TTABlog Test: Is BLACKTHORN for Construction Management SAAS Confusable with BLACKTHORNE for Computer-Based Information Systems Consulting?

The USPTO refused to register the mark BLACKTHORN SOFTWARE, in standard character and design form, for on-line software services (SAAS) in the field of construction or project management, employee and contractor tracking and management, and time tracking and management [SOFTWARE disclaimed] in view of 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." Not surprisingly, the Board found the marks to be similar, but what about the goods and services? How do you think this came out? In re Blackthorn IP, LLC, Serial Nos. 97714024, 97714033 (December 12, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Marks: The Board observed that "consumers’ tendency to focus on and recall the first part of a trademark means the added generic word 'software' in Applicant’s mark provides little distinction from the cited mark BLACKTHORNE. *** And when a descriptive term, like 'software for Applicant’s software-based services," is added to a mark, consumers will understand the term as describing the services, not as identifying the source of the services. For this reason, descriptive terms, like the disclaimed 'software' in the applied-for mark, receive less emphasis in the likelihood of confusion analysis."

There was no evidence that the word "Blackthorn(e)" has different meanings in the marks. The Board concluded that "Applicant’s word mark and the cited mark are similar in every respect and this fact increases the likelihood of confusion."

As to applicant's word-and-design mark, the design element "does not create a new and different meaning for that created by the literal elements of this mark." The Bord found that "Applicant’s word + design mark is likely to create a commercial impression similar to that created by the cited BLACKTHORNE mark."

The Goods and Services: The Board acknowledged that the cited registration does not identify software services; instead, it refers to "computer-based information systems." However, applicant conceded that this phrase involves "software or computing," as does the listing of services in the application. Moreover, the registration "identifies a broad range of consulting services relating to software of any kind, and for that reason, the narrower software services identified by Applicant may be effectively subsumed within the scope of the services identified in the cited Registration."

We find that Applicant’s software services include at least some amount of consulting or planning with prospective customers of the services. To provide the sort of specialized software solutions identified in the Application without any consultation or planning would make no sense. Applicant concedes this point when it acknowledges “a market trend whereby companies that offer particular software products also offer consultations on use and implementation of those particular software products sold by the same company.”

The Board concluded that the services "are closely related and this increases the likelihood of confusion."

Other Factors: As to trade channels, applicant maintained that the involved services are offered through each party's respective website. The Board noted that this argument "is based on actual market uses (or likely uses). Our analysis, on the other hand, must be limited to the normal trade channels based on the services identified in the Application and cited Registration."

As to purchaser care, the cited registration "identifies a broad range of services and there is no evidence that consumers of such services consistently exercise care when making purchasing decisions."

We find this is a mixed market, with some consumers likely making careful purchasing decisions and some making less careful decisions, and we are required to base our decision “on the least sophisticated potential purchasers.” Stone Lion Capital Partners, 746 F.3d at 1325. We find 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. The fourth DuPont factor is neutral.

Conclusion: The Board concluded that the first and second DuPont factors weighed "most heavily" in this appeal, and so it affirmed the refusal.

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TTABlogger comment: Prunus spinosa, called blackthorn or sloe, is a species of flowering plant in the rose family,

Text Copyright John L. Welch 2025.