We’re all used to seeing the big Caterpillar industrial machines featuring the word CAT. The CAT mark has been easily recognizable at any construction site throughout America for decades. Because of the brand’s popularity, Caterpillar expanded its use of the CAT mark to include apparel, headwear, bags, and other accessories. Caterpillar sells its clothing through its website and prominent retailers such as Amazon, JCPenney, and Sears. Its products have been featured on national television programs, newspaper and magazine articles, online publications, and fashion and lifestyle publications. However, CAT may have some competition.
Photo by Sindy Süßengut, licensed
A trademark is “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of the others.” In other words, the trademark indicates that the goods/services come from a specific source. A valid trademark is used on goods/services in commerce, and it is distinctive in that it identifies the source of the
On October 9, 2012, Puma obtained a federal registration for its mark, PROCAT, which covers clothing, footwear, and headgear. Registering PROCAT grants Puma the right to use the mark in all 50 states and provides public notice that Puma is the mark owner. Because registration proves ownership, if Puma wants to bring a trademark infringement case to federal court, it wouldn’t need further evidence to establish validity.
On October 6, 2017, Caterpillar, Inc. submitted to its petition to cancel Puma’s registration for the mark PROCAT for footwear and headbands. A cancellation petition can be filed at any time. It allows one party to challenge a trademark because a registered mark is likely to be confused with another party’s mark, the registrant could have obtained the mark fraudulently, the mark is generic, or the registrant is no longer using its mark.
Trademark’s Cancel Culture
The date Caterpillar filed its petition is relevant because, after five years on the Principal Register, Puma can apply to seek incontestable status. The Principal Register is reserved for inherently distinctive marks. These types of marks include those that are: fanciful (made up words such as Pepsi, Xerox, and Exxon), arbitrary (marks that use ordinary words but applied to an unrelated good/service such as Apple for computers and Lotus for software), and suggestive (marks that suggest a feature of the good/service such as AIRBUS for airplanes and NETFLIX for streaming services). Once the mark is on the principal register, you’re the presumed owner of that mark in all 50 states. You are also granted all rights that come along with being federally registered.
Incontestable status means that Caterpillar cannot assert that PROCAT is descriptive without secondary meaning. Descriptive marks identify a characteristic or quality of a product/service, such as color, odor, function, and ingredients. To be registerable, descriptive marks must have a secondary meaning (the public explicitly associates the mark with a source). For example, “Built to Last” is descriptive because it describes a quality. It also has a secondary meaning because the public associates the mark with the Ford Motor Company.
Caterpillar argues that consumers will be confused about the source of the parties’ goods because Caterpillar’s and Puma’s marks are identical or closely related. Additionally, Caterpillar argues that Puma’s PROCAT mark will dilute the distinctiveness of Caterpillar’s famous CAT mark.
Photo by Marian G Ruggiero, licensed
Who’s The Big Cat?
Federal dilution is a way to hold a person liable for using the same or similar mark. Dilution occurs either by blurring or tarnishment. Dilution by blurring occurs when a mark is impaired by association with another similar mark. For example, a local coffee shop sells a “dark roasted blend” of coffee called “Charbucks,” which is similar to “Starbucks.” This case concerns dilution by blurring because Puma’s mark will dilute the distinctiveness of Caterpillar’s mark. The potential harm to Caterpillar is from the weaker connection between consumers and Caterpillar after encountering Puma’s mark. Caterpillar’s CAT and Puma’s PROCAT marks are similar because they contain “CAT.” Although Puma includes “pro” in its mark, the fact that both marks have the same word is enough to establish a lesser value associated with Caterpillar’s mark.
Since the CAT mark is descriptive, it requires secondary meaning. Caterpillar has done much to promote the mark by featuring it on national television programs, in newspaper and magazine articles, online publications, and in fashion and lifestyle publications. Consumers know the CAT mark because, for decades, Caterpillar has used it on their industrial machines at construction sites throughout America. So even if Caterpillar decided to branch out and use the mark on clothing, consumers would associate and recognize the mark as a source indicator of Caterpillar’s products. Thus, it has acquired a secondary meaning.
The extent to which Caterpillar engages in the substantially exclusive use of the CAT marks considers all classes of goods/services. As stated earlier, Caterpillar has spent a lot of money promoting its mark so that consumers associate CAT with its products. However, Caterpillar isn’t the only company that uses a trademark featuring the word “CAT.” According to the USPTO, thousands of registered marks feature the word “CAT.” The more entities that use a similar mark featuring the word “CAT,” the less of a case Caterpillar has for claiming substantially exclusive use.
Tying It All Up
There is enough similarity between the marks. Since the Caterpillar mark is descriptive with secondary meaning, these factors are in its favor. However, it may be difficult for Caterpillar to establish blurring because it doesn’t have substantially exclusive use of marks featuring the word “CAT.” This case illustrates the importance of performing trademark due diligence. Careful analysis of existing marks is critical before registration. In federal court, with similar facts, a defendant may owe monetary compensation for the infringing activity. Puma’s financial compensation for infringing Caterpillar’s mark may be pennies compared to the company’s yearly revenue. However, what if these were small businesses or another business that purchased the trademark portfolio without assessing the risk and potential exposure associated with this acquisition? The financial burden may cripple the business long-term. That should be an incentive to ensure that before anyone looks to register a mark, it determines the validity and potential consequences to make the right decision.
Loyola University Chicago School of Law, J.D. 2024