Tuesday, April 11, 2023

TTABlog Test: Is Puma's "PROCAT" Confusable with Caterpiller's "CAT" for Footwear?

"This case is a cat fight. In one corner is Puma SE, which claims that it 'has been a cat since birth' ... and which owns Registration No. 4220096 for the stylized mark shown below. *** In the other corner is Caterpillar, Inc., which calls the CAT mark the 'cornerstone of the company’s brand portfolio.' *** The parties have swatted at one another for about five years, but neither has been able to land a knockout blow, and their bout has gone the distance." The involved products are identical: footwear. How do you think this came out? Caterpillar Inc. v. Puma SE, Cancellation No. 92067079 (April 6, 2023) [not precedential] (Opinion by Judge Christopher Larkin).

The record included some 15,000 pages of testimony and evidence, required 247 TTABVUE entries, and resulted in an 88-page opinion. This blog post will summarize the highlights.

The Board found that Puma's third-party registration evidence failed to show any conceptual weakness in the inherently distinctive standard-character CAT word mark. Sales and advertising figure established that the CAT word mark for footwear falls “on the much higher end of the commercial strength spectrum ‘from very strong to very weak.’”

The quality and quantity of probative third-party CAT-formative marks for footwear are wanting. As in Sabhnani, “one third-party use” and, at most, nine “third-party registrations of ‘varying probative value’,” are “‘a far cry from the large quantum of evidence of third-party use and third-party registrations that was held to be significant in both’ Jack Wolfskin and Juice Generation.”

As to the marks, because the CAT mark is registered in standard character form, it may be presented in any font style and size, including the same font style and size as the literal portions of Puma's mark.

Puma disagreed that its PROCAT mark would be perceived as a compound mark presenting distinct words (PRO and CAT), or that CAT could be given greater weight. Instead, it asserted that PROCAT is a “unitary” mark. The Board, however, concluded that relatively less weight should be given to the adjective [PRO] than to the noun [CAT] in determining the connotation and commercial impression of Puma's mark.

The Board found that the first DuPont weighed in favor of Caterpillar.

[T]he PROCAT mark “looks, sounds, and conveys the impression of being a line extension of” Petitioner’s mark CAT when the marks are both used for footwear. Double Coin Holdings, 2019 USPQ2d 377409, at *7. There are some differences between CAT and PROCAT in appearance, sound, and commercial impression, “but they are outweighed by the marks’ similarities, particularly taking into account that the identity of the goods with which the marks are used ‘reduces the degree of similarity between the marks necessary to find a likelihood of confusion.’”

Puma pointed to the lack of evidence of actual confusion, but the Board found that “[t]here has been no meaningful opportunity for confusion to occur.” Double Coin Holdings, 2019 USPQ2d 377409, at *9. The Board also found that the broadly worded "footwear" in Caterpillar's registration encompasses inexpensive footwear that can be purchased "online directly from the vendor without the involvement of a salesperson." Embiid, 2021 USPQ2d 577, at *32 n.47. The Board deemed the purchaser care factor to be neutral.

The involved goods, channels of trade, and classes of consumers are identical, the CAT and PROCAT marks are similar, and Petitioner’s CAT mark for footwear has conceptual strength, and significant commercial strength for footwear on the spectrum from very strong to very weak. The absence of evidence of actual confusion is not significant under the relevant marketplace conditions

Balancing the relevant DuPont factors, the Board found confusion likely and so it granted the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: This seems like one of those Section 2(d) cases where one can predict the outcome based just on the marks and the goods. Am I right?

Text Copyright John L. Welch 2023.


At 3:50 PM, Anonymous Anonymous said...

The record included some 15,000 pages of testimony and evidence, required 247 TTABVUE entries, and resulted in an 88-page opinion. REALLY! Nice going big law vampires! Puma and Caterpiller you have been sucked dry by big law vampires and need to hire new trademark counsels where you both can co-exist (for a fraction of the cost) and not pay millions in fees to your greedy vampire lawyers.


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