IP Law Daily, TRADEMARK—TTAB: Puma’s PROCAT likely to cause confusion with Caterpillar’s CAT for footwear, (Apr 12, 2023)

By Linda O’Brien, J.D., LL.M.

Puma’s PROCAT mark looked, sounded, and conveyed the commercial impression of being a line extension of Caterpillar’s CAT mark when the marks were both used for footwear.

In a petition by construction equipment manufacturer Caterpillar to cancel the registration of the PROCAT mark owned by footwear maker Puma, the Puma mark was sufficiently similar to Caterpillar’s CAT mark as to create a likelihood of confusion by consumers when used in connection with footwear, the Trademark Trial and Appeal Board has determined. While there were some differences between PROCAT and CAT in appearance, sound, and commercial impression, those differences were outweighed by the marks’ similarities, particularly when considering the identity of the goods with which the marks were used. Thus, the petition for cancellation was granted (Caterpillar Inc. v. Puma SE, April 6, 2023, Larkin, C.).

Caterpillar Inc. (Petitioner) is a global manufacturer of construction and mining equipment, gas engines, industrial gas turbines, and diesel-electric locomotives. The Petitioner adopted the CAT brand in 1949 and it has been the company’s primary public-facing brand name since that date. The company has extended the use of the CAT brand to a variety of other products, including footwear and apparel. Puma SE (Respondent) designs and manufacturers athletic and casual footwear, apparel, and accessories.

The Respondent owns Registration No. 4220096 for the stylized mark “PROCAT,” which was issued in October 2012 for “Clothing, namely socks; footwear; headbands” in International Class 25. Caterpillar seeks to cancel Puma’s registration on three grounds: (1) the Respondent’s registered mark so resembles the Petitioner’s CAT marks as to be likely to cause confusion when used in connection with the goods identified in the registration; (2) the Petitioner’s CAT mark is famous and the Respondent’s registered mark is likely to dilute the Petitioner’s mark by blurring; and (3) the Respondent abandoned its registered mark through non-use with the intent not to resume its use.

Likelihood of confusion. Based on the cumulative effect of the similarities between the marks and the similarities between the respective goods, there was a likelihood of confusion, the Board found. Section 2(d) of the Trademark Act prohibits the registration of a mark that consists of or comprises a mark which so resembles a registered mark or trade name previously used in the U.S. by another and not abandoned as to be likely, when used in connection with the goods of the applicant, to cause confusion, cause mistake, or to deceive. The registrations of the Petitioner and Respondent both cite goods identified as “footwear.” There were no limitations on the footwear identified in the parties’ registrations. Thus, the identical goods in the two registrations are presumed to travel in the same channels of trade to the same classes of purchasers.

According to the court, the Respondent’s PROCAT mark “looks, sounds, and conveys the impression of being a line extension of” the Petitioner’s CAT mark when the marks are both used for footwear. While there are some differences between the CAT and PROCAT marks in appearance, sound, and commercial impression, those differences are outweighed by the marks’ similarities. The Respondent’s argument that the CAT mark is inherently weak because the letters “c-a-t” have been registered by many third parties in Class 25 as an element of a larger trademark and the use of the letters with the Caterpillar stylized logo did not carry a robust source identification was rejected. While third-party registrations may bear on conceptual weakness if CAT was commonly registered for similar goods and services, there were at most nine third-party registrations of “varying probative value” and this was insufficient to show the conceptual weakness of the word CAT in the Petitioner’s mark with respect to footwear, the court noted. Also rejected was the Respondent’s characterization of its PROCAT mark as a unitary mark. It was undisputed that PROCAT did not have any dictionary meaning and was an artificial name. As a result, it was appropriately considered a compound mark that contained multiple identifiable elements and CAT should be given greater weight in determining the connotation and commercial impression of the Respondent’s mark.

When comparing the two marks, it was obvious that the Respondent’s PROCAT mark was similar to the Petitioner’s CAT mark as it incorporated the entirety of the Petitioner’s mark, the court stated. The CAT mark was registered in standard character form for its footwear and apparel products, which may be presented in any font style, size or color, including the same font style, size and color as the literal portions of the Respondent’s mark. With respect to connotation and commercial impression, the Respondent’s argument that the word CAT had different meanings – a feline and a non-feline meaning - in the two marks was rejected. There was no evidence that purchasers of footwear understood that the Petitioner’s CAT marks were never associated with felines and the issue was whether CAT and PROCAT were confusingly similar when used on identical goods. Looking “within the four corners of the involved registrations,” the CAT and PROCAT marks were quite similar in meaning when used in connection with identical goods and the common term “cat” created the same commercial impression.

Sales and advertising figures established the strength of the Petitioner’s CAT mark for footwear. The Petitioner presented evidence that it used it’s CAT marks in connection with footwear for more than 40 years. Millions of pairs of CAT-branded boots and shoes were sold in the United States since 2001. The licensed footwear is advertised on various websites which are visited by millions of users each year, sold in retail stores, marketed on various social media sites, and promoted on thousands of billboards, banner ads, direct mailings, product catalogs and brochures, which each prominently feature the CAT mark and/or CAT logo. Between 2001 and 2019, the annual sales generated revenues in the low to mid eight figures and aggregate revenues well into nine figures. The evidence clearly showed the commercial strength of the CAT mark for footwear, the court noted.

Finally, the goods, channels of trade, and classes of consumers were identical, the CAT and PROCAT markers were similar, the Petitioner’s CAT mark for footwear had conceptual strength, and the significant commercial strength of the footwear was strong. Caterpillar established by a preponderance of the evidence that it was entitled to bring a statutory cause of action, had prior use of its registered CAT mark for footwear, and consumers familiar with its mark who encountered the Respondent’s PROCAT mark for identical goods would likely mistaken footwear sold under the CAT and PROCAT marks to come from a common source. Those factors collectively established a likelihood of confusion arising from the Respondent’s registration of its PROCAT mark for footwear, the court concluded.

Concurring opinion. Administrative Trademark Judge Elizabeth Dunn agreed with the majority’s decision to grant the petition for cancellation but wrote separately to diverge from the majority’s finding to impute strength to the standard character mark based on evidence that the CAT design mark for footwear was strong. She concluded that Caterpillar’s standard character mark was entitled only to the scope of protection accorded to an inherently distinctive mark.

The Case is Cancellation No. 92067079.

Attorneys: Naresh Kilaru (Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.) for Caterpillar Inc. Johanna M. Wilbert (Quarles & Brady LLP) for Puma SE.

Companies: Caterpillar Inc.; Puma SE

Cases: Trademark USPTO