Thirsty Thirsty Caterpillar opposes Cat & Cloud’s trademark registration

The IPKat is delighted to host this guest contributions by Thomas Key, a JD student at Chicago-Kent Law School, on the topic of caterpillars, cats and clouds. Read it all below!

Thirsty Thirsty Caterpillar opposes Cat & Cloud’s trademark registration

by Thomas Key

Cat & Cloud art

I’m a Kat who likes coffee more than milk; I was surprised to see a company, well-known among third-wave coffee fans, facing trademark opposition from Caterpillar, Inc. One is a heavy machinery company, while the other consists of three coffee shops in central California; Cat & Cloud has portrayed this proceeding as a “Big Business Bullying [a] Small Business” and they may just have a large public at their back.

The Trademarks

Cat & Cloud is a joint venture of United States Barista Championship finalists Chris Baca and Jared Truby, along with their partner Charles Jack. They first filed an application for the CAT & CLOUD mark for clothing on September 22, 2015; their first café opened in 2016. Currently, they advertise clothing with the mark, some bearing stylized uses of CAT & CLOUD for sale on their website. 

The CATERPILLAR mark was first registered by the Holt Manufacturing Company in 1910; Holt merged with C. L. Best Tractor Co. in 1925 to form Caterpillar Tractor Co. 

Caterpillar, Inc. filed a petition for cancellation with the USPTO on August 3rd, 2018, citing both a likelihood of confusion and dilution; they asserted in paragraph 6 that “the CAT mark has become a household name and is famous.” In their answer on September 12 of that year, Cat & Cloud asserted a variety of affirmative defenses including failure to state grounds for cancellation; no likelihood of confusion; unclean hands, and; that Caterpillar’s mark is not famous. Further, they pushed back on Caterpillar’s assertion of fame, noting that while the connection between Caterpillar and CAT may be well-known in the construction industry, there are “hundreds and hundreds of existing Principal Register marks for a plethora of various goods and services that contain the common English word ‘cat.’”

Cat & Cloud’s answer pointed to several cancellations filed by Caterpillar in the months leading up to this petition; they had sought to cancel NALA CAT; CHERRY CAT; FUNCAT; HELLCAT; STKAT, and; KINGSCAT. Despite this variety of cancellations, Cat & Cloud noted that Target’s CAT & JACK and Dr. Suess Enterprises’ CAT IN THE HAT were spared cancellations for clothing products, invoking the term “trademark bullies.” Cat & Cloud also filed a motion to consolidate their case with numerous other opposition and cancellations initiated by Caterpillar; the Interlocutory Attorney replied, denying the motion, 

[T]he plaintiff’s claims against one defendant have little to no bearing on the claims plaintiff may have against another defendant – each defendant will rely on facts and evidence unique to that defendant. Further, in each proceeding involves different marks opposed or sought to be cancelled by the plaintiff.

Caterpillar moved to strike five of the affirmative defenses asserted by Cat & Cloud and opposed to the motion to consolidate; they moved to strike the failure to state grounds for cancellation; no likelihood of confusion; estoppel; unclean hands, and; that the mark was not famous. Cat & Cloud did not file a brief response to this motion, and thus it was granted unopposed on November 15th. 

The Podcast

On May 20th, 2019, Chris and Charles took their dispute with Caterpillar to the airwaves as they discussed the cancellation proceeding on the Cat and Cloud podcast in an episode titled “Being Sued By Caterpillar Inc.”. Chris noted that resisting Caterpillar’s action would necessitate a possible “10-20 thousand dollar” legal battle and the lost productivity of one of the three primary operators of the company for a year or more; he and Charles explained their company’s persistence in spite of their mismatch with Caterpillar: 

Chris: The name; the way that we came to the name and how much history the name has to us and how much it means to us? I can’t even imagine, I can’t even fathom letting it go.

Charles: Right, especially when we feel like we did everything we needed to do, right? We sought legal counsel to do what we felt was the right thing to do to secure the trademark and so I don’t…believe we did anything wrong and then for someone who’s that much bigger than us to come and try and bully us out of what we legally filed…it just sucks. 

Charles directed the audience to Cat & Cloud’s legal answer to the cancellation petition, particularly indicating that Caterpillar “systematically” worked to cancel the trademarks of “7-10 small businesses” while sparing Target’s clothing brand, Cat and Jack.

Kat cloud

The Other Companies

Cat & Cloud’s answer referenced multiple default judgments against “individuals and small businesses”, invoking the term “trademark bullies” to describe Caterpillar’s recent trademark cancellation petitions. NALA CAT is the branding behind an adorable cat named Nala, who became popular from Instagram posts like these. CHERRY CAT was registered by a Chinese company that never filed an answer to the cancellation petition and received a default judgment against it. FUNCAT was an attempted registration by Jiaxing PGS Knitting Co of China. HELLCAT was registered by Boombah, Inc., a 500-employee custom-order athletic uniform company producing more than 65,000 unique products in their Dominican factory. STKAT was registered by a Chinese individual; TTAB issued a default judgment after failing to reach the registrant. KINGSCAT was also registered by a Chinese individual who did not participate in the proceeding. Cat & Cloud’s answer also referenced the mark, “PHOBECAT” (Cancellation No “92068236”), but no such mark or cancellation number can be found on the USPTO website. 

These judgments were contrasted with Caterpillar’s lack of action on CAT & JACK and CAT IN THE HAT; CAT & JACK has not been opposed and neither has CAT IN THE HAT. Although Caterpillar may be pulling punches against these heavyweights, the most recognizable pattern among the marks Cat & Cloud referenced is an unreachable Chinese registrant; perhaps the suggestion of trademark bullying against individuals and small businesses is an imperfect representation of Caterpillar’s abundance of cancellation petitions. 

The Fundraiser

On May 29, 2019, Jared from Cat & Cloud started a gofundme page to crowdfund their legal battle with Caterpillar; they titled the campaign “Help! Caterpillar, Inc. is Trying to Cancel Our Small Business Trademark “Cat & Cloud Coffee.”” They also indicate that they plan to hire a public relations firm to “bring this injustice to light in the mainstream media where we believe it could easily go viral.” With over $17,000 raised from more than 420 donors as of June 28, 2019, those coffee cats might just get their wish.

Conclusion

American citizens find their place for participation in the lawmaking process in electing legislators; aside from the jury function, we are largely removed from the judicial process. Through crowdfunding and public relations, Cat & Cloud seeks to invite the public into courtroom, tipping the scales of legal capacity somewhat in their favor. Further, they seek to invite the public to punish Caterpillar for what they see as an unnecessary David and Goliath catfight. Cat & Cloud benefit from a substantial online following to reach potential donors; they have a unique ability to capitalize on these modern tools to state their case to the public at large. They will serve as a test case for “Davids” to state their cases clearly and honestly.