Quinn
Zervas
Taylor*
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
worlds 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 Applicants
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.
3
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.
4
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 Opposers brief are set
forth above.
5
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,
6
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 Applicants 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 Applicants denials
and are treated as such.
7
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 Opposers 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 Opposers 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 Opposers
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.
8
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, Opposers 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. Opposers CAT-branded engines have drilled the
vast majority of the worlds 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, Opposers Products and Services), still
well before the filing date of the application for
Applicants 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, Opposers 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, Opposers objections are
overruled and we will consider the arguments and evidence presented by Opposer
on its common law claims in our decision. As regards Applicants 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.
10
Opposition No. 91210124
Sanctions
As part of its response in opposition to Applicants objections, Opposer, in its
reply brief at footnote 1, intimates that given the blatant nature of Applicants
misrepresentations to the Board as to Opposers asserted failure to plead use of the
CAT mark in connection with well servicing, the Board has the discretion to
consider whether sanctions are warranted25 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 Boards 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 Applicants
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:
Opposers 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. Opposers first notice of reliance on Applicants responses to
Opposers first set of interrogatories, Nos. 1, 7, 8 and 11.
3. Opposers second notice of reliance on various Internet
materials, namely:
(i) web pages from Opposers 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 Opposers
joint venture with Ariel Corporation (Ex. 4).
4. Opposers 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 Applicants website at
www.petracat.com showing his involvement in the oil and
gas industry (Ex. 3); and
(iv) web pages showing Opposers use of its CAT mark in
the oil and gas industry and/or Opposers involvement in
the oil and gas industry (Ex. 4).
Applicants Evidence
1. Applicants first notice of reliance on third-party registrations
for marks that include the term CAT (in its various forms and
permutations) (Ex. A).
2. Applicants second notice of reliance on web pages from
Applicants website (Ex. B).
3. Applicants 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.
12
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. Opposers CAT marks have been used continuously on
construction equipment, including large machinery, since the late 1940s. Opposer
started its petroleum division in the late 1960s 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 Opposers website at
www.cat.com/oil-and-gas concerning Opposers 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 Applicants 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 Opposers
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
Kings 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 Opposers Notice of Reliance No. 2 (7 TTABVUE 6-17), discuss, in detail,
Opposers 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.
14
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 Opposers 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, opposers mark is
deemed distinctive). We further find that through the deposition of Roger
Stembridge, Opposer has demonstrated that, prior to Applicants 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 Opposers 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 opposers 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 Applicants 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 Opposers 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 1940s 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 1960s 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 worlds 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 Opposers 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 Opposers
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 Opposers 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 Opposers 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, Opposers 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, Opposers 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 Opposers CAT marks are famous not only with respect
to heavy equipment, but also in the oil and gas industry. As a result, Opposers CAT
marks are entitled to a broad scope of protection.
We find Applicants argument that Opposer failed to meet its burden to
establish fame unavailing. Of particular note are Applicants 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 worlds 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 Opposers use of, and the publics awareness
of, Opposers 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 Opposers 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 Opposers 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 permutations48 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 Opposers CAT Marks for many years and that small
differences between Applicants PETRACAT mark and Opposers CAT Marks are
sufficient to prevent confusion.49 Applicant highlighted the registrations excerpted
below.50
47 Applicants 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 Applicants First Notice of Reliance, 8 TTABVUE.
49 Applicants 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 Opposers 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 [applicants] application, the PTOs 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 Opposers CAT mark to
Applicants mark PETRACAT. Opposer argues that because both parties marks
contain the identical CAT term, which is the dominant element in Applicants
marks given the suggestive nature of Petra, and in view of the broad scope of
protection to be accorded Opposers famous CAT mark, the Board should find its
mark and Applicants 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
Opposers 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 Opposers mark is a shortening
of the term CATERPILLAR, Opposers 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 Applicants proposed mark, PETRACAT, incorporates Opposers
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 Applicants 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
Opposers 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 partys earlier contrary
opinion may be considered relevant and competent).
In view of the lesser significance of PETRA, it is the term CAT that
dominates Applicants proposed mark.
To state the obvious, in view of our findings above, Applicants contention
that PETRA is the dominant portion of its mark is unavailing. We so find despite
PETRAs position as the first portion of mark. We also find unavailing Applicants
reliance on multiple unrelated definitions of PETRA, e.g., Jesus Christs disciple,
52 Opposers 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 Applicants mark in relation to the services set forth in
Applicants 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 Applicants assertion that the connotation of PETRA is rock or stone, PETRA
remains suggestive in relation to Applicants services because it may describe
elements present at fracking drilling sites which necessitate the use of Applicants
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 applicants 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 Applicants third notice of reliance, 10 TTABVUE.
54We do not find credible Opposers arguments and evidence relating to its assertion that
PETR-means petroleum, as the first portion of Applicants 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 Applicants oil and gas well testing; engineering
services in the field of oil and gas well testing; consulting in the field of engineering
with Opposers 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 Martins
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 Opposers 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 Applicants
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 Applicants 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 Applicants 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 Opposers 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 Opposers well testing or
engineering services, and accordingly, we rely on Mr. Stembridges testimony, discussed
infra, regarding the complementary nature of the parties respective goods and services.
58 Ex. 11 to Stembridge test., id. at 189.
33
Opposition No. 91210124
sites) are complementary and closely related to the services covered by Applicants
application.59
By way of background, we note and as explained by Mr. Stembridge in his
testimony, that for a typical mine site, theres 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 Applicants 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.
34
Opposition No. 91210124
While we limit our comparison of the respective goods and services to the
services as identified in Applicants 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
Applicants engineering division.64
Against that backdrop, we note that during Mr. Stembridges testimony
deposition, he was handed a marketing document produced by Applicant which
provides information regarding Applicants 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.
Stembridges annotations on the document are shown below:
64 Applicants Second Notice of Reliance, ex. 19; 9 TTABVUE 12.
35
Opposition No. 91210124
Mr. Stembridge further explained the relationship between Applicants
services and the CAT-branded equipment as follows:
[Applicants] 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 Applicants 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.
36
Opposition No. 91210124
being identified both in the pleaded registrations and proven as used) and because
Applicants testing results can be used to modify the pump pressure in a well
fracking operation, we find Applicants oil and gas well testing services and
Opposers 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 Martins 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.
Applicants 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 Applicants 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).
37
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 Applicants application and Opposers
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 Applicants
response to Opposers Interrogatory No. 7, the normal customers of Applicants
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 industrys 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
Opposers Notice of Reliance No. 1, 6 TTABVUE 7.
69 Stembridge test., 11 TTABVUE at 34-35. Indeed, although the names of Applicants
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.
38
Opposition No. 91210124
companies offering services of the type identified in Applicants application attend
those same shows.70
Applicants 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 Opposers 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
Opposers 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 Opposers 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.
39
Opposition No. 91210124
expensive. We further recognize the complex nature of Applicants services and the
expertise required by Applicant in rendering those services. Given the expense and
complex nature of both Applicants services and Opposers 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 Applicants mark and Opposers marks,
as well as the relationship between Applicants services and Opposers goods and
services, tend to outweigh any sophisticated purchasing decision. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), affd, 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
40
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 Opposers CAT marks, which, in Applicants view, weighs
against a finding of likelihood of confusion. He specifically maintains that
Opposers failure to proffer any evidence on this point undermines the Opposers
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 Applicants Br. p. 29, 9 TTABVUE 36.
41
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 applicants 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
Applicants 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 Opposers 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 Opposers first notice of reliance, ex. 1, 6 TTABVUE 7.
42
Opposition No. 91210124
channels of trade and classes of purchasers, there exists a likelihood of confusion
between Applicants PETRACAT mark and Opposers 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
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
worlds 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 Applicants
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.
3
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.
4
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 Opposers brief are set
forth above.
5
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,
6
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 Applicants 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 Applicants denials
and are treated as such.
7
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 Opposers 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 Opposers 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 Opposers
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.
8
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, Opposers 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. Opposers CAT-branded engines have drilled the
vast majority of the worlds 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, Opposers Products and Services), still
well before the filing date of the application for
Applicants 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, Opposers 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, Opposers objections are
overruled and we will consider the arguments and evidence presented by Opposer
on its common law claims in our decision. As regards Applicants 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.
10
Opposition No. 91210124
Sanctions
As part of its response in opposition to Applicants objections, Opposer, in its
reply brief at footnote 1, intimates that given the blatant nature of Applicants
misrepresentations to the Board as to Opposers asserted failure to plead use of the
CAT mark in connection with well servicing, the Board has the discretion to
consider whether sanctions are warranted25 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 Boards 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 Applicants
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:
Opposers 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. Opposers first notice of reliance on Applicants responses to
Opposers first set of interrogatories, Nos. 1, 7, 8 and 11.
3. Opposers second notice of reliance on various Internet
materials, namely:
(i) web pages from Opposers 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 Opposers
joint venture with Ariel Corporation (Ex. 4).
4. Opposers 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 Applicants website at
www.petracat.com showing his involvement in the oil and
gas industry (Ex. 3); and
(iv) web pages showing Opposers use of its CAT mark in
the oil and gas industry and/or Opposers involvement in
the oil and gas industry (Ex. 4).
Applicants Evidence
1. Applicants first notice of reliance on third-party registrations
for marks that include the term CAT (in its various forms and
permutations) (Ex. A).
2. Applicants second notice of reliance on web pages from
Applicants website (Ex. B).
3. Applicants 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.
12
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. Opposers CAT marks have been used continuously on
construction equipment, including large machinery, since the late 1940s. Opposer
started its petroleum division in the late 1960s 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 Opposers website at
www.cat.com/oil-and-gas concerning Opposers 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 Applicants 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 Opposers
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
Kings 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 Opposers Notice of Reliance No. 2 (7 TTABVUE 6-17), discuss, in detail,
Opposers 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.
14
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 Opposers 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, opposers mark is
deemed distinctive). We further find that through the deposition of Roger
Stembridge, Opposer has demonstrated that, prior to Applicants 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 Opposers 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 opposers 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 Applicants 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 Opposers 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 1940s 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 1960s 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 worlds 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 Opposers 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 Opposers
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 Opposers 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 Opposers 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, Opposers 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, Opposers 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 Opposers CAT marks are famous not only with respect
to heavy equipment, but also in the oil and gas industry. As a result, Opposers CAT
marks are entitled to a broad scope of protection.
We find Applicants argument that Opposer failed to meet its burden to
establish fame unavailing. Of particular note are Applicants 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 worlds 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 Opposers use of, and the publics awareness
of, Opposers 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 Opposers 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 Opposers 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 permutations48 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 Opposers CAT Marks for many years and that small
differences between Applicants PETRACAT mark and Opposers CAT Marks are
sufficient to prevent confusion.49 Applicant highlighted the registrations excerpted
below.50
47 Applicants 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 Applicants First Notice of Reliance, 8 TTABVUE.
49 Applicants 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 Opposers 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 [applicants] application, the PTOs 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 Opposers CAT mark to
Applicants mark PETRACAT. Opposer argues that because both parties marks
contain the identical CAT term, which is the dominant element in Applicants
marks given the suggestive nature of Petra, and in view of the broad scope of
protection to be accorded Opposers famous CAT mark, the Board should find its
mark and Applicants 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
Opposers 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 Opposers mark is a shortening
of the term CATERPILLAR, Opposers 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 Applicants proposed mark, PETRACAT, incorporates Opposers
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 Applicants 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
Opposers 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 partys earlier contrary
opinion may be considered relevant and competent).
In view of the lesser significance of PETRA, it is the term CAT that
dominates Applicants proposed mark.
To state the obvious, in view of our findings above, Applicants contention
that PETRA is the dominant portion of its mark is unavailing. We so find despite
PETRAs position as the first portion of mark. We also find unavailing Applicants
reliance on multiple unrelated definitions of PETRA, e.g., Jesus Christs disciple,
52 Opposers 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 Applicants mark in relation to the services set forth in
Applicants 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 Applicants assertion that the connotation of PETRA is rock or stone, PETRA
remains suggestive in relation to Applicants services because it may describe
elements present at fracking drilling sites which necessitate the use of Applicants
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 applicants 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 Applicants third notice of reliance, 10 TTABVUE.
54We do not find credible Opposers arguments and evidence relating to its assertion that
PETR-means petroleum, as the first portion of Applicants 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 Applicants oil and gas well testing; engineering
services in the field of oil and gas well testing; consulting in the field of engineering
with Opposers 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 Martins
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 Opposers 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.
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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 Applicants
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 Applicants 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 Applicants 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 Opposers 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 Opposers well testing or
engineering services, and accordingly, we rely on Mr. Stembridges testimony, discussed
infra, regarding the complementary nature of the parties respective goods and services.
58 Ex. 11 to Stembridge test., id. at 189.
33
Opposition No. 91210124
sites) are complementary and closely related to the services covered by Applicants
application.59
By way of background, we note and as explained by Mr. Stembridge in his
testimony, that for a typical mine site, theres 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 Applicants 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.
34
Opposition No. 91210124
While we limit our comparison of the respective goods and services to the
services as identified in Applicants 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
Applicants engineering division.64
Against that backdrop, we note that during Mr. Stembridges testimony
deposition, he was handed a marketing document produced by Applicant which
provides information regarding Applicants 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.
Stembridges annotations on the document are shown below:
64 Applicants Second Notice of Reliance, ex. 19; 9 TTABVUE 12.
35
Opposition No. 91210124
Mr. Stembridge further explained the relationship between Applicants
services and the CAT-branded equipment as follows:
[Applicants] 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 Applicants 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.
36
Opposition No. 91210124
being identified both in the pleaded registrations and proven as used) and because
Applicants testing results can be used to modify the pump pressure in a well
fracking operation, we find Applicants oil and gas well testing services and
Opposers 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 Martins 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.
Applicants 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 Applicants 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).
37
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 Applicants application and Opposers
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 Applicants
response to Opposers Interrogatory No. 7, the normal customers of Applicants
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 industrys 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
Opposers Notice of Reliance No. 1, 6 TTABVUE 7.
69 Stembridge test., 11 TTABVUE at 34-35. Indeed, although the names of Applicants
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.
38
Opposition No. 91210124
companies offering services of the type identified in Applicants application attend
those same shows.70
Applicants 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 Opposers 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
Opposers 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 Opposers 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.
39
Opposition No. 91210124
expensive. We further recognize the complex nature of Applicants services and the
expertise required by Applicant in rendering those services. Given the expense and
complex nature of both Applicants services and Opposers 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 Applicants mark and Opposers marks,
as well as the relationship between Applicants services and Opposers goods and
services, tend to outweigh any sophisticated purchasing decision. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), affd, 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
40
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 Opposers CAT marks, which, in Applicants view, weighs
against a finding of likelihood of confusion. He specifically maintains that
Opposers failure to proffer any evidence on this point undermines the Opposers
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 Applicants Br. p. 29, 9 TTABVUE 36.
41
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 applicants 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
Applicants 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 Opposers 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 Opposers first notice of reliance, ex. 1, 6 TTABVUE 7.
42
Opposition No. 91210124
channels of trade and classes of purchasers, there exists a likelihood of confusion
between Applicants PETRACAT mark and Opposers 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