Blackthorn IP, LLC

This Opinion Is Not a
Precedent of the TTAB
Mailed: December 12, 2025
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Blackthorn IP, LLC
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Serial Nos. 97714024, 97714033
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Terrence J. Edwards, of Techlaw Ventures, PLLC, for Blackthorn IP, LLC.
Monica L. Beggs, Trademark Examining Attorney, Law Office 105,
Jennifer L. Williston, Managing Attorney.
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Before Larkin, Dunn and Thurmon, Administrative Trademark Judges.
Opinion by Thurmon, Administrative Trademark Judge:
Blackthorn IP, LLC (“Applicant”) seeks registration on the Principal Register of
the mark, BLACKTHORN SOFTWARE (SOFTWARE disclaimed) in standard
characters, and the mark shown below

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both for management and software services in International Class 42.1
The Trademark Examining Attorney issued a final refusal of registration in both
Applications under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), finding a
likelihood of confusion, based on 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 42.2 The
1 Application Serial Nos. 97714024 (word mark) and 97714033 (word + design mark) were
filed on December 12, 2022, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b),
alleging a bona fide intent to use the marks in commerce. The word + design mark is
described as follows: “The mark consists of a series of triangles forming a peak, with the word
‘BLACKTHORN’ above the word ‘SOFTWARE’ located on the right side of the peak. The color
black represents background, outlining, shading, and/or transparent areas and is not part of
the mark.” The word “SOFTWARE” is disclaimed in both Applications.
Both Applications identify the following services: “Providing on-line non-downloadable
software for construction management, employee tracking and management, and contractor
tracking and management; Providing on-line non-downloadable software for project
management; Providing on-line non-downloadable software for construction project field
management; Providing on-line non-downloadable software for time tracking and time
management; Providing on-line non-downloadable software for construction asset tracking
and asset management; Providing on-line non-downloadable software for construction project
management; Software as a Service (SaaS) services featuring software for construction
management, employee tracking and management, and contractor tracking and
management; Software as a Service (SaaS) services featuring software for project
management; Software as a Service (SaaS) services featuring software for construction
project field management; Software as a Service (SaaS) services featuring software for time
management; Software as a Service (SaaS) services featuring software for construction asset
management; Software as a Service (SaaS) services featuring software for construction
project management,” in International Class 42.
Citations to the prosecution file refer to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system and identify the documents by title, date, and page in the
downloadable .pdf version. Citations to the briefs and other materials in the appeal record
refer to the Board’s TTABVUE online docket system.
2 Registration No. 6788232, issued July 12, 2022.

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Trademark Examining Attorney moved to consolidate the appeals,3 and we granted
the motion because “of the similarity of the records and issues in these cases ….”4 The
appeals are fully briefed and ready for final decision. We affirm the refusals to
register.
Section 2(d) – Applicable Law
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont
de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”), cited in B&B
Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 1314 (Fed. Cir. 2003). We must consider each DuPont
factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912
F.3d 1376, 1378-79 (Fed. Cir. 2019). “Whether a likelihood of confusion exists between
an applicant’s mark and a previously registered mark is determined on a case-by-case
basis, aided by application of the thirteen DuPont factors.” Omaha Steaks Int’l, Inc.
v. Greater Omaha Packing Co., 908 F.3d 1315, 1318 (Fed. Cir. 2018). When analyzing
these factors, the overriding concerns are not only to prevent buyer confusion as to
the source of the goods or services, but also to protect the registrant from adverse
commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil
Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993).
3 8 TTABVUE. We refer to the appeal records, which are identical, except that each refers to
the respective mark being appealed. We will cite to the appeal record for the standard
character mark, Application Serial No. 97714024, unless otherwise noted.
4 9 TTABVUE.

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“Each case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 1199 (CCPA 1973). Varying
weights may be assigned to each DuPont factor depending on the evidence presented.
See Citigroup Inc. v. Cap. City Bank Grp. Inc., 637 F.3d 1344, 1356 (Fed. Cir. 2011);
Shell Oil, 992 F.2d at 1206 (“the various evidentiary factors may play more or less
weighty roles in any particular determination”). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See In re i.am.symbolic, LLC, 866 F.3d
1315, 1322 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 1164-65 (Fed. Cir. 2002)); In re Chatam Int’l Inc., 380 F.3d 1340, 1342 (Fed.
Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”).
Likelihood of Confusion – Analysis
Applicant and the Trademark Examining Attorney presented arguments under
DuPont factors one, two, three and four. We address these factors in turn below.
A. Similarity of the Marks
To evaluate the similarity of the marks under the first DuPont factor, we consider
the marks in their entireties as to appearance, sound, connotation and commercial
impression. See, e.g., Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 1371 (citing DuPont, 476 F.2d at 1361). “Similarity

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in any one of these elements may be sufficient to find the marks confusingly similar.”
In re Inn at St. John’s LLC, 2018 TTAB LEXIS 170, *13 (quoting In re Davia, 2014
TTAB LEXIS 214, *4, aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019); accord Krim-Ko
Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732 (CCPA 1968) (“It is sufficient if the
similarity in either form, spelling or sound alone is likely to cause confusion.”)
(citation omitted).
“The proper test is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning, LLC, 668 F.3d 1356,
1368 (Fed. Cir. 2012). The focus is on the recollection of the average purchaser, who
normally “retains a general rather than a specific impression of marks.” In re
i.am.symbolic, llc, 2018 TTAB LEXIS 281, *11.
1. Applicant’s Word Mark
Applicant’s word mark BLACKTHORN SOFTWARE and the Cited Mark
BLACKTHORNE are similar, with the only differences being that Applicant does not
use an “e” at the end of the word BLACKTHORN in its mark and adds the descriptive,
disclaimed word “software.” These two distinctions are of little significance, as
consumers are likely to focus on and recall the word “Blackthorn(e)” from both marks.
As to Applicant’s mark, it is often observed that the first element of a mark tends to
play a dominant role in the mark’s commercial impression. See In re Detroit Athletic
Co., 903 F.3d 1296, 1303 (Fed. Cir. 2018) (finding “the identity of the marks’ two
initial words is particularly significant because consumers typically notice those

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words first”); Palm Bay Imps., 396 F.3d at 1372-73; Presto Prods., Inc. v. Nice-Pak
Prods. Inc., 1988 TTAB LEXIS 60, *8 (“it is often the first part of a mark which is
most likely to be impressed upon the mind of a purchaser and remembered”). In the
context of this appeal, 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.
The first word of Applicant’s mark, BLACKTHORN is phonetically equivalent to
the cited mark BLACKTHORNE. As noted above, this type of similarity, standing
alone, may be enough to show the similarity of the marks, particularly in word-of-
mouth uses of the marks.
It is true, as Applicant argues, that its mark includes the word “software” and this
is both a visual and aural distinction from the cited mark. But the question under the
first DuPont factor is not simply whether there are distinctions between the marks,
but whether the marks are similar enough that consumers are likely to mistake or
confuse the two marks. 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.
This weighting of the different parts of a mark is not an improper dissection of the
mark, as Applicant argues. While it is true that consumers will see the full mark, it
is also true that “in articulating reasons for reaching a conclusion on the issue of

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confusion, there is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their entireties.” In re Nat’l Data
Corp., 753 F.2d 1056, 1060 (Fed. Cir. 1985) (quoted by Detroit Athletic Co., 903 F.3d
at 1305). We find the marks, in their entireties, are similar in appearance and sound.
Though Applicant submitted evidence of different possible meanings of the word
BLACKTHORN as used in its mark, we find the record fails to provide a clear
definition for either mark. 6 TTABVUE 15-16. More importantly, there is no evidence
that the word “Blackthorn(e)” means something different in the applied-for mark
than it does in the cited mark. In re Embiid, 2021 TTAB LEXIS 168, *20-21. We find
that consumers are likely to attribute the same meaning to both marks. We further
find that both marks are likely to create the same commercial impression in the
market. Applicant’s word mark and the cited mark are similar in every respect and
this fact increases the likelihood of confusion.
2. Applicant’s Word + Design mark
In the second application involved in this appeal, Applicant seeks to register the
mark shown below
This mark adds “a series of triangles forming a peak” to the word mark we considered
above. Much of the preceding analysis applies with equal force to this mark, as the

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literal elements of this mark are virtually identical to Applicant’s word mark
BLACKTHORN SOFTWARE. In this mark, there is an added design element
preceding the literal elements, and the word BLACKTHORN is presented more
prominently (above and in a larger and bolder font) than the word SOFTWARE. This
emphasis on the word BLACKTHORN makes it clear that this word is the dominant
literal element of the mark.
But does the addition of the design element render the marks dissimilar?
Applicant argues that this “design element is arbitrary and fanciful, is conspicuously
located as part of the mark, and is taller than, and is located to the left of, the word
portion.” 6 TTABVUE 14 (Ser. No. 97714033). This description is accurate and the
design element does create a visual distinction between the applied-for mark and the
cited mark. We agree that Applicant’s word + design mark is less visually similar to
the cited mark than we found for Applicant’s word mark. However, this difference
does not prevent the marks from being visually similar in their entireties based on
the almost identical dominant literal term.
But this is only one aspect of similarity. The marks remain equally similar in
sound as the word marks. When consumers ask for Applicant’s services, they will use
the literal elements of the mark. The same will occur when Applicant’s mark is
verbalized by consumers or used in audio marketing, such as radio or podcast
promotion. The similarity of sound analysis provided above applied with equal force
to this mark, and that fact alone is enough to render the marks similar for our
likelihood of confusion analysis.

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Applicant provides no meaning of the design element of its mark, and we find that
this element 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).
We have no evidence as to the commercial impression created by the design element
of this mark, though Applicant argues the design element “creates a distinct
impression when the entirety of the mark is considered.” Id. This is attorney
argument and does not replace actual evidence. Cai v. Diamond Hong, Inc., 901 F.3d
1367, 1370 (Fed. Cir. 2018). Lacking such evidence, we find that Applicant’s word +
design mark is likely to create a commercial impression similar to that created by the
cited BLACKTHORNE mark.5 The first DuPont factor, therefore, also supports the
refusal as to Applicant’s word + design mark.
B. Similarity or Relatedness of the Services
We evaluate the second DuPont factor based on the services identified in the
Application and the Cited Registration. See Stone Lion Cap. Partners, LP v. Lion Cap.
LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comput. Servs.
Inc., 918 F.2d 937, 942 (Fed. Cir. 1990). It is sufficient for a finding of likelihood of
confusion if relatedness is established between any of the services identified in the
Application and cited Registration. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648
F.2d 1335, 1336 (CCPA 1981); see also Double Coin Holdings Ltd. v. Tru Dev., 2019
TTAB LEXIS 347, *18; In re Aquamar, Inc., 2015 TTAB LEXIS 178, *9 n.5. In
5 Applicant appears to concede that design elements are often less impactful than the literal
elements of a mark, but argues the Office went too far and ignored the design element of its
mark. Id. We gave due weight to the design element in our analysis, but found that this
element’s impact on the similarity analysis is limited.

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addition, the services need only be sufficiently related that a relevant consumer
would be likely to assume, upon encountering services marketed under the marks at
issue, that the services originate from, are sponsored or authorized by, or are
otherwise connected to the same source. See Black & Decker Corp. v. Emerson Elec.
Co., 2007 TTAB LEXIS 50, *25-26.
The Cited Registration identifies: “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.”
Applicant identifies a range of software services, all limited in some manner to
construction or project management, employee tracking and management, contractor
tracking and management, or time tracking and management. While these services
are limited to these fields of use, the services identified in the cited Registration are
essentially unlimited, and apply to all fields of business. If the services in the cited
Registration are broad enough to cover the narrower services in the Application, the
services are legally identical. See In re OSF Healthcare Sys., 2023 TTAB LEXIS 353,
*8-9 (we must construe the services identified in a cited registration as broadly as
reasonably possible, and we must also give the identification in the application its
full scope); In re Hughes Furniture Indus., 2015 TTAB LEXIS 65, *10 (“Applicant’s
broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s
narrowly identified ‘residential and commercial furniture.’”); In re Jump Designs
LLC, 2006 TTAB LEXIS 209, *14-15 (same).

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The cited Registration does not directly identify software services, instead
referring to “computer-based information systems.” Applicant concedes that this
phrase involves “software or computing,” as does the listing of services in the
Application. 6 TTABVUE 17 (“both [the Application and cited Registration] involve
software or computing ….”). Applicant’s argument is that it “provides software
solutions, whereas Registrant offers consulting services unrelated to any specific
software platform.” Id. at 17-18. Applicant misses the point. The cited 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. As we noted above, Applicant cannot avoid overlap or relatedness in the
services by narrowing its own identification.
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.” Id. at 20. Applicant even provides
examples of third parties that offer the same type of specialized construction or
project management software and consultation relating to such software under a

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single mark. Id. This evidence shows that the services Applicant identifies are related
to those identified in the cited Registration.
Applicant argues that these consultation services are not a separate service,
apparently because such consultation is inextricably intertwined with providing the
software services. Id. (“Those third party companies provide both proprietary
software platforms and consulting services related specifically to the implementation
of their own software. The consultation services they offer are inseparable from their
role as software providers.”). Applicant goes on to argue:
To interpret Registrant’s services as including consultation
on its own software would require reading into the
recitation a nonexistent software offering, effectively
transforming the claimed service into one that is not
registrable—because it would then represent an internal
function or incidental service related to the delivery of its
goods, which is not recognized as a standalone registrable
service under USPTO standards (see TMEP 1301.01(a),
1301.01(a)(ii) and (a)(iii)).
Id. at 20-21. Applicant again misses the point.
The cited Registration identifies consultation and planning services, and because
the Registration is presumed valid, we must compare those services, construed as
broadly as reasonably possible, to the services identified in the Application. 15 U.S.C.
§ 1057(c). 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 Registration. We find this concession is consistent with the

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evidentiary record6 and common sense. The services are closely related and this
increases the likelihood of confusion.
The second DuPont factor supports the Section 2(d) refusal.
C. Trade Channels
As we noted above, the cited Registration broadly identifies consulting and
planning services relating to “computer-based information systems.”
Where the goods in the application at issue and/or in the
cited registration are broadly identified as to their nature
and type, such that there is an absence of any restrictions
as to the channels of trade and no limitation as to the
classes of purchasers, it is presumed that in scope the
identification of goods encompasses not only all the goods
of the nature and type described therein, but that the
identified goods are offered in all channels of trade which
would be normal therefor, and that they would be
purchased by all potential buyers thereof.
In re Jump Designs, 2006 TTAB LEXIS at *13-14; see also In re Viterra Inc., 671 F.3d
1358, 1362 (Fed. Cir. 2012) (“it is well established that, ‘absent restrictions in the
application and registration, goods and services are presumed to travel in the
same channels of trade to the same class of purchasers’”) (quoting Hewlett-Packard
Co. v. Packard Press, Inc., 281 F.3d 1261, 1268 (Fed. Cir. 2002)). We found the
6 The Trademark Examining Attorney submitted registration and Internet evidence showing
third parties that offer the type of services identified in the Application and the cited
Registration under a single mark. See Office Action dated September 18, 2023, 4-10; Final
Office Action dated May 7, 2024, 2-11; Denial of Request for Reconsideration dated April 18,
2025, 14-22. This evidence supports our finding that the services are related, independent of
Applicant’s concessions noted above. Applicant does not dispute this evidence, but cites to
seven examples of third parties who provide specialized construction or project management
software and also “offer consultations on use and implementation” of that software. 6
TTABVUE 19-20.

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services related, and we find that the software-related services also flow through
similar trade channels. Indeed, Applicant’s concession 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. 6 TTABVUE 19-20. The third DuPont factor supports the refusal.
Applicant argues that its software solutions are offered through its own website
and that the Registrant probably does the same. Id. at 23-24. 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. Stone Lion, 746 F.3d at 1325.
D. Customer Care
The fourth DuPont factor considers the likely care exercised by relevant
consumers. DuPont, 476 F.2d at 1361 (“The conditions under which … sales are made,
i.e. “impulse” vs. careful, sophisticated purchasing”). Applicant argues that the
customers of these services are careful, and further, that the consumers do not
overlap. 8 TTABVUE 9. These arguments again ignore the identifications in the
Application and cited Registration, which contain no limitations as to consumers or
method of marketing the goods. 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

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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.
E. Conclusion: Weighing the Factors
The marks are similar (in both appealed Applications) and the services are
related, the trade channels overlap, and there is no evidence of consistent consumer
care in purchasing the services. In short, the first three DuPont factors point toward
a likelihood of confusion. The fourth DuPont factor is neutral. The first two DuPont
factors—the similarity of the marks and the similarity of the services—weigh most
heavily in this appeal. Confusion is likely and the Section 2(d) refusal must be
affirmed.
Decision: The Section 2(d) refusal is affirmed.