IP Law Daily, TRADEMARK—TTAB: Cancellation granted in real estate and construction services dispute, (Aug 20, 2025)

By Kevin M. Finson, J.D.

Marks containing the letters BH as a dominant or at least prominent element were likely to be confused because they were used with highly related services and identical channels of trade.

There was a likelihood of confusion between the registered marks containing the letters BH of two real estate and construction services providers, the Trademark Trial and Appeal Board has held, in sustaining petitioner BH Management Service LLC’s petition to cancel Blackhorse LLC’s registration. The marks were similar and the services were overlapping, if not identical, and the petitioner established priority of use (BH Management Services, LLC v. Blackhorse LLC, No. 92083480 (T.T.A.B. Aug. 1, 2025)).

Blackhorse, LLC (Blackhorse) was the owner of a Principal Register registration for a stylized mark consisting of the letter BH with the word “Blackhorse” superimposed over them, for use with a large variety of services in the construction, real estate, energy production, and housing industries. BH Management Services, LLC (BH) sought cancellation of Blackhorse’s registration on the ground of likelihood of confusion with its numerous BH and BH-formative registered and common law marks used in the real estate management and residential construction project management industries. After briefly noting that BH had shown an entitlement to a statutory cause of action and priority based on its registrations, the Board considered the DuPont factors for which there was evidence of record.

Similarity of services and trade channels. The Board found that it was essentially conceded that Blackhorse’s services were encompassed by, overlapped, or were identical to those of BH. Blackhorse argued that the trade channels were different, and that BH willfully ignored real-life differences, but the Board held that these factors were concerned with the channels of trade claimed in the registrations, not with actual use. Both registrations were unrestricted as to channels of trade. These factors weighed in favor of a likelihood of confusion.

Strength of petitioner’s mark. BH’s marks were listed on the Principal Register without a claim of acquired distinctiveness, so they were presumed to be inherently distinctive. Blackhorse submitted several existing registrations which contained the letters BH to challenge that presumption, but the Board found that most of those registrations were related to irrelevant services. Those that were relevant did not use BH as the dominant term. These were not sufficient to rebut the presumption.

The Board also found that there was insufficient evidence in the record for it to draw substantial conclusions about commercial strength, but advertising expenditures of $20 million were notable even without context. The petitioner’s marks were entitled to slightly more than the ordinary scope of protection.

Similarity of the marks. The Board found that the marks were substantially similar in appearance, sound, connotation, and commercial impression, noting that the shared element BH was the sole or a dominant element in each of BH’s marks and was clearly recognizable and prominent in Blackhorse’s mark. This factor weighed in favor of a likelihood of confusion.

Actual confusion. Although there was no evidence of actual confusion, there was also no evidence of opportunity for confusion, so this factor was neutral.

Purcaser care. Blackhorse argued that both parties were in the real estate industry, dealing with expensive properties for which purchasers would exercise great care. The Board found, however, that the listed services included some that might be purchased by individual homeowners and renters or ordinary members of the public, such as management services for an individual homeowner’s construction project. This factor was neutral.

Good faith adoption. Blackhorse argued that because bad-faith adoption has been accepted as showing a likelihood of confusion under the thirteenth “catch-all” factor, its good-faith adoption of the mark should weigh against confusion. The Board disagreed, finding that an absence of bad faith did not lessen the likelihood of confusion. This factor was neutral.

Balancing the factors, the Board found there was a likelihood of confusion and granted the petition to cancel.

The Case is Cancellation No. 92083480.

Judge: Cohen, D.

Attorneys: Christopher A. Proskey (Brownwinick Law Firm) for BH Management Services, LLC. Todd Wengrovsky (Law Offices of Todd Wengrovsky PLLC) for Blackhorse LLC.

Companies: BH Management Services, LLC; Blackhorse LLC

Cases: Trademark USPTO