This Opinion is not a Precedent of the TTAB Mailed: September 3, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Caterpillar Inc. v. Big Cat Energy Corporation _____ Opposition No. 91193704 against Serial Nos. 77617945 and 77618417 _____ Christopher P. Foley, Naresh Kilaru, Stephanie H. Bald and Michael R. Justus of Finnegan Henderson Farabow Garrett & Dunner, L.L.P., for Caterpillar Inc. Cheryl L. Anderson and Craig R. Miles of CR Miles PC, for Big Cat Energy Corporation. _____ Before Bucher, Kuhlke and Masiello, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Big Cat Energy Corporation (“Applicant”) seeks registration on the Principal Register of the mark BIG CAT (in standard character format)1 and the special form mark shown at right, both marks for goods, as amended, as follows: 2 1 Application Serial No. 77617945 was filed on November 19, 2008, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. On August 13, 2009, Applicant filed an Amendment to Allege Use (AAU) claiming first use anywhere and use in commerce since at least as early as February 28, 2006. Opposition No. 91193704 gas well equipment, namely, well bore fluid redistribution equipment comprised of a sealing body insertable into a well bore with ports allowing fluid to be pumped from one geological stratum to another, pumps, valves, and pipes in International Class 7. Caterpillar Inc. (hereinafter “Opposer” or “Caterpillar”) has opposed these applications on the grounds of priority and likelihood of confusion under Section 2(d) of the Act, 15 U.S.C. § 1052(d), and likelihood of causing dilution by blurring under Section 43(c) of the Act, 15 U.S.C. § 1125(c).3 In addition to pleading common law rights in the mark CAT in connection with a wide range of goods and services in the oil and gas industry, including engines of oil and gas wells, both onshore and offshore; engines for use in connection with natural gas mining applications in coal bed methane (CBM), coal mine methane (CMM), and Coal Seam Natural Gas (CSNG) applications, including engines for powering, drilling and production, and well servicing; generators, pipelayers, track-type tractors, hydraulic excavators, motor graders, trucks and generator sets; and onsite support, repair and maintenance, Caterpillar has pleaded ownership of the following trademark registrations: CAT for “dump-wagons, wheel tractor-dump-wagon combinations, and structural parts for such products” in International Class 19; 2 Application Serial No. 77618417 was filed on November 20, 2008, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. On August 13, 2009, Applicant filed an Amendment to Allege Use (AAU) claiming first use anywhere and use in commerce since at least as early as February 28, 2006. 3 See Opposer’s “First Amended Notice of Opposition of February 21, 2012 (16 TTABVue at 10-28 of 124), as approved by the Board on October 1, 2012 (21 TTABVue). This included Opposer’s addition of Registration No. 4045652 as a pleaded registration, and Opposer’s claim of rights in the CAT mark resulting from an acquisition. - 2 - Opposition No. 91193704 “electric generators and diesel electric generator sets, and parts furnished with said products” in International Class 21; “diesel and other internal combustion engines adapted for employment as the source of power for self-propelled vehicles and as stationary or portable power units for industrial, marine and agricultural uses; scraping, carrying and dumping units adapted to be employed for scraping and collecting earth, rock, or like materials and transporting and dumping said materials; power and manually controlled graders, scarifiers, scrapers, and rippers adapted to be employed for the construction and maintenance of roads, for moving and removing of earth, rock, snow and like materials, for preventing soil erosion and for other industrial and agricultural uses; tractors for industrial and agricultural purposes; and parts and service tools furnished with said products” in International Class 23;4 CAT for “motor trucks, dump wagons, wheel tractor-dump wagon combinations, wheel tractors, and parts therefor” in International Class 19;5 CAT for “service, maintenance and repair of trucks, tractors, engines, earthmoving equipment and control units therefor, generators and agricultural equipment” in International Class 37;6 CAT for “lift trucks, and engines, attachments and parts therefor” in International Class 23;7 for “maintenance and repair services in the field of internal combustion engines, vehicles and power equipment; namely trucks, tractors, engines, earthmoving equipment, material handling equipment, paving equipment, agricultural equipment, generators, and control units for the aforementioned” in International Class 37;8 for “machinery for earth moving, earth conditioning and material handling, namely, loaders and engines therefor, and parts for vehicle and internal combustion engines” in International Class 7; “vehicles for earth and material hauling and handling, namely, tractors and engines therefor” in International Class 12;9 for “business management and consultation services, namely, product distribution operations management services; logistics consulting services, namely, providing contract logistics services and consulting in the areas of inventory management freight transportation management, warehouse and product distribution operations management” in International Class 35; “warehousing services” in International Class 39; “design of computerized information systems for managing logistics and 4 Registration No. 0564272 issued on September 23, 1952; fourth renewal. 5 Registration No. 0770639 issued on June 2, 1964; third renewal. 6 Registration No. 0778638 issued on October 13, 1964; third renewal. 7 Registration No. 0984444 issued on May 21, 1974; third renewal. 8 Registration No. 1579437 issued on January 23, 1990; second renewal. 9 Registration No. 2140606 issued on March 3, 1998; renewed. - 3 - Opposition No. 91193704 product distribution processes for others” in International Class 42;10 CAT for “business management and consultation services, namely, product distribution operations management services; logistics consulting services, namely, providing contract logistics services and consulting in the areas of inventory management, freight transportation management, warehouse and product distribution operations management and designing and managing complete logistics solutions for others” in International Class 35; “warehousing services” in International Class 39; “design of computerized information systems for managing logistics and product distribution processes for others” in International Class 42;11 for “hydraulic excavators; mini hydraulic excavators; wheeled excavators; front shovels; backhoe loaders; skid steer loaders; compact wheel loaders; wheel loaders; integrated tool carriers; telescopic handlers; track loaders; wheel tractor-scrapers; track-type tractors; wheel dozers; motor graders; soil compactors; cold planers; road reclaimers; asphalt pavers; vibratory compactors; marine engines; industrial engines; diesel generator sets; gas generator sets; demolition machines and scrap material handlers for use therewith, namely, blades, buckets, crushers, grapplers, hammers, hydraulic brooms, mobile shears, pallet forks; pulverizers, and rakes; log loaders; pipe layers; mining shovels; waste handling machines; and parts for all the above” in International Class 7; “off-highway trucks; articulated trucks; truck engines; agricultural tractors; and parts for all the above” in International Class 12;12 for “attachments, namely, asphalt cutters, hydraulic brooms, vibratory compactors, cutting jaws, multi-processors, tillers, trenchers, all of the foregoing for use with machinery for earth moving, earth conditioning and material handling” in International Class 7;13 for “machinery for earth moving, earth conditioning and material handling, namely, backhoe loaders, track excavators, wheeled excavators, telescoping material handlers, track material handlers, wheeled material handlers, underground mining loaders” in International Class 7;14 10 Registration No. 2364591 issued on July 4, 2000; renewed. 11 Registration No. 2364592 issued on July 4, 2000; renewed. 12 Registration No. 2421077 issued on January 16, 2001; renewed. 13 Registration No. 3525811 issued on October 28, 2008; Section 8 affidavit accepted and Section 15 affidavit acknowledged. The mark consists of yellow trim around the perimeter of the mark, a yellow triangle at the bottom of the word “CAT,” a black background and a red edge at the right-hand side of the mark. The word “CAT” is white. The colors yellow, black, red and white are claimed as a feature of the mark. 14 Registration No. 3525812 issued on October 28, 2008; Section 8 affidavit accepted and Section 15 affidavit acknowledged. The mark consists of a yellow triangle at the bottom of the word “CAT,” a black background and a red edge at the right-hand side of the mark. The word “CAT” is white. The colors yellow, black, red and white are claimed as a feature of the mark. - 4 - Opposition No. 91193704 for “attachments, namely, augers, backhoes, hydraulic brooms, cold planers, compactors, vibratory compactors, crushers, grapples, hammers, pulverizers, pulverizing jaws, rakes, saws, shears, snow blowers, stump grinders,