ESTTA Tracking number:
`
`ESTTA1346508
`
`Filing date:
`
`03/15/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91276500
`
`Party
`
`Correspondence
`address
`
`Plaintiff
`Caterpillar Inc.
`
`RICHARD J. MCKENNA
`FOLEY & LARDNER LLP
`777 EAST WISCONSIN AVENUE
`MILWAUKEE, WI 53202
`UNITED STATES
`Primary email: ipdocketing@foley.com
`Secondary email(s): rmckenna@foley.com, mwitsman@foley.com
`414-271-2400
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Rebuttal Brief
`
`Matthew D. Witsman
`
`ipdocketing@foley.com, mwitsman@foley.com
`
`/Matthew D. Witsman/
`
`03/15/2024
`
`Attachments
`
`ZIPCAT Reply Brief 4859-5005-3036 v.7.pdf(293497 bytes )
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of App. Serial No.:
`Mark:
`Published:
`
`
`
`90/820,900
`ZIPCAT
`May 3, 2022
`
`Opposition No. 91276500
`
`) ) ) ) ) ) ) ) ) ) )
`
`
`
`Caterpillar Inc.,
`
`Opposer,
`
`v.
`
`CCMA. Construction Communications & Material
`App, LLC
`
`Applicant.
`
`
`
`
`
`Opposer’s Reply Trial Brief
`
`

`

`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`
`
`INTRODUCTION..............................................................................................................1
`
`APPLICANT’S MOTION TO STRIKE IS EITHER UNTIMELY AND HAS
`BEEN WAIVED OR WAS PREVIOUSLY DECIDED BY THE BOARD..................1
`
`A.
`
`B.
`
`Applicant’s Motion to Strike is Untimely and Has Been Waived .....................2
`
`Applicant’s Motion to Strike Has Already Been Decided by the Board ...........4
`
`III. APPLICANT PROVIDES NO EVIDENCE THAT THE CAT MOBILE
`APPLICATIONS ARE NOT FAMOUS IN INTERNATIONAL CLASSES 9
`AND 35 ................................................................................................................................5
`
`IV.
`
`PURPOSE OF CITED REGISTRATIONS INCLUDING THE TERM “ZIP”
`IN NOTICE OF RELIANCE NO. 6 ...............................................................................10
`
`V.
`
`CONCLUSION ................................................................................................................11
`
`
`
`
`
`
`
`i
`
`

`

`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`PAGE(S)
`
`Amazon Technologies, Inc. v. Games Park Worldwide, Ltd.,
`2023 WL 6253670 (TTAB September 25, 2023) ....................................................................... 4
`Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *7,
`(TTAB 2020 ................................................................................................................................ 3
`Viacom International, Inc. v. Armstrong Interactive, Inc.,
`2022 WL 782588 (TTAB March 11, 2022) ................................................................................ 3
`
`Rules
`
`TBMP § 707.03(b) .......................................................................................................................... 3
`
`ii
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`Applicant’s Trial Brief includes (a) specific requests of the Board which are either
`
`new and untimely or have already been presented to and decided by the Board; and (b)
`
`unsubstantiated claims regarding the Opposer’s evidence of the strength of the CAT Mark.
`
`First, in its Trial Brief Applicant has objected to the timing of Opposer’s witness
`
`identification and objected to the timing of its document production, but unfortunately for the
`
`Applicant, this objection should be denied either because it is untimely and therefore waived or
`
`because it was previously been decided by the Board.
`
`Second, Applicant makes unsubstantiated claims regarding the Opposer’s
`
`evidence of the strength of the CAT Mark by asserting, without any evidentiary support, that the
`
`CAT Mark is not strong or famous in International Classes 9 and 35. Applicant provides no
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`evidence, caselaw, or facts in support of this assertion. The evidence previously provided shows
`
`a diverse range of subject matter for the CAT Mobile Applications, accessed by millions of
`
`diverse users in conjunction with a broad range of CAT-branded equipment, products and
`
`services, supporting the strength and fame of the CAT Mark despite Applicant’s conjecture.
`
`Finally, one accurate aspect of Applicant’s Trial Brief was to challenge the
`
`Opposer’s characterization of the nature, scope and impact of the evidence included in Opposer’s
`
`Notice of Reliance No. 6. Below, Opposer will correct the record and Opposer’s Trial Brief
`
`regarding the teaching and impact of the evidence included in Opposer’s Notice of Reliance No.
`
`6 with regard to the weak and diluted nature of the term ZIP in International Classes 9 and 35.
`
`II.
`
`APPLICANT’S MOTION TO STRIKE IS EITHER UNTIMELY AND HAS BEEN
`WAIVED OR WAS PREVIOUSLY DECIDED BY THE BOARD
`
`Applicant in its Trial Brief requests that the Board strike the Declaration of Adam
`
`Klaege and asserts that it is prejudiced by both the timing and the volume of production of
`
`1
`
`

`

`
`
`documents during Opposer’s trial testimony period. 31 TTABVUE at FN 3 p. 28-29. There are
`
`two different ways to interpret the facts surrounding this objection; however, both interpretations
`
`lead to the same outcome—the Board denying Applicant’s motion to strike. Under the first
`
`interpretation of the facts surrounding this objection to Adam Klaege, the Trial Brief is the first
`
`time Applicant has raised this objection, which is over 10 months after the identification of
`
`Adam Klaege as a declarant. Under the second interpretation of the facts surrounding
`
`Applicant’s objection to Adam Klaege, Applicant is reasserting its previously presented motion
`
`to strike that the Board declined to grant. Regardless of the interpretation of the facts, the
`
`outcome is the same—the Board should deny Applicant’s motion to strike. The motion to strike
`
`is either (1) untimely and therefore waived or (2) has previously been decided by the Board.
`
`A.
`
`Applicant’s Motion to Strike is Untimely and Has Been Waived
`
`Under the first interpretation of the facts, Applicant is, for the first time,
`
`requesting that the Board strike the Declaration of Adam Klaege based on the timing of the
`
`disclosure. 31 TTABVUE at FN 3 p. 28-29. The Declaration of Adam Klaege was submitted to
`
`the Board on May 22, 2023, and its Trial Brief is the first time Applicant has requested relief
`
`based on the timeliness of the disclosure of Adam Klaege. Id.; 16 TTABVUE. Applicant (1)
`
`never filed a motion to strike relating to the timing of the Klaege disclosure; (2) never sought to
`
`reopen discovery to remedy any alleged prejudice; (3) never raised these concerns with counsel
`
`for Opposer; and (4) never raised these concerns with the Board until now. Instead, Applicant
`
`presents its motion to strike, for the first time, in its Trial brief, nearly 10 months after Opposer
`
`identified Klaege and submitted his Declaration. Pursuant to both the Trademark Trial and
`
`Appeal Board Manual of Procedure (“TBMP”) and prior Board decisions discussed below,
`
`Applicant’s actions are untimely and Applicant has waived its objections at this late stage of the
`
`proceedings.
`
`2
`
`

`

`
`
`Applicant’s failure to timely file the motion to strike more than 10 months after
`
`the Klaege affidavit was produced results in a waiver of its claims. As set forth in the TBMP,
`
`“[w]hen testimony has been presented by affidavit or declaration, but was not covered by an
`
`earlier pretrial or rebuttal disclosure, the remedy for any adverse party is the prompt filing of a
`
`motion to strike.” TBMP § 707.03(b). The TBMP also explains that “[f]ailure to assert an
`
`objection in a timely manner may result in the objection being waived.” Id. In accordance with
`
`the TBMP, the Board has determined that a movant first asserting a motion to strike in the trial
`
`brief is untimely and results in the waiver of the claim. See, e.g., Viacom International, Inc. v.
`
`Armstrong Interactive, Inc., 2022 WL 782588 at *33 (TTAB March 11, 2022) (explaining that
`
`the opposer’s motion was untimely and waived because it was first made in its trial brief and
`
`should have promptly been made, at the latest, within twenty days after an affidavit was filed to
`
`allow the proffering party to cure the alleged defect or argue that it should be overruled); Societe
`
`Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *7 (TTAB 2020) (objection that
`
`evidence was not adequately disclosed in pretrial disclosures overruled as untimely and waived
`
`when first raised in trial brief; objection is curable and should have been made via motion to
`
`strike promptly after the declaration and exhibits were filed). If we are to apply the Board’s
`
`teaching in Viacom International, the deadline for Applicant to file a motion to strike the
`
`Declaration of Adam Klaege based on the timeliness of the disclosure was June 11, 2023. By
`
`waiting more than 10 months after the Klaege affidavit was produced to raise its objection in its
`
`Trial Brief, Applicant has waived its claims.
`
`Even if Applicant had informally raised its objections to Opposer regarding the
`
`Declaration of Adam Klaege—which has only been referenced vaguely in support of its
`
`previously unsuccessful motion to strike—the Board has previously determined that informally
`
`3
`
`

`

`
`
`raising an objection to a declaration testimony for failure to make untimely disclosures is not a
`
`substitute for filing a motion to strike with the Board. See Amazon Technologies, Inc. v. Games
`
`Park Worldwide, Ltd., 2023 WL 6253670 at *3 (TTAB September 25, 2023) (determining that
`
`motions to strike first filed by both parties in its trial briefs were untimely and therefore waived
`
`despite the fact that both parties communicated to each other informally that they objected to
`
`evidence for failure to disclose in pretrial disclosures). Here, the facts are tilted even further
`
`away from Applicant’s position because there were no communications regarding this issue and
`
`even had there been, the absence of a timely motion to strike on this issue prior to the
`
`Applicant’s Trial Brief results in a waiver.
`
`B.
`
`Applicant’s Motion to Strike Has Already Been Decided by the Board
`
`The alternative interpretation of the facts surrounding Applicant’s objection to
`
`Klaege is that the objection to the timing of the submission of the Declaration of Adam Klaege
`
`was previously decided as part of Applicant’s earlier motion to “strike all of Opposer’s
`
`documents filed after Opposer’s Trial Period closed.” 20 TTABVUE at p. 3. Opposer filed a
`
`petition to extend its testimony period deadline on May 8, 2023 and on May 26, 2023, Applicant
`
`filed its opposition to Opposer’s petition. 5 TTABVUE; 20 TTABVUE. Included within the
`
`Applicant’s May 26, 2023 filing was Applicant’s motion to “strike all of Opposer’s documents
`
`filed after Opposer’s Trial Period closed.” 20 TTABVUE at p. 3. The Declaration of Adam
`
`Klaege was one of the documents filed by Opposer which arguably was encompassed within the
`
`scope of Applicant’s motion to “strike all of Opposer’s documents filed after Opposer’s Trial
`
`Period closed.” Id.
`
`The Board considered Applicant’s motion to strike these documents and on
`
`August 21, 2023 refused to grant the relief requested. 23 TTABVUE. The Applicant has taken no
`
`action over the past six months in response to this decision by Board. Instead, the Applicant has
`
`4
`
`

`

`
`
`waited until its submission of its Trial Brief to revive its earlier denied motion to strike the
`
`Declaration of Adam Klaege. The Board has already considered the timeliness of the submission
`
`of the Declaration of Adam Klaege and Applicant’s attempt to renew the motion to strike should
`
`be denied.
`
`Thus, Applicant’s motion to strike both the Declaration of Adam Klaege and
`
`Opposer’s document production should be denied. Either the motion to strike is untimely and
`
`therefore has been waived, or the Board has already ruled on this issue and decided not to grant
`
`the requested relief. Regardless of which interpretation of facts is applied, one fact is clear—
`
`Applicant has not raised this issue in a timely manner nor has Applicant explained how it has
`
`been prejudiced. Over the past six months Applicant had every opportunity to file a timely
`
`motion to strike and was well aware of its ability to do so but instead took no action until its
`
`submission of its Trial Brief. Applicant’s delay results in a waiver of its claim and any other
`
`decision will result in prejudice to the Opposer.
`
`III. APPLICANT PROVIDES NO EVIDENCE THAT THE CAT MOBILE
`APPLICATIONS ARE NOT STRONG OR FAMOUS IN INTERNATIONAL
`CLASSES 9 AND 35
`
`Applicant grossly mischaracterizes the impact and nature of the CAT Mobile
`
`Applications on the relative strength and fame of the CAT Mark on International Class 9 and 35
`
`goods, claiming that the CAT Mark is not strong or famous in these classes. 31 TTABVUE at
`
`26-29. First, Applicant provides no evidence or proof in support of this assertion. Id. Instead,
`
`Applicant merely provides its unsupported interpretation of the strength of the CAT Mark as
`
`evidenced by use of the CAT Mobile Applications. Id. Under the Applicant’s unsupported
`
`theory, because these apps are not used by the “non-purchasing public,” the CAT Mobile
`
`Applications are not relevant to the strength or fame of the CAT Mark in relation to software
`
`applications in International Classes 9 and 35 according to the Applicant. 31 TTABVUE at 28.
`
`5
`
`

`

`
`
`Aren’t the “owners, dealers and sales representatives” of CAT branded equipment relevant
`
`consumers of these CAT-branded mobile applications used in conjunction with CAT branded
`
`construction products and services? Next, who is the “non-purchasing public” identified by the
`
`Applicant and what evidentiary support does Applicant provide for summarily discounting the
`
`impact of the over 1 million downloads and 10 million consumer impressions (which are of
`
`record in this proceeding) generated by these CAT Mobile Applications? Applicant provides no
`
`detail or substantiation regarding this claim and instead relies upon vague conjecture.
`
`A review of the evidence submitted in this case (as contrasted to unsubstantiated
`
`argument) shows that Opposer has submitted uncontroverted evidence from third party sources
`
`of millions of downloads and commercial impressions of CAT-formative mobile applications all
`
`of which are narrowly tailored to enhance sales and customer support for Opposer’s CAT-
`
`branded products and services for the benefit of Caterpillar’s customers and potential customers.
`
`To reiterate this, and for ease of review for the Board, Opposer again sets forth below the
`
`purpose of some of the current CAT Mobile Application offerings along with information on the
`
`number of downloads and impressions generated by the CAT Mobile Applications, which was
`
`previously included in its Trial Brief. 30 TTABVUE at 11-14.
`
`APP NAME
`
`PURPOSE
`
`CAT® App: Fleet Management
`
`CAT® Inspect
`
`The CAT® Rental Store
`
`CAT® Central
`
`Allows customers to track the location and health of
`equipment and request servicing and new parts from the
`customer’s local Cat® Dealer
`Allows users to download and complete pre-defined
`inspection tasks, such as maintenance checklists, for
`Caterpillar vehicles and equipment and even competitors’
`vehicles and equipment
`Allows customers and potential customers to find, rent, and
`manage equipment rentals from mobile devices
`Source of maintenance and support information for
`customers and dealers with abilities to search, find and
`purchase genuine Cat® parts
`
`6
`
`

`

`
`
`APP NAME
`
`PURPOSE
`
`CAT® Virtual Showroom
`
`CAT® Wear Management System
`
`CAT® Used Inspect
`
`CAT® SIS2GO
`
`CAT® Monitor Simulator
`
`CAT® Activate
`
`CAT® Remote Asset Monitor
`
`CAT® Emissions Compliance
`
`CAT® Cycle Timer
`
`CAT® Power OnSite
`
`CAT® Methane Number Calculator
`
`CAT® Remote HMI Demonstrator
`
`CAT® Tracker for Dealer
`
`CAT® Tech Benefits AR
`
`CAT® Spotters Guide
`
`CAT® GRADE Assistant
`
`CAT® DSP Mobile
`
`CAT® Check In/Out
`
`
`16 TTABVUE at ¶ 12.
`
`
`Provides sales reps access to enterprise-wide, non-
`confidential marketing material that can be emailed and
`tracked
`Enables Caterpillar dealers and customers to measure and
`manage their equipment wear components such as filters,
`belts and the like.
`Allows Caterpillar dealers to conduct inspections on used
`equipment via mobile devices
`Allows customers to maintain, troubleshoot, and repair Cat®
`equipment
`Provides customers and potential customers a hands-on
`experience with the unique features of the in-cab Monitor,
`available with select Cat® equipment
`A mobile tool for Caterpillar dealers, enabling administration
`of digital product subscriptions and telematics device
`management
`Enables Caterpillar customers and dealers’ customers to
`track their heavy equipment CAT assets
`Allows users to retrieve the emission details and related
`certificates of a Cat® asset
`Enables customers and dealers to perform job study machine
`cycle times using mobile devices
`Allows customers to create an IoT connection between
`engine and mobile device for the wireless transfer of data
`Allows quick, convenient calculations of methane number,
`heating value and other natural gas parameters
`Utilizes pre-programmed data to show how values appear on
`the display of a vehicle and demonstrate navigation
`functionality
`
`Allows agents in China to access device status, conduct
`health and performance queries, and customer management
`Allows users to engage with an augmented reality miniature
`job-site
`Assists Cat® dealers in identifying OEM machines that may
`be powered by Cat® industrial engines
`Delivers user assistance information to the machine operator
`in the field, in the office, or at home
`Enables Cat® dealers to seamlessly manage digital product
`services and telematic devices
`Allows users to capture the condition of a rental asset on
`their mobile device and synchronize this information with the
`Caterpillar Dealer Rental Software
`
`7
`
`

`

`
`
`The uncontroverted purpose of the CAT Mobile Applications, as shown in the
`
`chart above, is to facilitate and enhance the experience of customers and potential customers of
`
`CAT-branded products and services, many of which are used in the construction industry. 30
`
`TTABVUE at 9-15. The above-mentioned CAT Mobile Applications cover a disparate subject
`
`matter range including, among others, (1) an online retail store for customers and potential
`
`customers; (2) a wear and tear analysis tool for equipment management; (3) an augmented reality
`
`miniature jobsite to assist with project planning; (4) an emissions compliance tool for CAT
`
`assets; (5) providing user assistance information to machine operators onsite; and (6) an online
`
`store for renting equipment. Id. In addition to the wide subject matter range, the CAT Mobile
`
`Applications cover a wide range of types of heavy machinery and earth-moving equipment such
`
`as track and wheel tractors, loaders, excavators, haulage trucks, drills, compactors, telehandlers
`
`and backhoe loaders, as well as diesel and natural gas engines, industrial gas turbines, diesel-
`
`electric locomotives, and agricultural, marine, and software and technology applications for all
`
`of the foregoing. 30 TTABVUE at Section V.A; 17 TTABVUE at ¶¶ 8, 10, 34.
`
`In light of the breadth of the subject matter for the disparate applications and the
`
`reach across a number of different physical products and industries, it is no surprise that the CAT
`
`Mobile Applications have generated millions of downloads and created over ten million
`
`impressions, as shown below:
`
`APP NAME1
`
`CAT® App: Fleet Management
`CAT® Inspect
`CAT® Inspect 2.0
`CAT® Inspect 3.0
`CAT® Virtual Showroom
`
`IMPRESSIONS SINCE APRIL
`1, 2015
`4,000,000
`716,000
`115,000
`102,000
`558,000
`
`DOWNLOADS SINCE
`APRIL 1, 2015
`236,000
`101,000
`17,100
`16,200
`23,300
`
`
`1 As set forth in the Declaration of Adam Klaege, Mr. Klaege, as Senior IT Analyst, has access to data and metrics
`relating to the usage and implementation of the CAT Mobile Applications including the numbers of impressions and
`downloads as provided by third-parties like the Apple App Store. 16 TTABVUE at p. 8-9.
`
`8
`
`

`

`
`
`APP NAME1
`
`CAT® Wear Management System
`Cat®Used Inspect
`CAT® Technician
`CAT®SIS2GO
`CAT® Monitor Simulator
`CAT® Activate
`CAT® Technology Experience
`CAT® TrackIt
`The CAT® Rental Store
`CAT® PartsToGo
`CAT® Remote Asset Monitor
`CAT® Emissions Compliance
`CAT® Central
`CAT® Financial Quote
`CAT® Cycle Timer
`CAT® VR Learning
`CAT® Power OnSite
`CAT® Bucket Configurator
`CAT® Equipment Tracker
`CAT® MineStar: Define Your Mine
`CAT® eRoutes
`CAT® Drill Cycle Timer
`CAT® Methane Number Calculator
`CAT® Remote HMI Demonstrator
`CAT® myEquipment
`CAT® Marine Capability Hub
`CAT® BCP Supplier BIQ
`CAT® Tracker for Dealer
`CAT® Value Estimating Tool
`CAT® Operator
`CAT® Filters and Fluids
`CAT® Technology Benefits
`CAT® Tech Benefits AR
`CAT® Task
`CAT® Spotters Guide
`CAT® SafetyShare
`CAT® Services Benefits
`CAT® myBHL
`CAT® Service Options Advisor
`CAT® GRADE Assistant
`CAT® Concierge Plus
`CAT® Interactive Product Guide
`CAT® Attachment
`CAT® D6 AR Tour
`CAT® DSP Mobile
`CAT® Check In/Out
`TOTAL
`
`IMPRESSIONS SINCE APRIL
`1, 2015
`405,000
`390,000
`363,000
`335,000
`281,000
`262,000
`244,000
`196,000
`192,000
`180,000
`154,000
`140,000
`133,000
`122,000
`108,000
`105,000
`104,000
`98,000
`85,700
`77,100
`72,600
`69,200
`67,400
`64,700
`60,400
`56,600
`55,200
`47,300
`44,900
`43,500
`40,600
`36,500
`35,400
`34,700
`34,100
`34,100
`30,900
`29,700
`29,200
`20,000
`17,600
`13,400
`8,400
`4,500
`3,700
`155
`10,420,555
`
`DOWNLOADS SINCE
`APRIL 1, 2015
`24,400
`18,300
`36,200
`402,000
`21,100
`39,500
`14,700
`9,400
`16,100
`15,500
`5,300
`5,700
`10,200
`6,400
`4,300
`5,700
`2,100
`4,800
`10,600
`984
`1,200
`3,400
`3,100
`891
`4,500
`1,100
`3,500
`3,700
`1,600
`6,400
`5,100
`3,200
`748
`5,300
`842
`785
`471
`1,200
`764
`745
`163
`1,700
`814
`70
`485
`1,100
`1,099,762
`
`9
`
`

`

`
`
`
`16 TTABVUE at ¶17.
`
`
`The totality of evidence submitted in Opposer’s Trial Brief clearly and objectively
`
`demonstrates the strength and fame of the CAT Mobile Applications in International Classes 9
`
`and 35 and Applicant’s unsupported attempts to discredit this objective evidence of strength and
`
`fame in International Classes 9 and 35 is without merit. Opposer has unequivocally established
`
`in Opposer’s Trial Brief that the CAT mark is strong and famous for mobile applications in
`
`International Classes 9 and 35.
`
`IV.
`
`PURPOSE OF CITED REGISTRATIONS INCLUDING THE TERM “ZIP” IN
`NOTICE OF RELIANCE NO. 6
`
`Opposer submitted Notice of Reliance No. 6 containing a list of International
`
`Class 9 and 35 registrations on the USPTO register that contain the term “ZIP” to show that the
`
`term “ZIP” is weak and diluted in connection with these goods and services. 15 TTABVUE; see
`
`also 30 TTABVUE at 3. As Applicant correctly notes, the registrations included in Opposer’s
`
`Notice of Reliance No. 6 do not demonstrate a USPTO practice of disclaimers of the term ZIP on
`
`International Class 9 and 35 goods and services. Any arguments in Opposer’s prior submissions
`
`asserting that Opposer’s Notice of Reliance No. 6 demonstrates a pattern of disclaimers of the
`
`term ZIP are respectfully withdrawn.
`
`Opposer’s Notice of Reliance No. 6 clearly demonstrates that many third-parties
`
`have, for many years, been using and promoting ZIP-formative marks in the marketplace for
`
`International Class 9 and 35 goods and services. In view of this, it is clear that “ZIP” cannot be a
`
`dominant, distinctive element of Applicant’s ZIPCAT mark. Further evidence of the relative
`
`weakness of the term ZIP in Applicant’s ZIPCAT mark is found in Applicant’s discovery
`
`responses and Trial Brief. Applicant expressly admitted that it selected ZIP because of the
`
`desirable connotation of the dictionary definition of “zip” specifically, “to move, act, or function
`
`10
`
`

`

`
`
`with speed and vigor.” 31 TTABVUE at 13; 7 TTABVUE ¶¶ 9-10 (Exhibit A Response to
`
`Interrogatory No. 2). If ZIP is widely used on similar goods and services, and the Applicant
`
`admits that it adopted the term ZIP because of the desirable connotation “to move, act, or
`
`function with speed and vigor,” then it is clear that the element ZIP is not a strong, distinctive
`
`element of the ZIPCAT mark. Instead, it is clear that the term CAT is the most distinctive
`
`portion of Applicant’s mark. It is uncontroverted that a junior user adding a descriptive term to
`
`the entire mark of another is not sufficient to avoid confusion. Opposer previously provided a
`
`litany of cases supporting this position in its Trial Brief. See 31 TTABVUE at 34.
`
`V.
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`CONCLUSION
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`For the reasons discussed above and in Opposer’s Trial Brief, registration and use
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`of Applicant’s ZIPCAT mark is likely to cause confusion with and dilute Caterpillar’s strong and
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`famous, prior-registered CAT mark. Caterpillar thus respectfully requests that the Board sustain
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`Caterpillar’s Opposition.
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`Respectfully submitted,
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`Dated: March 15, 2024
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`FOLEY & LARDNER LLP
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`By: /s/ RJ McKenna
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`Richard J. McKenna
`Matthew D. Witsman
`777 East Wisconsin Avenue
`Milwaukee, WI 53202-5367
`Ph: (414) 271-2400
`Fax: (414) 297-4900
`Email: IPDocketing@foley.com
`Counsel for Opposer
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`The undersigned hereby certifies that a true and correct copy of the foregoing OPPOSER’S
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`CERTIFICATE OF SERVICE
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`REPLY TRIAL BRIEF was forwarded by e-mail to counsel for Applicant at steve@schrantzlaw.com.
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`Dated this 15th of March 2024
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`/s/ Matthew D. Witsman
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`Matthew D. Witsman
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