Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1235612
`
`Filing date:
`
`09/14/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91213597
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Caterpillar, Inc.
`
`NARESH KILARU
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`901 NEW YORK AVENUE NW
`WASHINGTON, DC 20001
`UNITED STATES
`Primary email: docketing@finnegan.com
`Secondary email(s): laura.johnson@finnegan.com, ttab-leg-
`al-assistants@finnegan.com, naresh.kilaru@finnegan.com
`202-408-4000
`
`Plaintiff's Notice of Reliance
`
`Naresh Kilaru
`
`docketing@finnegan.com, naresh.kilaru@finnegan.com,
`laura.johnson@finnegan.com, TTAB-Legal-Assistants@finnegan.com
`
`/Naresh Kilaru/
`
`09/14/2022
`
`2022.09.14 Caterpillar Rebuttal NOR 6 - Third Party Websites and Exh.
`pdf(788248 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`CATERPILLAR INC.,
`
`
`Opposer,
`
`
`
`v.
`
`
`TIGERCAT INTERNATIONAL INC.,
`
`
`Applicant.
`
`
`
`
`
`
`Opposition No. 91213597
`
`Application Serial No. 85/814,584
`Mark: TIGERCAT
`Application date: January 3, 2013
`
`OPPOSER’S REBUTTAL NOTICE OF RELIANCE NO. 6 UNDER 37 CFR § 2.122(e)
`
`Pursuant to Trademark Rule 2.122(e) and TBMP 704.08(b), Opposer Caterpillar Inc.
`
`
`
`
`
`
`
`submits of record in connection with this opposition proceeding a third-party website printout
`
`available to the general public, which is relevant to the level of purchaser care with respect to
`
`certain types of off-road industrial equipment. These documents constitute “Internet Materials”
`
`under Trademark Rule 2.122(e).
`
`
`
`This material rebuts Tigercat’s claims that machinery and machinery attachments are
`
`always purchased with a high degree of customer care.
`
`Exhibit
`No.
`
`Description
`
`1. https://www.rurallifestyledealer.com/articles/1157-how-to-sell-skid-steers-
`attachments-compact-strong-and-looking-for-work
`
`
`Dated: September 14, 2022
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/Naresh Kilaru/
`Naresh Kilaru
`Laura K. Johnson
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`901 New York Avenue N.W.
`Washington, DC 20001
`Telephone: (202) 408.4000
`
`Attorneys for Opposer Caterpillar Inc.
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and accurate copy of the foregoing OPPOSER’S REBUTTAL
`
`NOTICE OF RELIANCE NO. 6 UNDER 37 CFR § 2.122(e) was served via electronic mail, on
`
`September 14, 2022 upon counsel for Applicant:
`
`
`
`
`
`Tamar Y. Duvdevani
`DLA PIPER LLP US
`1251 Avenue of the Americas
`New York, NY 10020
`
`Gina.Durham@dlapiper.com
`tamar.duvdevani@dlapiper.com
`marc.miller@dlapiper.com
`megan.michaels@dlapiper.com
`docketingnewyork@dlapiper.com
`
`
`
`/Judy Valusek/
`Trademark Legal Assistant
`
`
`
`

`

`EXHIBIT 1
`EXHIBIT 1
`
`

`

`9/14/2022
`
`Skid Steers & Attachments: Compact, Strong and
`Looking for Work
`
`rurallifestyledealer.com/articles/1157-skid-steers-attachments-compact-strong-and-looking-for-work
`Chad Elmore
`
`How to Sell
`
`By Chad Elmore posted on July 13, 2011 | Posted in Niche Markets
`
`While the economic downturn hit compact equipment sales hard,
`dealers don�t have to stock new skid steers to sell attachments.
`Often called the "Swiss army knife" of construction equipment, the compact and powerful
`skid steer and its tracked counterparts can find work on a hobby farm or in a landscaping
`operation as easily as they can on a building site.
`
`The skid steer has been so completely adopted by the construction and rental equipment
`industries it can be easy to forget that the concept of a compact, easily maneuverable loader
`got its start on a farm in North Dakota.
`
`During the housing boom of the past decade this product segment was popular, although
`that changed quickly when the economy collapsed. The past couple of years have been
`tough on compact equipment sales. Manufacturers reported sales declines of greater than
`50%, a direct result of the record fall in the residential property market and a sharp decline in
`new construction projects.
`
`Today, sales of skid steer units and attachments are "very spotty. From late 2008 on, sales
`really dwindled," says Dave Heck of Jacobi Sales Inc., which has seven dealership locations
`in southern Indiana and northern Kentucky. "I think sales could go either way today. The
`market is changing because so many people are out of work. Many of our customers are
`trying to create niche businesses to bring in some income. You can do that with a skid steer
`and attachments. Some of our customers are travelling throughout a five-state area to get
`clean-up work after storms."
`
`Jacobi Sales' region has been hit with a rash of ice and windstorms, even tornadoes. "We've
`been getting a lot of requests for grapple buckets to pick up trees and limbs around their
`property," says Heck.
`
`As with a tractor, the skid steer requires attachments to be productive. Thanks to the
`popularity of this product segment during the latter half of the past decade, a large array of
`attachments have been developed. These attachments can easily expand - and quickly
`complicate - a dealership's product offering.
`
`https://www.rurallifestyledealer.com/articles/1157-how-to-sell-skid-steers-attachments-compact-strongand-looking-for-work
`
`1/4
`
`

`

`9/14/2022
`
`Variety brings people through the door, and, says Heck, if "you carry only one thing, your
`business is not going to survive. The days of carrying one line of anything are gone."
`
`Dedication Through Diversification
`
`The best advice when taking on a skid steer line, says John Williams of Hirsch Feed & Farm
`Supply, is to make sure you train your sales force and service personnel well, and have parts
`in place. "The staff must to be ready to help customers go through the variety of attachments
`that are available."
`
`In order to be successful with skid steers, dealers who get into the business must be
`committed to it, from offering financial services to stocking attachments and replacement
`parts. Although sales these days are generally flat, there's still a market for skid steers,
`especially in light construction and landscaping applications. "Most operators make money
`with their units," says Eric Schnelle, president, S&H Farm Supply, a four-dealership company
`based in Lockwood, Mo. "When those guys look at a dealership they want to know you can
`keep them working if there is a problem with the equipment. Downtime is costly."
`
`Keeping a selection of skid steers and attachments in stock is also important, especially
`these days. Production slowed as sales declined, and this year many manufacturers of skid
`steers have introduced new models, resulting in long lead times. Some manufacturers need
`a lead time of 3-6 months for delivery of a new unit.
`
`Although dealers should have a variety of attachments in stock and ready to move, they don't
`have to sell new skid steers to attract that business. Of course, having the ability to sell a
`complete package at a discount can help make a sale.
`
`Most of the attachment buyers at Hirsch Feed & Farm Supply Inc. in West Plains, Mo.,
`already own a skid steer, says John Williams, one of the owners. "There are a lot of used
`skid steers out there. People will buy a used one from a dealer or a private seller and come
`in here for attachments. Once they see what the machine can do, some will buy another
`attachment every year."
`
`An equipment dealer since 1974, Hirsch has carried skid steers for only 3 years. "We've not
`been a skid steer dealer in a good economy yet," says Williams. "We got in when it slowed
`down. As the economy improves, we're looking forward to taking advantage of the
`relationships we've developed as a new dealer in this region."
`
`Williams says the attachment business is growing. "It started out not all that big, but it has
`really increased over the last year and a half. Buckets are by far the most popular, but we're
`selling a diverse line of attachments. Specialty equipment has been especially popular, such
`as brush cutters and trenchers."
`
`https://www.rurallifestyledealer.com/articles/1157-how-to-sell-skid-steers-attachments-compact-strongand-looking-for-work
`
`2/4
`
`

`

`9/14/2022
`
`The fact that many skid steer attachments will also fit tractors also helps boost attachment
`sales.
`
`Schnelle says most of his skid steer customers are full-time farmers or professional
`operators who are making money with them. New skid steer units are considerably more
`expensive than a tractor. "When we sell them to hobby farmers, they're often businessmen
`with acreage who want to clear right-aways or put in food plots. They will buy several
`different attachments to take advantage of the machine's versatility."
`
`Attachments are an impulse item or are purchased as needed. Even construction
`contractors, who typically plan their equipment purchases well in advance, may take on a
`new job and need an attachment that day. If one dealership doesn't have it, they will go to
`another supplier.
`
`"You have to treat skid steer attachments like any other impulse item," says Schnelle. "If you
`have it, you will probably sell it. Buyers don't want to wait a week."
`
`Because of the price of new skid steers, hobby farmers are more likely to buy used, as you
`can get a "pretty good machine a lot cheaper," says Williams. Compact track loaders have
`been popular for landscapers, but availability has been tight for certain models. He says they
`sell one as soon as he can put it on display. This is driving some customers into used units,
`as well, with some upgrading to new as they become available.
`
`"One of the ways we get customers interested in skid steers and attachments is through our
`rental services," says Heck. "That allows us to reach those consumers who might have a
`need for a skid steer for a few jobs. Once they try it out for a day or two and they see what
`else they can do with it and some will look for a rental-purchase option, or buy it outright."
`
`Make the Price Right
`
`When a used machine changes hands, it creates an opportunity to sell more attachments.
`But because they can be easily purchased off the Internet, a dealer's price point is very
`important. Most rural consumers would rather buy locally, but if there's too much of a gap
`they will keep moving.
`
`"Smart shopping can make or break you on skid steer attachments," says Schnelle. "When
`we first got into this, we went with attachments from a supplier who handled everything. Then
`we discovered someone else was making the equipment for them, and they were adding
`their own mark-up. That didn't make us competitive. With a little shopping around, we found
`some good prices through quality manufacturers."
`
`There are many companies that specialize in pallet forks, and some will give dealers a price
`break and free shipping if they order several units at once, for example. "You might have to
`buy in volume to keep your price down," suggests Schnelle. "If the pallet forks you're selling
`
`https://www.rurallifestyledealer.com/articles/1157-how-to-sell-skid-steers-attachments-compact-strongand-looking-for-work
`
`3/4
`
`

`

`9/14/2022
`
`are $50 too high, you're out of the market. We sell tons of them because we're at the right
`price point and still make a reasonable margin."
`
`In another example, "We sell a lot of brush grapples to clean up after ice storms and
`tornadoes. I've been stocking grapples for $3,500 retail, and then found a good medium-duty
`grapple for $1,999. Our sales have doubled with that price point. We're not catering to
`commercial contractors who are picking up concrete. These farmers and large property
`owners want to put a grapple in front of their tractor or skid steer and clean up around their
`place," Schnelle says.
`
`Another area to be careful with is that there are a lot of poor quality imported attachments out
`there, says Schnelle. "But there many small independent manufacturers throughout the U.S.
`that do a really good job making attachments that are reasonable in price. In the attachment
`business, many of the players are not worldwide conglomerates. There are a number of
`small, family-run companies that are willing to partner with you and be flexible to help you
`grow your sales.
`
`"When I call them I'm usually talking to the owner of the business, and he's also the main
`salesman and sometimes the engineer," says Schnelle. "Developing a relationship with a
`company like that can make things possible that would never happen with a corporation.
`When you shop for a good supplier, you can grow the product line together."
`
`A case in point: After the F6 tornado tore through Joplin, Mo., on May 22, it spared the S&H
`store but destroyed the city itself (see sidebar). "A guy from Texas was driving up to Joplin to
`help a relative clean up, and he called one of our suppliers to buy a tree shear for his skid
`steer," says Schnelle. "He wanted to pick it up by the end of the week, when he would be in
`town."
`
`The manufacturer referred that customer to their local dealer, S&H Farm Supply, but the tree
`shears were sold out. So the manufacturer dropped everything, made a unit for the
`customer, and shipped it to Joplin a day early.
`
`"Some of the supplier manufacturers do a really good job of marketing their equipment, and
`they can help drive a lot of leads to your dealership," Schnelle says. "That needs to be in a
`dealer's thought process, too. It is hard for a dealer to advertise all the attachments he might
`have on the lot. For a dealer, the best advertising might be when a customer wanders the lot
`and sees all of the attachments you carry. But as far as developing new leads, I really think
`the manufacturer is key to pulling people into the dealership."
`
`This month's digital sponsors:
`
`https://www.rurallifestyledealer.com/articles/1157-how-to-sell-skid-steers-attachments-compact-strongand-looking-for-work
`
`4/4
`
`