One of the more frustrating aspects of the intersection of trademarks and business is how blind the law seems to be when it comes to recognizing the primary market in which a company operates. This is specifically an issue when it comes to merch and apparel, as many companies build up brand loyalty in their primary markets and then also move to sell clothing to those loyal fans. This all makes sense until these same companies get the USPTO to grant overly-broad trademarks for those ancillary markets, which are then used to bully smaller companies with the excuse being, “Hey, we have to protect our marks, or we lose them.”
A perfect example of this is the dispute currently going on between Caterpillar Inc., famed makers of tractor equipment and the like, and Cat & Cloud Coffee, which slings java.
The large corporation has trademarked “CAT” and has taken legal action against the small business to stop them from using it. Owners of the small business say they first received the letter in August of 2018.
“It seemed ridiculous. So, we responded and got a lawyer,obviously,” said Jared Truby, co-owner of Cat and Cloud Coffee. “We asked them to further explain their case, asked them to drop it as we are in a completely different industry. They didn’t want to, so we went back and forth a few times and called them out for bullying.”
Truby says when they opened the shop almost three years ago, they couldn’t have predicted something like this happening.
“Could anybody imagine a $54 billion machinery company coming after a coffee company? I don’t think that’s even in the cards,” said Truby. “The first biggest thing they want us to do is not print the name Cat and Cloud on anything again. I think that is unbelievable. I don’t think that’s going to hold up.”
For its part, Caterpillar has pushed back on the outcry over this, pointing out that the only trademark it is disputing is Cat & Cloud’s use of the word “cat” on merch and apparel, as Caterpillar sells an absolute ton of this stuff itself. It’s an attempt at claiming its being reasonable, but it very much is not.
First, a trademark on the the acronym “CAT” is plainly insane if it’s going to be used against apparel that uses the word “cat.” I would hope that is obvious to everyone. Such a generic trademark is simply not justified. On top of that, the coffee shop’s use of the word is a reference to a literal cat. The CAT mark, on the other hand, is a reference to a caterpillar. So we’re not even in the same taxonomic family. As you might expect, the branding on Cat & Cloud’s apparel looks nothing like Caterpillar’s.
It all kind of has that cutesy motif that is well suited for a coffee shop with a cute name and terribly suited if you’re trying to fool the public into thinking you’re a tractor company. Nobody looking at anything the shop sells on its site is going to somehow think Caterpillar is involved.
Which doesn’t mean the bullying won’t work. As is always the case in situations like this, the expense to defend itself could force Cat & Cloud’s hand.
“I guess the good news is if somebody is intimidated by our small little company in Santa Cruz, it means we’re doing something right,” said Truby. “It leads me to believe we’re doing something that’s far more important than I can see right now.”
Truby says they’ve spent nearly $10,000 already dealing with this case. He says not being able to sell apparel for extra income will have an impact on both employees and the business.
Here’s hoping they get the support to stick this out. Or that someone at Catepillar gets a whiff of this and wants to craft a PR win for itself by ceasing this bullying behavior.