Caterpillar Conquers BIG CAT in TTAB 2(d) Opposition
The fame of the mark CAT for construction equipment brought victory to Opposer Caterpillar Inc. in its Section 2(d) opposition to registration of BIG CAT, in standard character and design form, for "gas well equipment, namely, well bore fluid redistribution equipment comprised of a sealing body insertable into a well bore with ports allowing fluid to be pumped from one geological stratum to another, pumps, valves, and pipes." Although the products of the parties are expensive and would be purchased with care and sophistication, the remaining relevant duPont factors pointed in Caterpillar's direction. Caterpillar Inc. v. Big Cat Energy Corporation, Opposition No. 91193704 (September 3, 2014) [not precedential].
Caterpillar relied on a slew of registrations for the mark CAT, in standard character and design form, as well as on common law use of the mark CAT for a whole litter of goods and services, including goods and services used in the oil and gas industry. It asserted that its mark CAT is often associated with "big machines," "big projects," and other big things, and it made a big deal out of the claim that the company is often referred to as "BIG CAT."
The Board found that opposer's CAT marks are famous, "in no small measure because ... CAT branded equipment is pervasive on natural gas well sites throughout the entire life-cycle of the well." In short, "there exists a relationship between Applicant's hydrological technology and Opposer's listed heavy machinery, engines and generator sets."
The Board found "compelling," Caterpillar's arguments that the involved marks are confusable not only at the point-of-sale, but also in the post-sale context of "dealing with produced water from well sites."
Given the renown of the CAT marks generally, in the oil and gas industry specifically, and the ubiquitous presence of CAT-branded equipment at gas well sites, we agree that it is likely that during the life of the well, a range of persons, including miscellaneous contractors, well owners, and/or operators might well be confused regarding the source of Applicant’s technology upon exposure to the BIG CAT marks on a well site inundated with Caterpillar’s CAT-branded products and services.
From the record evidence, the Board found that the CAT mark "has reached an extraordinary level of fame, not only in the oil and gas industry, but also with respect to the general consuming public."Of course, when present fame is a dominant factor in the Section 2(d) analysis.
Not surprisingly, the Board found the word "cat" to be the dominant portion of applicant's marks, and it agreed with Caterpillar that potential customers of applicant will consider the BIG CAT marks as merely variations of opposer's CAT marks. Moreover, the record included many examples of use of the term "Big Cat" to refer to Caterpillar.
Third-party "cat" marks offered by applicant were of little relevance, but even if they were, the Board noted that "third-party registration or use cannot justify the registration of what possibly may be another confusingly similar mark." The lack of actual confusion evidence was likewise non-probative, in part because applicant operates only in a limited geographic area in Wyoming and has had comparatively minimal sales and promotional activity.
The Board acknowledged that the involved products and services are quite expensive and would be purchased with care. But even sophisticated customers may be confused by very similar marks. This duPont factor slightly favored applicant.
Balancing the relevant duPont factors, and giving opposer's CAT marks the broad scope of protection to which they are entitled, the Board found confusion likely and it sustained the opposition.
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TTABlog note: The Board declined to reach Caterpillar's dilution claim. Is there any chance that CAT could be a "household word" for Caterpillar's products and services? [In my household, "cat" means the neighbor's pest.] I don't think so.
Text Copyright John L. Welch