Santa Cruz coffee shop with 'cat' in its name hit with cease and desist from Caterpillar Inc.

SF Chronicle ^ | 5/27/19 | By Kyla Linville

[NohSpinZone]

Santa Cruz coffee shop Cat and Cloud Coffee says it received a cease and desist from Caterpillar Inc. — because they use the word "CAT" in their shop name and merchandise.

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."

[rebel25]

No not at all there is nothing similar about their logos except the word cat. Different color font and rest of logo, I hope they counter sue and make cat cater ir something similar, sheesh.

[Rio]

In Santa Cruz County, my search yielded these...
CAT AND COMPANY 1996-0001271 SCHLOSSER, CATHERINE MAE 10/25/1996
CAT PUBLISHING 1997-0000817 GILBERTIE, JAMES L 7/31/1997
CAT PUBLISHING 1997-0000817 GILBERTIE, LESLIE A 7/31/1997
CAT’S MEOW 2007-0001092 JUSZAK, LORI 8/6/2007

and these...

CATERPILLAR CAMPUS 2011-0001139 S & R ENTERPRISES 9/29/2011
CATERPILLAR CAMPUS 2018-0000728 CATERPILLAR CAMPUS, INC. 6/19/2018
CATERPILLAR CAMPUS INFANT CENTER 2018-0000728 CATERPILLAR CAMPUS, INC. 6/19/2018
CATERPILLAR CAMPUS PRESCHOOL 2018-0000728 CATERPILLAR CAMPUS, INC. 6/19/2018
CATERPILLAR CAMPUS PRESCHOOL - THE LEARNING PLACE 2018-0000728 CATERPILLAR CAMPUS, INC. 6/19/2018
CATERPILLAR CAMPUS PRESCHOOL-THE LEARNING PLACE 2015-0000586 VINCENT, JENNIFER RENEE 5/12/2015
CATERPILLAR CAMPUS PRESCHOOL-THE LEARNING PLACE 2015-0000586 MACIELLE, JOYCE MARIE 5/12/2015
CATERPILLAR ROAD STORAGE 2017-0001014 TOPS INDUSTRIES 9/12/2017

[Dr. Sivana]

[Moonman62]

“I agree with Caterpillar on this one. They are protesting a trademark registration by the coffee shop. Too bad the Fake News didn’t make that clear in the title and at the start of the article.”

Yeah, this company really posed a threat to Caterpillar. /s

...

Since you are so smart, please explain to us how trademarks work.

[rcofdayton]

I fail to understand how the word “cat” could be trademarked.

[TexasGator]

“No not at all there is nothing similar about their logos “

I never mentioned logos.

[VietVet876]

“Green Zone” is a generic term. Figure it out.

[shotgun]

That was probably their reasoning to change their approval process. On another note, I hated that movie and it seemed liked they would show that at least once a month back in the day. Maybe it had something to do with Dennis weaver as well...

[fidelis]

"Caterpillar does a nice business on their licensed apparel, and if they don't defend their trademark every time, then the next time someone will simply point to this case say, "See, they don't defend their trademark, therefore it is null and void." Even if they lose this one in court, they benefit from demonstrating a strong defense of their trademark. Don't blame Caterpillar. Blame trademark law."

Yeah, I can totally see how the Cat and Cloud apparel line could be mistaken for that of Caterpillar:

[Mercat]

Do they sell tractors?

[Rebelbase]

Kat and Kloud Kofefee.

[concentric circles]

The following trademarks were lost because they were allowed to fall into common usage:

Aspirin, Catseye, Cellophane, Dry ice, Escalator, Flip phone, Flit gun, Heroin, Hovercraft, Kerosene, Lanolin, Laundromat, Linoleum, Mimeograph, Sellotape,
Spidola, Teleprompter, Thermos, Trampoline, Videotape.

[mrsmith]

Caterpillar HAS to defend it’s copyright- always.
Or they lose it.

CAT apparel is their balliwack, and their’s alone.
Nothing’s perfect.

[NohSpinZone]

>>Kat and Kloud Kofefee.<<

[Little Pig]

Caterpillar is going after them for selling apparel with their name (cat and cloud). So does this mean they’ll also be going after Target for its “Cat and Jack” clothing line?

[Bubba Ho-Tep]

Yeah, I can totally see how the Cat and Cloud apparel line could be mistaken for that of Caterpillar

Not the issue. The issue is that they've registered a trademark for apparel with the word "Cat" on it, and Caterpillar already has one. If Caterpillar doesn't challenge it, their trademark could be construed to be diluted. If Cat and Cloud had just printed their logo on t shirts and hats and sold them, there'd be no problem. But by registering the trademark in an area in which Caterpillar already has one, they've run into trouble. Frankly, their trademark lawyer, if they had one, should have warned them. I run things through legal for a trademark search all the time and frequently get the response that pursuing something would be "high risk," as they put it, in very similar circumstances.

[Bubba Ho-Tep]

So does this mean they’ll also be going after Target for its “Cat and Jack” clothing line?

Maybe. And they'll be in a stronger position to do so if they win this one.

[moovova]

Caterpillar’s a pussy.

[Svartalfiar]

Not the issue. The issue is that they've registered a trademark for apparel with the word "Cat" on it, and Caterpillar already has one. If Caterpillar doesn't challenge it, their trademark could be construed to be diluted. If Cat and Cloud had just printed their logo on t shirts and hats and sold them, there'd be no problem. But by registering the trademark in an area in which Caterpillar already has one, they've run into trouble. Frankly, their trademark lawyer, if they had one, should have warned them. I run things through legal for a trademark search all the time and frequently get the response that pursuing something would be "high risk," as they put it, in very similar circumstances.

Except "CAT" and "Cat & Cloud" is NOT the same thing. From my understanding, you don't trademark a word, you trademark a logo or a design. If you want to register just a word or words, that falls under copyright / service mark. So unless Cat&Cloud is using Caterpillar's actual CAT logo (or something VERY similar) in their Cat&Cloud stuff, this doesn't apply.

Also, why should Cat&Cloud not trademark their own stuff? So the next guy can just use their logo no problem? Why should Caterpillar be able to block any usage of the word "cat", but Cat&Cloud can't protect their own "Cat&Cloud"?

[Bubba Ho-Tep]

Except "CAT" and "Cat & Cloud" is NOT the same thing. From my understanding, you don't trademark a word, you trademark a logo or a design.

Go browse around the USPTO TESS database.