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Trademark registration is not automatic – even if you think your brand name is unique. A recent decision from the United States Trademark Trial and Appeal Board (TTAB) illustrates this point clearly.
The TTAB affirmed a refusal to register the mark PYTCHBLACK for advertising and related services after finding it was likely to cause confusion with existing registrations for the phrase PITCH BLACK. For business owners, this decision highlights how the U.S. Patent and Trademark Office (USPTO) evaluates potential conflicts between marks, and why understanding the risks of "likelihood of confusion" is essential when selecting and protecting your brand.
Background: What Happened With PYTCHBLACK
A company applied to register PYTCHBLACK as a trademark covering services such as advertising, brand strategy, marketing, and other related offerings. The USPTO refused the application under Section 2(d) of the Lanham Act, the law governing federal trademark registration, on the basis that PYTCHBLACK was too similar to two existing registered marks for PITCH BLACK that covered related business services. This refusal was later upheld on appeal to the TTAB.
The core issue was whether the applied-for mark and the registered marks were so similar that consumers might mistakenly think they come from the same source. The Board found that the marks were similar in appearance, sound, and commercial impression, and the services could travel through the same channels of trade to the same group of consumers. Based on those factors, the Board concluded there was a likelihood of confusion and affirmed the refusal.
Why "Likelihood of Confusion" Is a Big Deal
At the heart of trademark law is a simple principle: trademarks exist to help consumers identify the source of goods and services. If two marks are confusingly similar, the public might mistakenly assume that the goods or services come from the same provider, or that there is an affiliation where none exists. That is exactly what trademark examiners and the TTAB look for under Section 2(d).
The TTAB evaluates this using a variety of factors known as the DuPont factors, including:
- The similarity of the marks in appearance, sound, and meaning
- The relatedness of the goods or services
- The channels of trade through which the goods or services are marketed
- The sophistication of potential consumers
In the PYTCHBLACK case, the Board found that the marks were sufficiently similar and that the related services made confusion likely.
What This Means When Trying to Create a Mark
There are a couple of pretty straightforward lessons here:
Conduct Trademark Searches Before You Commit. Before investing time and money in selecting a trademark, it is essential to research whether similar trademarks already exist. This includes not only exact matches, but also marks with similar spelling, pronunciation, or commercial impression.
A comprehensive trademark clearance search can uncover potential conflicts that you might otherwise miss, helping you avoid costly refusals or disputes later.
Similarity Is Not Just About Exact Spelling. Even small variations, such as adding a single letter or a hyphen, do not make a trademark distinctive enough to avoid conflict. In the PYTCHBLACK example, the Board treated the variation from "I" to "Y" as insufficient to avoid a likelihood of confusion because the overall commercial impression was still similar to PITCH BLACK.
Likelihood of Confusion Is Often the Biggest Hurdle. Many trademark refusals center on confusion with prior registrations. Understanding how the TTAB applies the relevant legal standards can help you select stronger marks and formulate effective responses to Office actions if an initial refusal occurs.
The key thing to remember? Trademarks can be powerful business assets, but protection is not guaranteed. The PYTCHBLACK case reminds business owners to be proactive: research early, choose distinct and non-conflicting marks, and consult experienced trademark counsel when appropriate. Doing so can help ensure your brand is not just distinctive and compelling, but legally protectable.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
