Caterpillar Inc.v.Rodney C. Kelly

Trademark Trial and Appeal Board

Sep 30, 2015

No. 91210124 (T.T.A.B. Sep. 30, 2015)

Hearing: Mailed: April 15, 2015 September 30, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Caterpillar Inc. v. Rodney C. Kelly _____ Opposition No. 91210124 to Serial No. 85710127 _____ Christopher P. Foley and Naresh Kilaru of Finnegan, Henderson, Farabow, Garrett & Dunner for Caterpillar Inc. John S. Egbert, Kevin S. Wilson and Michael F. Swartz of Egbert Law Offices PLLC for Rodney C. Kelly. _____ Before Quinn, Zervas and Taylor, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Rodney C. Kelly (“Applicant”) seeks registration on the Principal Register of the standard character mark PETRACAT for “oil and gas well testing; engineering This Opinion is Not a Precedent of the TTAB Opposition No. 91210124 2 services in the field of oil and gas well testing; consulting in the field of engineering” in International Class 42.1 Registration has been opposed by Caterpillar Inc. (“Opposer”) on the grounds of priority and likelihood of confusion under Section 2(d) of the Act, 15 U.S.C. §1052(d) and dilution under Section 43(c) of the Act, 15 U.S.C § 1125(c). Opposer particularly alleges prior common law use of the CAT mark to identify a wide range of goods and services in the oil and gas industry, including engines for oil and gas drilling and production, well servicing, pumps, and compression applications, generators, engine driven generator sets (gensets), pipelayers, track-type tractors, hydraulic excavators, motor graders, trucks, GPS (“global positioning system”) and laser-based guidance systems for automated rock recognition to ensure accurate drill management, and onsite support, repair and maintenance services. Opposer further alleges that its CAT-branded engines have drilled the vast majority of the world’s oil and gas wells for years - both on shore and off shore; that it renders maintenance and repair and support services for its products in connection with its CAT name and mark and that it offers consulting services, including technical consulting, related to a wide range of its products under the CAT name and mark. Opposer also has pleaded ownership of the following registrations: Reg. No. Mark Goods and Services 05642722 CAT Dump-wagons, wheel tractor-dump-wagon combinations, and structural parts for such products in Class 7; 1 Application Serial No. 85710127 was filed on August 22, 2012, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. Opposition No. 91210124 3 Electric generators and diesel electric generator sets, and parts furnished with said products in Class 12; and 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 Class 7 07706393 CAT Motor trucks, dump wagons, wheel tractor-dump wagon combinations, wheel tractors, and parts therefor in Class 12 07786384 CAT Service, maintenance and repair of trucks, tractors, engines, earthmoving equipment and control units therefor, generators and agricultural equipment in Class 37 09844445 CAT Lift truck, and engines, attachments and parts therefor in Class 7 15794376 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 Class 37 2 Issued September 23, 1952; fourth renewal, and claiming February 17, 1949 as the date of first use anywhere and in commerce of the “dump wagons, wheel tractor-dump-wagon combinations, and structural parts for such products” identified in Class 7, December 6, 1948 as the date of first use anywhere and in commerce of the remaining Class 7 goods and December 9, 1948 as the date of first use anywhere and in commerce of the Class 12 goods. 3 Issued June 2, 1964; third renewal, and claiming February 17, 1949 as the date of first use anywhere and in commerce. 4 Issued October 13, 1964; third renewal; and claiming 1951 as the date of first use anywhere and in commerce. 5 Issued May 21, 1974; third renewal, and claiming January 30, 1973 as the date of first use anywhere and in commerce. 6 Issued November 7, 1988; second renewal, and claiming October 20, 1988 as the date of first use anywhere and in commerce. Opposition No. 91210124 4 21406067 Machinery for earthmoving, earth conditioning and material handling, namely, loaders and engines therefor, and parts for vehicle and internal combustion engines; vehicles for earth and material hauling and handling, namely, tractors and engines therefor in Class 7 23645928 CAT 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 Class 35; Warehousing services in Class 39; and Design of computerized information systems for managing logistics and product distribution processes for others in Class 42 23645919 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 Class 35; Warehousing services in Class 39; and Design of computerized information systems for managing logistics and product distribution processes for others in Class 42 242107710 Hydraulic excavators; mini hydraulic excavators; wheeled excavators; front shovels; backhoe loaders; skid steer loaders; compact wheel loaders; wheel loaders; integrated toolcarriers; 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; combines; pipelayers; mining shovels; waste handling machines; and parts for all the above in Class 7; and 7 Issued March 3, 1998; renewed, and claiming July 13, 1998 as the date of first use anywhere and October 20, 1988 as the date of first use in commerce. 8 Issued July 4, 2000; renewed, and claiming December 1996 and the date of first use anywhere and in commerce for all classes of services. 9 Issued July 4, 2000; renewed, and claiming December 1996 and the date of first use anywhere and in commerce for all classes of services. 10 Issued January 16, 2001, renewed, and claiming July 13, 1988 and the date of first use of the mark anywhere and October 20, 1988 as the date of first use of the mark in commerce. Opposition No. 91210124 5 Off-highway trucks; articulated trucks; truck engines; agricultural tractors; and parts for all the above in Class 12 352581111 Attachments, namely, asphalt cutters, hydraulic brooms, vibratory compactors, cutting jaws, multiprocessors, tillers, trenchers, all of the foregoing for use with machinery for earthmoving, earth conditioning and material handling in Class 7 352581212 Machinery for earthmoving, 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 Class 7 354193913 Attachments, namely, augers, backhoes, hydraulic brooms, cold planers, compactors, vibratory compactors, crushers, grapples, hammers, pulverizers, pulverizing jaws, rakes, saws, shears, snow blowers, stump grinders, all of the foregoing for use with machinery for earthmoving, earth conditioning, and material handling in Class 7 404565214 Non-electric cables and wires of common metals; pipes and tubes of metal; metal pipe clips, metal pipe nipples, metal pipe collars, metal pipe extensions; parts for land vehicles, agricultural machinery, and earthmoving machinery, namely, metal gaskets for machinery and land vehicles, metal pipe connectors, metal pipe fittings, metal cylinders for compressed gas or liquids sold empty in Class 6; 11 Issued October 28, 2008; Section 8 and 15 combined affidavit; accepted and acknowledged, and claiming January 2, 2007 as the date of first use of the mark anywhere and in commerce. The registration includes the following statements: “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 in white. The color(s) yellow, black, red and white is/are claimed as a feature of the mark.” 12 Issued October 28, 2008; Section 8 and 15 combined affidavit; accepted and acknowledged, and claiming January 2, 2007 as the date of first use of the mark anywhere and in commerce. The registration includes the following statements: “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 in white. The color(s) yellow, black, red and white is/are claimed as a feature of the mark.” 13 Issued December 2, 2008; Section 8 and 15 combined affidavit; accepted and acknowledged, and claiming August 20, 2007 as the date of first use of the mark anywhere and in commerce. The registration includes the following statements: “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 in white. The color(s) yellow, black, red and white is/are claimed as a feature of the mark.” 14 Issued October 25, 2011. The registration includes the following description: “The mark consists of a rectangular shape with a diagonal edge, containing the word ‘CAT’ with a triangle below the letter ‘A.’” Color is not claimed as a feature of the mark. We note, too, that the registration includes both additional goods in Classes 6, 7, 9, 17 and 20 and additional classes of goods. Only those goods highlighted in Opposer’s brief are set forth above. Opposition No. 91210124 6 Motors and engines not for land vehicles; valves being parts of machines; electric pumps; excavators; bulldozers; earthmoving machines, namely, loaders; feller bunchers; earthmoving machines, namely, scrapers; asphalt paving machines; cutting machines; vibratory soil compactors, soil compactors, vibratory asphalt compactors, and pneumatic compactors; forestry machines, namely, skidders; oil, air, and gas filters for motors and engines; belts for machines; blades as machine parts; steam rollers, being parts of machines; power-operated lifting and moving equipment, namely, pipe laying machines; attachments for vehicles, namely, grapple buckets for moving earth and loose objects; hydraulic jacks; electric welding machines; pavement profilers; earthmoving machines, namely, scarifiers, motor graders; combustion engine fuel nozzles; water separators for use in engines; fuel heaters for engines; power-operated cultivators and harvesters; agricultural machines, namely, threshers; road heading machines, tunnel heading machines, cold heading machines; agricultural machines, namely, reapers; hay binding machines; agricultural machines, namely, mowing machines, and tractor-towed harrows; ploughs and tractor-towed hay rakes; agitators for circulating liquid media; air condensers; alternators for land vehicles; compressed air pumps; compressors for machines; current generators; milling cutters; cutting machines, drilling bits being parts of machines; drilling heads being parts of machines; drilling machines, gear grinding machines; precision grinding machines; guards being parts of machines; hammers being parts of machines; pneumatic hammers; handling apparatus, namely, loading and unloading machines; hoists; hoppers for mechanical discharging; power jacks; lawnmowers; lift belts; lifting installation for the transport of goods; powered loading ramps in the form of conveyors; lubricating pumps; metal working machines; pneumatic transporters; pulleys being parts of machines; electric pumps; rammers; reduction gears other than for land vehicles; mechanical power shovels; shaft couplings for machines, bearings for transmission shafts being parts of machines; spraying machines; superchargers for motors and engines; threading machines; threshing machines; transmission chains and shafts, other than for land vehicles; transmissions for machines; turbines other than for land vehicles; turbocompressors; vehicle washing installations; vulcanization machines; waste disposers being parts of machines; watering machines for agricultural purposes; parts and fittings for all the aforesaid goods sold as a unit with the goods; mechanical engine parts for land vehicles, agricultural machinery, and earthmoving machinery, namely, starting motors, alternators, pistons, cylinder heads, cooling systems parts, turbochargers, lubricating systems parts, air compressors, and blocks; crank shafts for engines, engine camshafts, engine bearings; mufflers for engines and motors; engine exhaust caps; exhaust silencers for engines; radiators and radiator caps for vehicles; exhausts for engines; hand-held gas welding apparatus, namely, heat welding guns; electric cutting torches in Class 7; Computer hardware and software for sensing and recording operational data to monitor the performance and maintenance needs of vehicles, equipment, and machinery used for earthmoving, earth conditioning, Opposition No. 91210124 7 material handling, construction, mining, paving, agriculture, and forestry; welding apparatus, namely, welding respirators, welding helmets, welding goggles, welding jackets, welding gloves, welding coats, and welding blankets; electronic and optical communications instruments and components, namely, digital transmitters, electronic control systems for machines, global positioning systems, laser object detectors for use on vehicles, navigation apparatus for vehicles in the nature of on-board computers, radios for vehicles, voltage regulators, voltage stabilizers, and voltmeters; machine parts, namely, control mechanisms for machines, engines, or motors; fuel/air ratio controls for engines; speed governors for machines, engines, and motors. in Class 9; Land vehicles; tractors and tractor engines; haulage trucks and trailer wagons; vehicle chassis; tires for vehicle wheels; vehicle wheels; vehicle parts, namely, tracks; trucks; dump trucks; land vehicles incorporating loading, compacting, pipe laying, and grading apparatus; tire valves for vehicle tires; air pumps for vehicles; hydraulic apparatus for use in moving work tools attached to vehicles and not for engines or motors, namely, hydraulic drives, hydraulic gears, hydraulic pumps, and hydraulic shock absorbers; parts and fittings for land vehicles, namely, engines, connecting rods for vehicles other than parts of motors and engines, transmissions for land vehicles, and structural, repair, and replacement parts therefor in Class 12; Non-metal seals for use on pipe joints and flanges; coupling and joints not of metal; rings of rubber or of plastic for use as pipe connection seals; sealing plugs made primarily of rubber; parts and fittings for all the aforesaid goods sold as a unit with the goods; pipe sealant for use in sealing pipe joints and fittings in Class 17; and Valves of plastic, other than machine parts in Class 20. Applicant, in its answer, has denied the salient allegations in the notice of opposition. Applicant admitted that he is affiliated with PetraCat Energy Services, LLC.15 I. Preliminary Matters Evidentiary Objections - Adequacy of Pleadings vis-à-vis Scope of Arguments and Evidence 15 Applicant’s first affirmative defense is hereby stricken inasmuch as the notice of opposition clearly states claims upon which relief can be granted. As to the remaining “affirmative defenses,” they are more in the nature of amplifications of Applicant’s denials and are treated as such. Opposition No. 91210124 8 Applicant has made several “evidentiary objections” stemming from his contention that Opposer failed to properly plead and prove use of the CAT mark on goods and services not recited in the pleaded registrations. The objections are as follows: In numerous instances throughout its Trial Brief, the Opposer has improperly interjected references to Opposer conducting “well servicing services” and other services that were not plead in the Opposer’s Notice of Opposition.16 … The Opposer did not plead any common laws uses of the term “CAT” for use with any other services [i.e., not recited in Opposer’s pleaded registration].17 … [E]ven if Mr. Stembridge had testified that Caterpillar offers “well servicing,” that testimony would be improper, because those services were never plead in the Opposer’s Notice of Opposition.18 Pursuant to Trademark 2.104 (a) “[t]he opposition must set forth a short and plain statement showing why the opposer believes he, she or it would be damaged by the registration of the opposed mark and state the grounds for opposition.” The elements of each claim should be stated concisely and directly, and include enough detail to give the defendant fair notice. See Fed. R. Civ. P. 8(e)(1); see also Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570, 1571 (since function of pleadings is to give fair notice of claim, a party is allowed reasonable latitude in its statement 16 15 TTABVUE 11. 17 15 TTABVUE 13. 18 15 TTABVUE 14. Opposition No. 91210124 9 of its claims). A review of the notice of opposition shows that besides specifically pleading use of the CAT mark in connection with “well servicing,” Opposer additionally pleaded common-law use of the CAT mark for a variety of goods and services in the oil and gas industry. We note particularly the following allegations: 3. Opposer also uses the CAT mark to identify a wide range of goods and services for use in the oil and gas industry, including engines for oil and gas drilling and production, well servicing, pumps, and compression applications, generators, engine driven generator sets (gensets), pipelayers, track-type tractors, hydraulic excavators, motor graders, trucks, GPS (“global positioning system”) and laser based guidance systems for automated rock recognition to ensure accurate drill management, and onsite support, repair and maintenance.19 4. Opposer uses the CAT mark in connection with products and services in connection with oil and gas mining applications. For example, at the Barnett Shale natural gas site near Fort Worth, Texas, Opposer’s CAT engines are used on drilling rigs, and more than 500miles of pipeline have been laid to transport gas from the gas field using CAT pipelayers and other CAT equipment.20 5. In addition, CAT products and services are used particularly in oil and gas applications, including engines for powering drilling and production, well servicing, pumps, and compression applications, generators, pipelayers, track-type tractors, hydraulic excavators, motor graders, trucks, and gensets, and onsite support, repair and maintenance services. Opposer has also participated in oil and gas conferences and events.21 19 1 TTABVUE 14. 20 Id. 21 Id at 14-15. Opposition No. 91210124 10 6. Opposer’s CAT-branded engines have drilled the vast majority of the world’s oil and gas wells for years - both on shore and offshore.22 7. Opposer is engaged in the advertising and rendering of maintenance, repair, and support services for its products in connection with its CAT name and mark. Opposer also offers consulting services, including technical consulting, related to a wide range of its products and services under the CAT name and mark.23 22. Opposer, itself or through its predecessors-in- interest, related companies, or licensees, has continuously and extensively used the CAT name and mark in commerce in connection with the sale and advertising of the goods and services covered by the registrations listed above, as well as with a wide variety of other goods and services, including but not limited to, those products and services listed in Paragraphs 2 through 19 above, (cumulatively, “Opposer’s Products and Services”), still well before the filing date of the application for Applicant’s PetraCat Mark, and/or any dates of first use that may be established by Applicant for its PetraCat Mark.24 By these allegations, Opposer has adequately pleaded, and Applicant was given fair notice of, Opposer’s intent to rely on its common law use of the CAT name and mark on and in connection with well-servicing and the remaining above-enumerated goods and services in the oil and gas industry. Accordingly, Opposer’s objections are overruled and we will consider the arguments and evidence presented by Opposer on its common law claims in our decision. As regards Applicant’s contention that Opposer failed to prove its common law use of the CAT mark, we will discuss our findings thereon, in detail, infra. 22 Id. at 15. 23 Id. 24 Id. at 29. Opposition No. 91210124 11 Sanctions As part of its response in opposition to Applicant’s objections, Opposer, in its reply brief at footnote 1, intimates that given the “blatant nature of Applicant’s misrepresentations to the Board” as to Opposer’s asserted failure to plead use of the CAT mark in connection with “well servicing,” the Board has the discretion to consider whether sanctions are warranted”25 under Fed. R. Civ. P. 11, or its inherent authority to manage cases on its docket. The power to enter sanctions, whether under Rule 11 or under the Board’s inherent authority, must be exercised with restraint. Carrini Inc. v. Carini SRL, 57 USPQ2d 1067, 1071-72 at fn. 3 citing to Chambers v Nasco, Inc. 501 U.S. 32, 44 (1991). Here, we do not find Applicant’s failure to fully appreciate the breadth of the common law claims set forth in the notice of opposition, and his zealous advocacy to persuade the Board to decline to consider argument and evidence regarding what he perceives, albeit wrongly, as an unpleaded claim, warrant entry of Rule 11 or other sanctions. II. The Record26 By operation of Trademark Rule 2.122, 37 CFR §2.122, the record includes the pleadings and the file of the subject application. The record also includes the following testimony and evidence: Opposer’s Evidence 25 16 TTABVUE 7. 26 Citations to the record throughout the decision include references to TTABVUE. The number preceding “TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the page number(s) of that particular docket entry. Portions of the record have been designated “confidential” and have been treated as such. All citations to the record refer to the redacted, publicly available versions of each submission. Opposition No. 91210124 12 1. The testimony deposition, with exhibit Nos. 1-19, of Roger Edward Stembridge (“Stembridge test.”), a marketing professional with a specialty in product and parts branding. 2. Opposer’s first notice of reliance on Applicant’s responses to Opposer’s first set of interrogatories, Nos. 1, 7, 8 and 11. 3. Opposer’s second notice of reliance on various Internet materials, namely: (i) web pages from Opposer’s website showing use of the CAT mark in connection with services in the oil and gas industry. (Exs. 1 and 3); (ii) a research report from Morgan Stanley (Ex. 2);27 and (iii) an article from HPP INSIGHT concerning Opposer’s joint venture with Ariel Corporation (Ex. 4). 4. Opposer’s rebuttal notice of reliance on: (i) definitions from online dictionary sites showing the meaning of “petro-,” “petr-,” and “petroleum” (Ex. 1); (ii) web pages showing that the term PETRA- is commonly used by companies in the oil & gas industry (Ex. 2); (iii) web pages from Applicant’s website at www.petracat.com showing his involvement in the oil and gas industry (Ex. 3); and (iv) web pages showing Opposer’s use of its CAT mark in the oil and gas industry and/or Opposer’s involvement in the oil and gas industry (Ex. 4). Applicant’s Evidence 1. Applicant’s first notice of reliance on third-party registrations for marks that include the term “CAT” (“in its various forms and permutations”) (Ex. A). 2. Applicant’s second notice of reliance on web pages from Applicant’s website (Ex. B). 3. Applicant’s third notice of reliance on: 27 Although this type of information is not generally acceptable via notice of reliance, we note it was also made of record via the Stembridge deposition. Opposition No. 91210124 13 i. an entry from Wiktionary for “petra” (Ex. C); ii. an entry from Wikipedia for “petra” (Ex. D); and iii. an entry from biblehub.com for “petra” (Ex. E). III. The Parties Opposer Opposer is a manufacturer of construction equipment, including earthmoving equipment, engines, and generator sets (gen sets) for use in, among others, the oil and gas industry. Opposer’s CAT marks have been used continuously on construction equipment, including large machinery, since the late 1940’s. Opposer started its petroleum division in the late 1960’s offering, under its CAT mark, engines, transmissions, generators and gen sets used to power oil and gas well operations. In addition to CAT-branded earthmoving equipment and other heavy equipment, such as track type tractors, excavators, motor graders, pipelayers and trucks, all of which would be used to prepare a well site, Opposer has a line of CAT- branded well fracking pumps and surface drill rigs and engines used for onshore drilling of bore holes and in fracking operations. Opposer also offers extensive CAT- branded onsite support, repair, and maintenance services tied to its products that are used in connection with well servicing.28 28 Stembridge test., 12 TTABVUE at 14- 29. See also, ex. 5, (a brochure titled “Cat® Power Solutions” with a copyright date of 2009); ex. 9 (web pages from Opposer’s website at www.cat.com/oil-and-gas concerning Opposer’s oil and gas operations); ex. 11 (a brochure titled “Transmissions for the Petroleum Industry” with a copyright date of 2011); ex. 12 (a brochure titled “Power Solutions Cat® Generator Sets for Petroleum Applications” with a copyright date of 2008); ex. 13 (a brochure titled “3500C Cat® Engines for Petroleum Applications” with a copyright date of 2010); and ex. 14 (a brochure titled “Petroleum Custom Solutions Engineered for All Your Petroleum Needs” with a copyright date of 2008). We note in particular that the highlighted exhibits to the Stembridge testimony, as well as Opposition No. 91210124 14 Applicant According to Applicant’s website, “[i]n the 21st century, the global oilfield is a small place.”29 Applicant “is a global company providing a method of data collection and analysis that is fast, accurate, cost effective, and risk free.30 IV. Discussion Standing Opposer has demonstrated through the USPTO database printouts made of record with its notice of opposition that it is the owner of its pleaded registrations and that those registrations are valid and subsisting. Because Opposer’s registrations are properly of record, Opposer has established its standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Priority Because Opposer has properly made of record its pleaded registrations, priority of use is not an issue in the opposition with respect to its CAT mark as to the goods and services listed in those registrations. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). However, with respect to its claim of common law use of the CAT mark in connection with various Exhibit 1 to Opposer’s Notice of Reliance No. 2 (7 TTABVUE 6-17), discuss, in detail, Opposer’s well servicing products and services. We further note that Applicant offered no testimony or other evidence concerning any use of its mark prior to the filing date of its involved application. 29 9 TTABVUE 8. 30 Id. Opposition No. 91210124 15 goods and services in the oil and gas industry, the mark must be distinctive, inherently or otherwise, and Opposer must show priority of use. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Applicant has not raised an issue as to the distinctiveness of Opposer’s common law CAT mark or otherwise put Opposer on notice of this defense, and we know of no reason why the mark would not be distinctive, we therefore find that the mark is inherently distinctive. See Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (absent argument or evidence from applicant, opposer’s mark is deemed distinctive). We further find that through the deposition of Roger Stembridge, Opposer has demonstrated that, prior to Applicant’s filing date,31 Opposer used its CAT mark in connection with various goods and services in the oil and gas industry, including engines for oil and gas drilling and production, pumps, and compressors, generators, engine driven generator sets (gensets), pipelayers, well fracking pumps, surface drill rigs and engines which are used for off shore drilling and onshore drilling and fracking, and well servicing. See discussion, infra. We turn next to the issue of likelihood of confusion. Likelihood of Confusion Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 31 An applicant may rely on the filing date of its application to establish constructive use. Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (“applicant may rely without further proof upon the filing date of its application as a ‘constructive use’ date for purposes of priority”). Opposition No. 91210124 16 (CCPA 1973) (“du Pont”). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “Not all of the du Pont factors are relevant to every case, and only factors of significance to the particular mark need be considered.” In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). The parties presented evidence and argument on the du Pont factors of fame, the relationship between the goods and services and their respective channels of trade and classes of consumers, the conditions under which and buyers to whom sales are made, the similarities and dissimilarities of the marks, the number and nature of similar marks in use on similar goods or services, and whether there has been actual confusion. a. Fame We begin our likelihood of confusion analysis with the fifth du Pont factor, which requires us to consider evidence of the fame of Opposer’s mark and to give great weight to such evidence if it exists. See Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Fame of an opposer’s mark or marks, if it exists, plays a “dominant role in the process of balancing the DuPont factors,” Recot, 214 F.3d at 1327, 54 USPQ2d at 1456, and “[f]amous marks thus enjoy a wide latitude of legal protection.” Id. This is true as famous marks are more likely to be remembered and associated in the public mind than a weaker mark, and are thus more attractive as targets for would-be copyists. Id. Indeed, “[a] strong mark Opposition No. 91210124 17 … casts a long shadow which competitors must avoid.” Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d at 1456. A famous mark is one “with extensive public recognition and renown.” Id. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305. Any doubts as to the registrability of an Applicant’s mark must be resolved in favor of the prior registrant of a famous mark. See Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984) (“When balancing the interest in a famous, established mark against the interests of a newcomer, we are compelled to resolve doubts against the newcomer.”). In assessing fame, we consider all relevant evidence, including sales under the mark, advertising, and length of use of the mark. du Pont, 177 USPQ at 567. However, some context in which to place raw statistics may be necessary. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1309. We find that the record clearly demonstrates the fame of Opposer’s CAT marks, including in the oil and gas industry.32 Opposer owns one registration for the mark CAT that issued in 1957, claiming use since the 1940’s in connection with heavy machinery. In addition, the record shows that the CAT mark has been in use in commerce for more than 60 years and, since the 1960’s when Opposer started its oil and gas division, Opposer has offered a wide variety of CAT-branded oil and gas products and services, including CAT-branded engines and transmissions, which have been used to drill the majority of the world’s oil and gas wells. Hundreds of 32 We make this finding based on the record in this case, and not on the federal court and TTAB decisions previously finding Opposer’s CAT mark to be famous. Nonetheless, we point out that the Board recently found, on a similar record, the CAT mark to be famous in the oil and gas industry. Opposition No. 91210124 18 CAT machines and engines are currently being used for the Barnett Shale natural gas site outside Fort Worth, Texas, which is expected to become the largest producing natural gas field in the United States.33 Opposer also claims fame through the tens of thousands of its black-and- yellow vehicles - all prominently displaying the CAT mark - present across the United States. Opposer has also promoted its CAT mark via an extensive licensing program for over a decade that has generated revenues in the “many” millions of dollars, with its CAT-branded products and services encompassing a myriad of collateral products and services, ranging from clothing, footwear, and headwear to financial services.34 Over the years, Opposer has sold hundreds of billions of dollars’ worth of products and services under the CAT mark. Over the last five years alone, the sale of CAT-branded products and services has generated over $200 billion in revenues globally, and revenues in the tens of billions of dollars in the United States.35 For a five-year period preceding the submission of its testimony, and prior to the filing date of the involved application, Opposer spent hundreds of millions of dollars in advertising and promoting its CAT-branded products - many millions of which were spent advertising and promoting products and services in the oil and gas industry.36 Opposer advertises and promotes its CAT-branded products and 33 Stembridge test., 11 TTABVUE 14-15, 25, 29, 31, 40 and ex. 6. 34 Id. at 16, 19-21. 35 Id. at 18. 36 Id. at 19; exs. 2, 5, 7, 8, 10-14 and 17) Opposition No. 91210124 19 services via the Internet, print publication, including the New York Times and The Wall Street Journal, and industry trade shows. With respect to the Internet, the CAT mark and name is prominently displayed at the top of each page of Opposer’s website at www.cat.com (including the oil and gas section of the website at www.catoilandgas.com), and that website is visited by many millions of users each year.37 Opposer uses the CAT mark in connection with its NASCAR program, where the CAT mark is prominently displayed on the hood of the car, as well as in connection with its sponsorship of a Formula 1 racing car.38 Opposer also has promoted its CAT brand through product placement in feature films. For example, the opening sequence of the James Bond film Skyfall features various equipment prominently displaying the CAT mark.39 In addition to advertising undertaken by Opposer to support its CAT marks, Opposer points to substantial unsolicited media coverage featuring Opposer’s CAT mark on national television, on radio programs, and in books, newspapers, and magazines, including nationally circulated publications such as The New York Time and The Wall Street Journal.40 Interbrand has ranked Opposer’s brand (of which Opposer considers the CAT marks as the flagship mark most known to the general 37 Id.at 22-23, 33, ex. 9. 38 Id. at 24. 39 Id. at 23-24. 40 Id. at 19. Opposition No. 91210124 20 public) among the top 75 most valuable global, ranking it No. 58 in 2013 with a brand valuation of $7.125 billion..41 Major investment banks have recognized the high market share that the CAT brand enjoys in the well-fracking industry. For example, a 2011 research report by Morgan Stanley made the following observation: [T]here are two major trends which accelerate the structural opportunity for CAT: 1) the gradual shift of production from easier, but aging, onshore fields to more power intensive, challenging offshore production; and 2) the rise of shale gas, shale oil, and hydraulic fracturing (fracking), with huge power requirements. … Fracking shale for gas and oil are even better markets, where CAT has high share.42 Lastly, Opposer’s aggressive trademark enforcement activities reinforce the strength of its CAT marks.43 See J.Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 11.91 (4th ed. 2015) (“… active program of prosecution of infringers … enhances the distinctiveness and strength of a mark”). In sum, as discussed above, Opposer’s CAT mark has been used in commerce for over 60 years - more than 40 of those in the oil and gas industry; Opposer has spent tens of millions of dollars promoting the CAT mark through various media; the CAT mark has appeared in feature films and on national television, as well as in national magazines and newspapers; Opposer has enjoyed revenues of tens of billions of dollars in the last five years alone; and the CAT mark has received substantial unsolicited media attention throughout the United States. Under those 41 Id. at 19-20, ex. 3 42 Id. at 27, ex. 4. 43 Id. at 55-57. Opposition No. 91210124 21 circumstances, we find that Opposer’s CAT marks are famous not only with respect to heavy equipment, but also in the oil and gas industry. As a result, Opposer’s CAT marks are entitled to a broad scope of protection. We find Applicant’s argument that Opposer failed to meet its burden to establish fame unavailing. Of particular note are Applicant’s contentions that Opposer did not prove industry-specific fame and that the evidence does not “segregate” the impact of the mark “CAT” from that of the trademark and trade name, “CATERPILLAR.” With regard to proving industry-specific fame, as noted above, the record establishes that CAT-branded engines and transmissions have been used to drill the majority of the world’s oil and gas wells44, and that hundreds of CAT machines and engines are currently in use at the Barnett Shale natural gas site outside Fort Worth, Texas, a site that is expected to become the largest natural gas field in the United States.45 Also, major investment banks have recognized that “Cat has high share” in the well-fracking industry.”46 We make clear that the evidence noted above, of which we find sufficient to establish fame, primarily pertains to Opposer’s use of, and the public’s awareness of, Opposer’s “CAT” mark, not its “CATERPILLAR” trade name and mark. In addition, while we acknowledge that some context for raw statistics may at times be necessary, given the vast sums, we find Opposer’s testimony regarding its revenue 44 11 TTABVUE 28, 43 and ex. 15. 45 Id. at ex. 6. 46 Id. at ex. 3. Opposition No. 91210124 22 and advertising expenditures in the United Stated for its products and services in the oil and gas industry, presents a compelling case of fame. b. Third-party Registrations Next we consider the sixth du Pont factor, namely the number and nature of similar marks in use on similar goods. Applicant argues that Opposer’s CAT mark is a “weak” mark that is entitled to a limited scope of protection, and relies on various third-party registrations47 for marks that include the word CAT “in its various forms and permutations”48 to support this position. Applicant claims that “[a]s a result of the preponderance of third party [sic] marks featuring the term ‘CAT’ [for goods and services in the oil and gas industry], consumers have been continually exposed to trademark uses of the term ‘CAT’”; that an overwhelming number of third party [sic] trademarks incorporat[ing] the term ‘CAT’ have peacefully coexisted with Opposer’s “CAT” Marks for many years” and that “small differences between Applicant’s ‘PETRACAT’ mark and Opposer’s ‘CAT’ Marks are sufficient to prevent confusion.”49 Applicant highlighted the registrations excerpted below.50 47 Applicant’s submission includes several third-party applications, i.e., application Serial Nos. 85470685, 85923540, 79130420, 85791265, 77618417, 77617945 and 86019947. These third-party applications have no probative effect as they are evidence only of the fact that they have been filed. In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 (TTAB 2011) citing Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). Further, Serial Nos. 85470685, 77618417, 77617945 have abandoned and, therefore, are of no evidentiary value. 48 Applicant’s First Notice of Reliance, 8 TTABVUE. 49 Applicant’s br. pp. 9-13, 9 TTABVUE 16-22. 50 As regards the remaining registrations (i.e., Registration No. 2977285 for the mark TOP CAT for “engineering consulting services in the field of inspection, repair and maintenance Opposition No. 91210124 23 Trademark Reg. No. Goods and Services POLYCAT 1790905 …oil field chemicals, especially additives for fluids for the drilling, completion and workover of oil wells C.A.T.S. 2778228 Engineering and consultation services in the field of oil and gas onshore and offshore projects… WELLCAT(stylized) WELLCAT and large cat paw design 1655778 1661095 Drilling tool rental services; oil well control services; namely furnishing services for others consisting of analyzing problems of uncontrolled flow of oil, gas, or water from oil well and providing services to bring such flow under control WINCATT 3988930 …computer hardware and software, that interacts with external hardware to provide monitoring and control of tubular connections for use in oil and gas well drilling CAT-CHECK 4095351 …collecting, analyzing and reporting catalyst performance and catalyst activity to users of catalysts for processing oil products BLACK CAT 1055919 … chain for oil field use BLACK CAT and design 4069659 Ceramic proppant used in oil and gas well fracturing operations to stimulate production ALPHAKAT 3737104 …oil refinery machines, namely, catalytic converters and industrial chemical reactors. WILDCAT 3549215 Automated drilling systems for use in oil and gas exploration, namely, a multi-parameter drilling controller KRISCAT 2353313 Chemicals for use as catalyst in the … oil refining, and petrochemical processing industries WESCAT 2316313 Starch for use in the manufacture of paper and textiles and for use in the oil and gas industry CAT 1806637 nonionic polymer additive for water-based drilling fluids used in drilling oil and gas wells of chemical refining plants”; Registration No. 4347133 for the mark Kwik-Cat for “business brokerage”; Registration No. 4493518 for the mark CATGUARD for calibration, namely, measuring of [sic] variations of fluids associated with the drilling of boreholes …”; Registration No. 1380941 for the mark CAT-AN for “polymeric organic compounds … used in enhanced oil recovery operations”; Registration No. 4485541 for the mark TOPKAT for various filtering materials and filters; Registration No. 4014509 for the mark NCAT for goods and services relating to greenhouse gas emissions; Registration No. 3592742 for the mark WILDCAT for “gas powered welding machines”; Registration No. 2422498 for the mark TWINCAT for goods and services relating to natural gas generator set and gas turbines; and Registration No. 4519720 for the mark KATflow for goods and services relating to gas testing and gas flow), none are for goods and services related to the oil and gas industry and, as such, have no probative value. In addition, the mark HOT CAT for catalytic heaters for, inter alia, gas pipelines, arguably conveys a somewhat different commercial impression from that conveyed by Opposer’s CAT marks. Opposition No. 91210124 24 CAT-I 1721030 Cationic polymer containing water-based drilling fluids used in drilling oil and gas wells C.A.T.S. 4049815 Computer software for project management and data gathering services in the oil and gas industry The above-listed third-party registrations, however, do not persuade us that “CAT”, in and of itself, is lacking in trademark significance as applied to earth moving and other heavy machinery for use in the oil and gas industry, including, engines for oil and gas drilling and production, pumps, and compression applications, generators, engine driven generator sets (gensets), pipelayers, well fracking pumps, and surface drill rigs, as well as well servicing. We find so because the goods identified in Registration Nos. 1806637 and 1661095, while having applications in the oil and gas industry, are for polymers, and the remaining registrations cover marks (e.g., POLYCAT, C.A.T.S., WINCATT, CAT-CHECK, BLACK CAT, WILDCAT, KRISCAT, WESCAT, ALPHAKAT) that are either unitary terms which have known and recognized meanings or otherwise create commercial impressions different than the one conveyed by “CAT”, per se. Only Registration Nos. 1655778 and 1661095 for the marks WELLCAT, stylized and with a design, for drilling equipment and oil well control services may be relevant. However, apart from a failure to evidence use of the marks, the existence of two commonly-owned registrations does not persuade us that consumers are accustomed to seeing marks containing the word “CAT” in the heavy machinery and oil and gas industries such that they have learned to distinguish among them based on minor differences. Cf. Juice Generation, Inc. v. GS Enters. Opposition No. 91210124 25 LLC, - F.3d, -, 115 USPQ2d 1671 (Fed. Cir. 2015) (finding third-party registrations relevant to prove that some segment of the composite marks which both contesting parties use has normally understood and well-recognized descriptive or suggestive meaning); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U, 797 F.3d 1363, - USPQ2d - (Fed. Cir. 2015). Finally, it is well established that third-party registrations do not justify the registration of a mark that is likely to cause confusion with a previously registered mark. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). As the Board stated in In re Chica Inc., 84 USPQ2d 1845, 1849 (TTAB 2007): [A]n applicant does not overcome a likelihood of confusion refusal by pointing to other registrations and arguing that they are as similar to the cited registration as applicant's mark. While third-party registrations may be used to demonstrate that a portion of a mark is suggestive or descriptive, they “cannot justify the registration of another confusingly similar mark.” In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987), quoting Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Moreover, the Board is not bound by the prior decisions of examining attorneys in allowing marks for registration. It is well established that each case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). Opposition No. 91210124 26 c. The Similarities/Dissimilarities of the Marks We now consider first du Pont likelihood of confusion factor which involves an analysis of the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d, 1901, 1905 (TTAB 2007)). Our analysis cannot be predicated on dissection of the involved marks. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Rather, we are obliged to consider the marks in their entireties. Id. See also, Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). Nonetheless, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. Stone Lion, 110 USPQ2d at 1161. Opposition No. 91210124 27 With these principles in mind, we compare Opposer’s CAT mark to Applicant’s mark PETRACAT. Opposer argues that because both parties’ marks contain the identical CAT term, which is the dominant element in Applicant’s marks given the suggestive nature of “Petra,” and in view of the broad scope of protection to be accorded Opposer’s famous CAT mark, the Board should find its mark and Applicant’s PETRACAT mark similar in overall commercial impression. Applicant, on the other hand, contends that its PETRACAT mark imparts a markedly different connotation and commercial impression than that conveyed by Opposer’s CAT mark. This is so, Applicant argues, because the arbitrary term PETRA dominates its mark, especially since it is the first portion of the mark; that it is commonly understood that the term PETRA is derived from ancient Greek and means “rock” or “stone”; that the connotation associated with the term PETRA is that of a strong, enduring rock; and that the connotation conveyed by its mark is of a “strong-as-a-rock” cat, whereas the connotation of Opposer’s mark is a shortening of the term CATERPILLAR, Opposer’s house mark. We disagree with Applicant and find that the parties’ marks, when viewed as a whole, are substantially similar in overall commercial impression. First, the obvious similarity in appearance and sound between the parties’ marks stems from the fact that Applicant’s proposed mark, PETRACAT, incorporates Opposer’s previously used, registered and famous CAT mark in its entirety. In similar cases, a likelihood of confusion has frequently been found. “When one incorporates the entire arbitrary mark of another into a composite mark, the Opposition No. 91210124 28 inclusion of a significant, non-suggestive element will not necessarily preclude a likelihood of confusion. [Internal citations omitted]. An inclusion of a merely suggestive or descriptive element, of course, is of much less significance in avoiding a likelihood of confusion.” The Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design is similar to the mark CONCEPT). See also Coca-Cola Bottling Co. v. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and Bengal Lancer soldier design is similar to the mark BENGAL); In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (E-CELL is similar to the mark E). In addition, we find PETRA suggestive of Applicant’s services and hence a weaker component that the term CAT. The suggestive nature of the term PETRA is supported by the fact that it is commonly used as a trade name by companies in the oil and gas industry or to identify products and services in the oil and gas industry, including the following:51 • “Petra Energy” being used as a business name for a company that “trades various refined petroleum products globally” • “Petra” being used as the name of a software application that helps geologists and engineers locate and analyze oil and gas reservoirs • “Petra Global Energy Group” being used as the name of a business whose mission “is to grow a profitable upstream oil and gas company with long-term benefits” 51 Opposer’s rebuttal notice of reliance, ex. B, 12 TTABVUE 13-27. Opposition No. 91210124 29 • “Petra Oil Company” being used as a business name for a company that offers various petroleum products to the automotive industry • “Petra-Tech Environmental” being used as the name of an environmental consulting firm which commonly serves clients in the gasoline and petroleum industry and whose services include “petroleum underground storage tank management, assessment, and removal” • “Petra Nova” being used as the name of a subsidiary company which uses captured carbon dioxide at coal-fueled generation plants “to make the project economically viable through Enhanced Oil Recovery on mature oil fields” • “Petra Petroleum Inc.” being used as the name of a company that engages in “high impact exploration ventures in the emerging and under-explored oil and gas basins of Europe, Africa and the Middle East” • “Petra Oil” being used as the name of a company that “specializes in importing a wide range of petroleum products and exporting crude oil and low pour fuel oil to different refineries and storage tanks around the world.” Indeed, Applicant admitted in an interrogatory response that he “sought a mark that was suggestive of the oil field….”52 See e.g., Interstate Brands Corp. v. Celestial Seasonings, Inc. 576 F.2d 926, 929 (CCPA 1978) (finding “a party’s earlier contrary opinion may be considered relevant and competent”). In view of the lesser significance of PETRA, it is the term CAT that dominates Applicant’s proposed mark. To state the obvious, in view of our findings above, Applicant’s contention that PETRA is the dominant portion of its mark is unavailing. We so find despite PETRA’s position as the first portion of mark. We also find unavailing Applicant’s reliance on multiple unrelated definitions of PETRA, e.g., Jesus Christ’s disciple, 52 Opposer’s notice of reliance no. 1, 6 TTABVUE 6. Opposition No. 91210124 30 Peter, a Christian rock band, a Marvel Comics character, or a West German merchant ship,53 as it is axiomatic that we must determine the connotation and commercial impression of Applicant’s mark in relation to the services set forth in Applicant’s application. See In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987); In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). Moreover, even if we accept Applicant’s assertion that the connotation of PETRA is rock or stone, PETRA remains suggestive in relation to Applicant’s services because it may describe elements present at fracking drilling sites which necessitate the use of Applicant’s well-testing services. For the reasons discussed, we find that when viewed as a whole, the marks are not only similar in appearance due to the shared phrase CAT but, in light thereof, as well as the lesser significance accorded to the suggestive term PETRA, they are similar in connotation and convey a similar overall commercial impression. Thus, the factor of the similarity of the marks favors a finding of likelihood of confusion.54 d. Relatedness of the Goods and Services/Channels of Trade and Classes of Consumers We turn then to a consideration of the parties’ respective goods and services. In this regard, the registrability of an applicant’s mark generally must be determined on the basis of the goods and services as identified in the application and in the pleaded registrations. Octocom Systems Inc. v. Houston Computers 53 Applicant’s third notice of reliance, 10 TTABVUE. 54 We do not find credible Opposer’s arguments and evidence relating to its assertion that “PETR-”means petroleum, as the first portion of Applicant’s mark is PETRA. Opposition No. 91210124 31 Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787-88 (Fed. Cir. 1990); Hewlett- Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). Here, Opposer may also rely on its common law rights acquired through use of its mark on the additional goods and services for which Opposer has established prior rights. We therefore compare Applicant’s “oil and gas well testing; engineering services in the field of oil and gas well testing; consulting in the field of engineering” with Opposer’s equipment and services used in connection with well fracking, namely, well fracking pumps; engines and transmissions used to power the drilling of the well bore and the entire fracking operation; well servicing; machinery and equipment used to prepare, dig, and reclaim gas-well sites.55 The respective goods and services do not have to be identical or even competitive in order to determine that there is a likelihood of confusion. It is sufficient that the respective goods and services are related in some manner, or that the conditions surrounding their marketing are such that they will be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that they originate from the same source. See On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). Applicant maintains that the services rendered under his PETRACAT mark are vastly different and commercially unrelated to the goods and services associated with Opposer’s CAT marks. Applicant particularly argues that “[t]he individuals 55 We limit our discussion to these enumerated goods and services because they are the ones upon which Applicant and Opposer focused the discussion in their briefs. Opposition No. 91210124 32 working in an oil field that would encounter the ‘PETRACAT’ mark would not view oil and gas well testing or the other services rendered under the ‘PETRACAT’ mark as being related to earthmoving equipment, frac pumps, engines, and transmissions.”56 In making this argument, Applicant appears to focus on what he perceives to be the goods and services “properly pleaded” by Opposer. As just noted, Opposer may not only rely on the goods and services listed in its pleaded registrations, but also on the goods and services, noted above, for which it has proven prior trademark rights. By way of example, we explicitly address Applicant’s statement that “Opposer submitted no evidence whatsoever that it conducts oil and gas well testing, provides engineering services in relation to oil and gas well testing, and/or provides consulting in the field of engineering.” As Opposer aptly notes in its reply brief, in response to questions from Applicant’s counsel, Mr. Stembridge testified as follows: Q. Does Caterpillar perform oil and gas well testing? A. Explain what you mean by testing. Q. Does a representative of Caterpillar go to the oil and gas wellhead, put any sort of product on it and then test that product in order to see how things are performed? A. The products that we sell which are connected to the wellhead, yes, we would be monitoring and testing our engine, transmission pump, so certainly, yes… … Q. Does Caterpillar perform engineering services in the field of oil and gas well testing? 56 Applicant’s br. p. 21, 15 TTABVUE 28. Opposition No. 91210124 33 A. Again, as we look at some of the marketing materials, we do offer custom solutions to our customers, so we are offering engineering services for the products that we sell to optimize our engine, our transmission, our pumps to work best with that particular site. Q. Does Caterpillar perform consulting in the field of engineering? A. Yes, with our customers.57 As further regards Opposer’s engineering services and consulting services in the field of engineering, a brochure including a discussion of CAT CUSTOM WELL SERVICE PACKAGES states: If your application presents unique challenges or complex design issues, Caterpillar can engineer a custom well solution service power package to maximize your productivity. A seamless integration of proven Cat components offers you single-source consistency, unparalleled performance, and streamlined procurement. Your one-of-a-kind package also comes with documentation, factory testing reports, and the peace of mind of a Caterpillar warranty.58 Opposer maintains that its various equipment and services used in connection with well fracking (e.g., well fracking pumps; engines and transmissions used to power the drilling of the well bore and the entire fracking operation; well servicing; machinery and equipment used to prepare, dig, and reclaim gas-well 57 Stembridge test., 11 TTABVUE 58-59. While this testimony is unequivocal, it does not provide sufficient information to ascertain the specific nature of Opposer’s well testing or engineering services, and accordingly, we rely on Mr. Stembridge’s testimony, discussed infra, regarding the complementary nature of the parties’ respective goods and services. 58 Ex. 11 to Stembridge test., id. at 189. Opposition No. 91210124 34 sites) are complementary and closely related to the services covered by Applicant’s application.59 By way of background, we note and as explained by Mr. Stembridge in his testimony, that “for a typical mine site, there’s more than just drilling a hole.”60 Opposer “[has] equipment that would be used for preparing the site [including] earth moving equipment from bulldozers to trucks to carry materials, motor graders to maintain roads, service vehicles, service parts, service tools to support and maintain all of that equipment[;] … basically, any fracking related product.”61 Mr. Stembridge further explained that fracking is “the process of injecting a fluid or chemical under pressure down into a well to fracture the rock structure to basically create pathways for the natural gas to then escape and be collected.”62 The record reflects that in addition to the CAT-branded engines and transmissions that power a fracking operation, Caterpillar sells CAT-branded hydraulic pumps that inject the fluid down into the well to fracture the rock. The CAT-branded engine, transmission, and pump are typically mounted on a flatbed semi-trailer, or frack trailer, and sold as a unit.63 59 To the extent that Opposer also contends that Applicant’s services are within its natural zone of expansion, even within an inter partes proceeding, we have found that the doctrine requires a specific, complicated analysis that does not appreciably add to our understanding of the relatedness of the goods and services in most cases. General Mills, Inc. and General Mills IP Holdings II, LLC v. Fage Dairy Processing Industry S.A., 100 USPQ2d 1584 (TTAB 2011). 60 Stembridge test., 11 TTABVUE 18. 61 Id. 62 Id. at 44-46. 63 Id. at 31. Opposition No. 91210124 35 While we limit our comparison of the respective goods and services to the services as identified in Applicant’s application, we have reviewed website evidence introduced by Applicant for the purpose of clarifying the services provided under his PETRACAT mark. We point out that Applicant performs the identified well testing services by collecting or capturing data from quartz resonant pressure gauges (provided by Applicant), and by subsequent processing and analysis of that data by Applicant’s engineering division.64 Against that backdrop, we note that during Mr. Stembridge’s testimony deposition, he was handed a marketing document produced by Applicant which provides information regarding Applicant’s services. Mr. Stembridge was asked to indicate on the document where the CAT-branded equipment would be found in relation to how Applicant performs its oil and gas well testing services. Mr. Stembridge’s annotations on the document are shown below: 64 Applicant’s Second Notice of Reliance, ex. 19; 9 TTABVUE 12. Opposition No. 91210124 36 Mr. Stembridge further explained the relationship between Applicant’s services and the “CAT-branded” equipment as follows: [Applicant’s] equipment, going by the photographs, is attached to the wellhead which our CAT engine transmission and pump would also be attached to that same wellhead, and since our product is providing pressurized fluids and chemicals in the wellhead and PetraCat product is measuring the pressure, I would assume that the information gleaned from the PetraCat product in turn would be used to monitor and possibly adjust the running and operation of our CAT equipment.65 Because Applicant’s testing services are provided by attaching equipment to the same well heads that may utilize CAT-branded equipment (i.e., the CAT- branded engine, transmission, and pump unit - such engines and transmissions 65 Id. at 33. Opposition No. 91210124 37 being identified both in the pleaded registrations and proven as used) and because Applicant’s testing results can be used to modify the pump pressure in a well fracking operation, we find Applicant’s oil and gas well testing services and Opposer’s engine, transmission, and pump units to be complementary and related for purposes of our likelihood of confusion analysis.66 See e.g., In re Cook Medical Tech. LLC, 105 USPQ2d 1377, 1380 citing Martin’s Famous Pastry Shoppe 223 USPQ at 1290 (“If goods are complementary in nature, or used together, this relatedness can support a finding of likelihood of confusion); Octomom Sys., 16 USPQ2d at 1788 (OCTOCOM for modems held confusingly similar to OCTACOMM for computer programs because programs and modems are commonly used together). We further find that the parties’ respective goods and services may be utilized by customers for the same ultimate purpose, namely, the optimal extraction of natural gas from a well. Applicant’s primary argument regarding the marketing document drawing shown above is that it “does not purport to be drawn to scale,” which therefrom, he apparently extrapolates that “several miles” could separate the area where Applicant performs his testing and the CAT equipment is located. For that reason, Applicant argues that it is “possible” that consumers coming into contact with its well-testing services would never see the CAT equipment. Apart from the fact that 66 We need not discuss Applicant’s engineering services in the field of oil and gas well testing and consulting in the field of engineering, because a finding of likelihood of confusion as to any one of the services in a single class would result in a finding of likelihood of confusion for the entire class. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Opposition No. 91210124 38 this argument overlooks well-settled law that marks are not subject to side-by-side comparison,67 Applicant offers no evidence whatsoever to support his assertion. Further, in the absence of any limitations in the identifications as to channels of trade and classes of purchasers in Applicant’s application and Opposer’s pleaded registrations, we must presume that the identified goods and services will be purchased in the usual channels of trade for those goods and services and by the usual classes of purchasers for those goods and services. According to Applicant’s response to Opposer’s Interrogatory No. 7, the normal customers of Applicant’s services are “exploration and production companies as well as oil field companies.”68 These are the same customers to whom Opposer has offered its goods and services. According to Mr. Stembridge, Opposer offers is CAT-branded oil and gas products and services to “exploration and production companies, oil field service companies … [and] the owners and operators of the gas wells, and drilling companies.”69 In addition, the goods and services established by common law use move in the same trade channels and to the same customers. Opposer promotes its CAT mark at some of the oil and gas industry’s trade shows and Mr. Stembridge testified that 67 As previously stated, the proper test is whether the marks are sufficiently similar in terms of their commercial impressions such that persons who encounter the marks would be likely to assume a connection between the parties. See Coach Servs. v. Triumph Learning, 101 USPQ2d at 1721. 68 Opposer’s Notice of Reliance No. 1, 6 TTABVUE 7. 69 Stembridge test., 11 TTABVUE at 34-35. Indeed, although the names of Applicant’s customers are confidential, Mr. Stembridge testified that Opposer has sold CAT-branded oil and gas products to the exact same customers. Id. at 54-55. Opposition No. 91210124 39 companies offering services of the type identified in Applicant’s application attend those same shows.70 Applicant’s unsupported contention that Applicant and Opposer will interact with different decision makers who possess purchasing powers at any of the companies that Applicant and Opposer could potentially both have as customers in unconvincing. Thus, at a minimum, the channels of trade and classes of purchasers overlap. In re Elbaum, 211 USPQ 639 (TTAB 1981). For the reasons discussed above, the du Pont factors of the relatedness of the goods and service, channels of trade and classes of purchasers favor Opposer. e. The conditions under which and buyers to whom sales are made We next consider the conditions under which and buyers to whom the parties’ respective goods and services are provided. Applicant contends that the services rendered under his PETRACAT mark as well as the goods and services offered and rendered under Opposer’s CAT marks are directed to discerning oil and gas well operators and owners, who exercise “extra care” when deciding what companies will be hired to service their very expensive equipment. With further regard to Opposer’s goods and services, Applicant contends that they are expensive and are sold through a dealer network.71 Even in the absence of specific evidence as to costs, we acknowledge that the nature of Opposer’s products and services dictate that they are likely to be quite 70 Id. at 35-38. 71 Although Opposer pleaded that its parts and equipment are provided to customers by a global retail network of CAT dealers, 50 of which are in the United States, there is no testimony or other evidence in the record to prove this allegation. Opposition No. 91210124 40 expensive. We further recognize the complex nature of Applicant’s services and the expertise required by Applicant in rendering those services. Given the expense and complex nature of both Applicant’s services and Opposer’s goods and services, it is not unlikely that the owners and operators of oil and gas well operations will exercise some degree of care in their purchasing decisions. Even so, even careful purchasers can be confused by similar marks used in connection with highly related and complementary services. As recognized by our primary reviewing court, “[t]hat the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar services.” In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) quoting Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers … are not infallible.”). In this case, the similarity between Applicant’s mark and Opposer’s marks, as well as the relationship between Applicant’s services and Opposer’s goods and services, tend to outweigh any sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods); Refreshment Machinery Inc. v. Reed Industries, Inc., 196 USPQ 840, 843 (TTAB 1977) (selling to a sophisticated purchaser does not automatically eliminate the likelihood of confusion because “[i]t Opposition No. 91210124 41 must also be shown how the purchasers react to trademarks, how observant and discriminating they are in practice, or that the decision to purchase involves such careful consideration over a long period of time that even subtle differences are likely to result in recognition that different marks are involved”). Therefore, we find this factor to favor Applicant. f. Actual Confusion Applicant contends that there is no evidence of actual confusion between his mark PETRACAT and Opposer’s CAT marks, which, in Applicant’s view, weighs against a finding of likelihood of confusion. He specifically maintains that “Opposer’s failure to proffer any evidence on this point undermines the Opposer’s likelihood of confusion claim, particularly since the ‘PETRACAT’ mark has been in use since 2012.”72 We disagree. While a showing of actual confusion would of course be highly probative of a likelihood of confusion, the opposite is not true. Given the recognized difficulty in obtaining actual-confusion evidence, it is well-established that actual confusion is not required for a finding a likelihood of confusion. Weiss Associates v. HRL Associates, 14 USPQ2d at 1842-43. See also Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565 218 USPQ 390, 395-396 (Fed. Cir. 1983) (finding “it is unnecessary to show actual confusion in establishing likelihood of confusion”); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1834 (TTAB 2012) (recognizing that “evidence of actual confusion is difficult to obtain”). Moreover, Applicant indicates that it began using its PETRACAT mark on 72 Applicant’s Br. p. 29, 9 TTABVUE 36. Opposition No. 91210124 42 or about September 5, 201273 and, so the parties’ marks had coexisted in the marketplace for only a little over a year. Thus, the absence of any actual confusion during such a short period is insignificant. See Chemetron Corporation v. Morris Coupling and Clamp Company, 203 USPQ 537 (TTAB 1979) (evidence of lack of confusion found insignificant in view of the fact that only a year and a half elapsed between applicant’s asserted date of first use and the filing of the notice of opposition). We also point out that the record is devoid of any information regarding Applicant’s sales or promotional activity, and therefore we cannot even ascertain whether there was any meaningful opportunity for confusion to occur. See e.g., Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989). Accordingly, we conclude that this factor is neutral. g. Conclusion We have carefully considered all of the evidence pertaining to the relevant du Pont factors, as well as all of the parties’ arguments with respect thereto, including any evidence and arguments not specifically discussed in this opinion. Notwithstanding the high costs of the involved goods and services, and the care exercised by the respective purchasers, in balancing the relevant factors we conclude, given the fame of Opposer’s CAT marks and their resulting entitlement to a broad scope of protection, that given the similarities of the marks and the complementary nature of respective goods and services, as well as the overlapping 73 Opposer’s first notice of reliance, ex. 1, 6 TTABVUE 7. Opposition No. 91210124 43 channels of trade and classes of purchasers, there exists a likelihood of confusion between Applicant’s PETRACAT mark and Opposer’s CAT marks. V. Dilution In view of our determination as to the claim of likelihood of confusion, we do not reach the claim of dilution. See Miss Universe L.P. v. Community Marketing Inc., 82 USPQ2d 1562, 1572 (TTAB 2007). VI. Decision Decision: The opposition is hereby sustained under Section 2(d) of the Act, based upon our finding of likelihood of confusion. Registration to Applicant of its PETRACAT mark is refused.