IP Law Daily, TRADEMARK—TTAB: ‘ZIPCAT’ mark for construction-related mobile apps succumbs to Caterpillar’s opposition challenge, (Sep 11, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

ZIPCAT for online mobile apps for constuction-related services would be confused with famous CAT mark.

In a non-precedential decision, the Trademark Trial and Appeal Board (TTAB) sustained Caterpillar, Inc.'s opposition to the registration of the ZIPCAT mark for construction-related mobile applications. The Board found that the registration of ZIPCAT in connection with downloadable mobile applications and related services in the construction industry would likely cause confusion with Caterpillar's famous and similar CAT mark for related goods with established priority (Caterpillar, Inc. v. Construction Communications & Material App, LLC, No. 91276500 (T.T.A.B. Aug. 22, 2024)).

Background. The opposer, Caterpillar, is a global leader in manufacturing construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. The applicant, CCMA. Construction Communications & Material App, LLC (CCMA), provides downloadable mobile applications for hiring contract work, purchasing construction materials, and operating online marketplaces for construction materials and services.

CCMA filed its trademark application for ZIPCAT on July 9, 2021, seeking registration for goods and services in two international classes. In International Class 9, the application covered downloadable mobile applications for hiring contract work, purchasing construction materials, and general use in the construction industry. In International Class 35, the application sought protection for services related to operating online marketplaces, providing procurement and pricing information, and generating sales leads for construction-related goods and services. The ZIPCAT mark was proposed for use in connection with mobile applications intended to assist contractors and construction professionals in efficiently managing their operations. Caterpillar opposed the registration of ZIPCAT, citing a likelihood of confusion with and dilution of its famous CAT marks under Section 2(d) of the Trademark Act.

Statutory cause of action. Caterpillar established its entitlement to a statutory cause of action based on its ownership of over forty-five live registrations for the CAT mark.

Priority. The Board found that Caterpillar had established priority in the CAT mark through both its trademark registrations and common law rights. Caterpillar's evidence showed that it had used the CAT mark on mobile applications since 2012, well before CCMA's July 9, 2021, filing date. As the applicant did not challenge the priority of Caterpillar's registered marks, the Board determined that priority was not at issue in the case.

Likelihood of confusion. The TTAB, as always, conducted its likelihood of confusion analysis using the factors outlined in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973).

Strength of opposer’s mark. The Board found Caterpillar's CAT mark to be inherently distinctive and commercially strong. Caterpillar’s long-standing and widespread use of the CAT mark in connection with its construction and heavy equipment business contributed to its significant market strength. The fame of a mark increases the likelihood of confusion, especially in related markets. The Board referenced Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1695 (Fed. Cir. 2005), noting that famous marks enjoy broader protection due to their wide recognition. Additionally, the Board highlighted that the commercial strength of Caterpillar’s CAT mark extended beyond heavy equipment, impacting related areas, such as mobile apps and construction services, reinforcing its scope of protection.

Similarity of the marks. Opposer's CAT and applicant's ZIPCAT marks were found sufficiently similar to cause confusion. The Board analyzed the marks' appearance, sound, and meaning, emphasizing that the dominant element in both was "CAT." Although the ZIPCAT mark added the term "zip," the Board found that consumers could perceive it as a product variation of the CAT mark. The Board inferred that this similarity was likely to lead to consumer confusion, especially given the fame of the CAT mark. The Board cited In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012), where the addition of a non-distinctive element to a famous mark did not diminish the likelihood of confusion.

Relatedness of goods and services. The Board concluded that the goods and services offered under the CAT and ZIPCAT marks were highly similar. Both parties operate in the construction industry and offer downloadable mobile applications for construction professionals. Caterpillar's mobile applications, such as the CAT Rental Store app and CAT Inspect app, closely resembled CCMA's ZIPCAT mobile app, which also provided services related to procuring construction materials and hiring contractors.

The Board emphasized that the likelihood of confusion increases when the goods or services are identical or highly related. Citing In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018), the Board noted that the similarity between goods and services weighs heavily in favor of confusion when they serve the same industry or consumers.

Trade channels. Both parties offered goods and services through the same trade channels, particularly mobile app stores like the Apple App Store and Google Play. This overlap in distribution methods, where consumers could encounter both the CAT and ZIPCAT marks in the same context, increased the likelihood of confusion. The Board emphasized that when goods and services are marketed through identical trade channels, there is a higher likelihood that consumers will believe the goods originate from the same source. It also referenced Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990), to highlight that when goods are sold in similar trade channels, consumer confusion is more likely.

Lack of actual confusion. The applicant argued that the lack of evidence of actual confusion between the CAT and ZIPCAT marks should weigh in its favor. However, the Board dismissed this argument, noting that the absence of actual confusion is not dispositive, especially when the coexistence period between the marks is relatively short. The Board relied on Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983), where it was held that a lack of actual confusion does not negate the likelihood of confusion if the marks have not been in concurrent use for an extended period or if there is no evidence of a substantial overlap in consumer exposure.

Extent of third-party use. The applicant submitted evidence of third-party use of marks incorporating the term “cat,” arguing that Caterpillar’s CAT mark was diluted in the marketplace. However, the Board found that the examples presented, such as BOBCAT and ARCTIC CAT, did not weaken Caterpillar’s rights in its CAT mark. The Board noted that two or three similar marks in use in related industries are insufficient to diminish the distinctiveness of a famous mark like CAT. The Board referred to Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1694 (Fed. Cir. 2018), which held that third-party uses must be numerous and widespread to affect a mark's distinctiveness significantly.

Conclusion. Finally, the Board ruled that Caterpillar had successfully demonstrated a likelihood of confusion between its CAT mark and CCMA’s ZIPCAT mark. As a result, the opposition was sustained, and registration of the ZIPCAT mark was refused for both International Classes 9 and 35. The Board did not address the dilution claims, as the likelihood of confusion determination was sufficient to resolve the opposition in Caterpillar’s favor.

The Case is Opposition No. 91276500.

Judge: Thurmon, M.

Attorneys: Richard J. McKenna (Lardner LLP) for Caterpillar, Inc. Stephen D. Schrantz (Schrantz Law Firm, PLLC) for Construction Communications & Material App, LLC.

Companies: Caterpillar, Inc.; Construction Communications & Material App, LLC

Cases: Trademark USPTO