IP Law Daily, TRADEMARK—TTAB: Likelihood of confusion exists between the marks BLACKTHORN SOFTWARE and BLACKTHORNE, (Dec 17, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

The TTAB found that the marks BLACKTHORN SOFTWARE and BLACKTHORNE are likely to be confused due to similarity of the marks, relatedness of the services, and overlapping trade channels.

In a non-precedential decision, the Trademark Trial and Appeal Board (TTAB) affirmed an examining attorney’s refusal to register the applicant’s mark BLACKTHORN SOFTWARE based on a likelihood of confusion with the registered mark BLACKTHORNE for computer and cyber security consulting services. The TTAB found that the similarity of the marks, the fact that the services are related, and the overlap in the trade channels weighed in favor of a conclusion that confusion is likely (In re Blackthorn IP, LLC, Nos. 97714024 and 97714033. (T.T.A.B. Dec. 12, 2025)).

Background. Blackthorn IP, LLC (applicant) sought to register on the Principal Register the mark BLACKTHORN SOFTWARE (SOFTWARE disclaimed) in standard characters and design form for management and software services in International Class 42. The examining attorney refused registration of the applicant’s mark under Section 2(d) of the Trademark Act due to a likelihood of confusion with the registered mark BLACKTHORNE for “Consulting services in the design and implementation of computer-based information systems for businesses; Technological planning and consulting services in the field of computer and cyber security,” in International Class 42 (cited mark). After the refusals were made final, the applicant appealed.

Likelihood of confusion. The TTAB, upon considering the DuPont factors for evaluating a likelihood of confusion, found that confusion was likely. The TTAB noted that the applicant and the examining attorney presented arguments under DuPont factors one, two, three and four.

The TTAB noted that the applicant’s word mark BLACKTHORN SOFTWARE and the cited mark BLACKTHORNE are similar, with the only differences being that the applicant does not use an “e” at the end of the word BLACKTHORN in its mark and adds the descriptive, disclaimed word “software.” Further, the first word of the applicant’s mark, BLACKTHORN is phonetically equivalent to the cited mark BLACKTHORNE. The TTAB found that there is no evidence that the word “Blackthorn(e)” means something different in the applied-for mark than it does in the cited mark. Additionally, consumers are likely to attribute the same meaning to both marks, and both marks are likely to create the same commercial impression in the market. Therefore, the applicant’s word mark and the cited mark are similar in every respect and this fact increases the likelihood of confusion.

As to the applicant’s word-and-design mark, the TTAB found that the design element of the mark does not create a new and different meaning for that created by the literal elements of this mark (i.e., from the word mark BLACKTHORN SOFTWARE). Further, there is no evidence as to the commercial impression created by the design element of this mark, though the applicant argued that the design element “creates a distinct impression when the entirety of the mark is considered.” Therefore, the TTAB concluded that the applicant’s word + design mark is likely to create a commercial impression similar to that created by the cited BLACKTHORNE mark. Accordingly, the first DuPont factor weighed in favor of likelihood of confusion.

The TTAB also noted that the cited mark identifies a broad range of consulting services relating to software of any kind, and for that reason, the narrower software services identified by the applicant may be effectively subsumed within the scope of the services identified in the cited mark. Thus, the applicant cannot avoid overlap or relatedness in the services by narrowing its own identification. The TTAB found that the applicant’s software services include at least some amount of consulting or planning with prospective customers of the services so the services the applicant identifies are related to those identified in the cited mark. However, the applicant argued that these consultation services are not a separate service because such consultation is inextricably intertwined with providing the software services. The TTAB noted that the applicant’s argument is effectively a concession that the services are so closely related that all providers of the type of specialized software services identified in the application also provide the sort of consultation and planning services identified in the cited mark. Thus, the services are closely related and this increases the likelihood of confusion. Therefore, the second DuPont factor supports the Section 2(d) refusal.

The TTAB found that providers of the type of specialized software identified in the Application also provide consultation services confirms that these two types of related services flow through the same trade channels. Thus, the related software-related services flow through similar trade channels. Accordingly, the third DuPont factor also supports the refusal.

The TTAB also noted that the cited mark identifies a broad range of services and there is no evidence that consumers of such services consistently exercise care when making purchasing decisions. The TTAB also found that the “least sophisticated potential purchasers” of registrant’s consultation and planning services likely exercise ordinary care in making purchasing decisions, which does not materially alter the likelihood of confusion. Therefore, the fourth DuPont factor is neutral.

Balancing the factors, the TTAB found that the first three DuPont factors point toward a likelihood of confusion. Accordingly, the TTAB determined that confusion is likely between the applicant’s mark and the cited mark for their respective identified services. Thus, the Section 2(d) refusal to register was affirmed.

The Case is Serial Nos. 97714024, 97714033.

Judge: Thurmon, M.

Attorneys: Terrence J. Edwards (Techlaw Ventures, PLLC) for Blackthorn IP, LLC. Monica L. Beggs for the USPTO.

Companies: Blackthorn IP, LLC

Cases: Trademark USPTO