinery, and
earthmoving machinery, namely, metal gaskets for machinery and land
vehicles, metal pipe connectors, metal pipe fittings, metal cylinders for
compressed gas or liquids sold empty in Class 6;

11 Issued October 28, 2008; Section 8 and 15 combined affidavit; accepted and
acknowledged, and claiming January 2, 2007 as the date of first use of the mark anywhere
and in commerce. The registration includes the following statements: “The mark consists of
yellow trim around the perimeter of the mark, a yellow triangle at the bottom of the word
‘CAT’, a black background and a red edge at the right-hand side of the mark. The word
‘CAT’ is in white. The color(s) yellow, black, red and white is/are claimed as a feature of the
mark.”
12 Issued October 28, 2008; Section 8 and 15 combined affidavit; accepted and
acknowledged, and claiming January 2, 2007 as the date of first use of the mark anywhere
and in commerce. The registration includes the following statements: “The mark consists of
a yellow triangle at the bottom of the word ‘CAT’, a black background and a red edge at the
right-hand side of the mark. The word ‘CAT’ is in white. The color(s) yellow, black, red and
white is/are claimed as a feature of the mark.”
13 Issued December 2, 2008; Section 8 and 15 combined affidavit; accepted and
acknowledged, and claiming August 20, 2007 as the date of first use of the mark anywhere
and in commerce. The registration includes the following statements: “The mark consists of
yellow trim around the perimeter of the mark, a yellow triangle at the bottom of the word
‘CAT’, a black background and a red edge at the right-hand side of the mark. The word
‘CAT’ is in white. The color(s) yellow, black, red and white is/are claimed as a feature of the
mark.”
14 Issued October 25, 2011. The registration includes the following description: “The mark
consists of a rectangular shape with a diagonal edge, containing the word ‘CAT’ with a
triangle below the letter ‘A.’” Color is not claimed as a feature of the mark.
We note, too, that the registration includes both additional goods in Classes 6, 7, 9, 17 and
20 and additional classes of goods. Only those goods highlighted in Opposer’s brief are set
forth above.
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Opposition No. 91210124

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,

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Opposition No. 91210124

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.

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Opposition No. 91210124

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.

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Opposition No. 91210124

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.

9
Opposition No. 91210124

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.

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Opposition No. 91210124

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.

11
Opposition No. 91210124

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.

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Opposition No. 91210124

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
13
Opposition No. 91210124

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.

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Opposition No. 91210124

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”).

15
Opposition No. 91210124

(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

16
Opposition No. 91210124

… 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.

17
Opposition No. 91210124

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)

18
Opposition No. 91210124

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.

19
Opposition No. 91210124

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.

20
Opposition No. 91210124

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.

21
Opposition No. 91210124

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.
50As 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
22
Opposition No. 91210124

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) 1655778 Drilling tool rental services; oil well control
WELLCAT and large cat paw 1661095 services; namely furnishing services for others
design 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.

23
Opposition No. 91210124

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.

24
Opposition No. 91210124

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).

25
Opposition No. 91210124

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.

26
Opposition No. 91210124

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

27
Opposition No. 91210124

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.

28
Opposition No. 91210124

• “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.

29
Opposition No. 91210124

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.
54We 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.

30
Opposition No. 91210124

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.

31
Opposition No. 91210124

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.

32
Opposition No. 91210124

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.

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Opposition No. 91210124

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.

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Opposition No. 91210124

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.

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Opposition No. 91210124

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.

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Opposition No. 91210124

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).

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Opposition No. 91210124

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.

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Opposition No. 91210124

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.

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Opposition No. 91210124

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

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Opposition No. 91210124

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.

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Opposition No. 91210124

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.

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Opposition No. 91210124

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.

43