Partner
Choosing a brand name often feels creative and exciting, until the trademark process brings everything to a sudden stop. Many business owners usually assume that if a name looks different or uses a unique spelling, registration will be seamless. However, the reality is that the U.S. trademark system focuses on how consumers interpret the mark, not just how it is written. If your proposed trademark might confuse consumers about the source of goods or services, registration will likely be refused.
A recent decision by the Trademark Trial and Appeal Board (TTAB) demonstrates this principle. The applicant, PytchBlack, LLC, sought to register the mark “PYTCHBLACK” for advertising, marketing, and brand-related services. The United States Patent and Trademark Office (USPTO) refused the application under Section 2(d) of the Lanham Act, stating that there was another registration for “PITCH BLACK” covering similar services.
On appeal, the TTAB affirmed the USPTO’s refusal. Although the spelling differed, the marks sounded the same, looked similar, and had the same overall impression. Since the services overlapped and would likely be offered to the same consumers through the same channels, the Board concluded that consumers would reasonably believe the businesses were related. That risk of confusion was sufficient to warrant refusal of registration.
Trademark law is designed to protect consumers just as much as it protects businesses. A trademark tells buyers where a product or service comes from. When two marks are too similar, people may mistakenly purchase the wrong product or assume there is a partnership or endorsement when there isn’t.
Even the most careful shoppers can be misled. Imagine a client who intends to buy a product from your brand but ends up purchasing an eerily similar, though different, product because the packaging and name seem related. Such confusion is what trademark law prevents, even when the names are not identical.
Additionally, similarity goes beyond spelling. Trademark examiners look at the overall impression, from how the mark sounds to how it feels to consumers.
Essentially, changing a letter, using creative spelling, or including minor, cosmetic differences to your proposed mark may not overcome similarity.
Before investing in branding, packaging, marketing, or domain names, there are a couple of things to consider:
You should not rely on a quick internet search and assume that if no identical name appears, the mark is available. A proper search reviews federal and state registrations, pending applications, business names, and domain records.
This can help prevent costly rebranding, rejected applications, cease-and-desist demands, or even litigation after launch. Identifying potential conflicts can also allow you to refine your branding strategy before customers become attached to a name you cannot legally protect.
Many trademark refusals result from prior registrations. As such, understanding how the TTAB applies the relevant standards is essential to selecting stronger marks and developing effective strategies to counter any refusal.
For more information, contact the experienced Trademark lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
When the USPTO or TTAB evaluates a Section 2(d) refusal, it applies the multifactor test established in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). The thirteen DuPont factors include: the similarity of the marks in appearance, sound, connotation, and commercial impression; the relatedness of the goods or services; the similarity of the trade channels; the conditions of purchase; the strength of the cited mark; the number and nature of similar marks on similar goods; instances of actual confusion; and others. Not every factor carries equal weight—the similarity of the marks and the relatedness of the goods are typically considered the most significant. A mark that sounds and looks different may still be refused if the underlying goods or services are nearly identical.
The PytchBlack decision illustrates a recurring trap: entrepreneurs believe that inventive spelling distinguishes their mark from an existing registration. The TTAB and federal courts routinely reject this argument. Under the doctrine of phonetic equivalence, marks that sound alike are treated as similar even when their spellings differ. The same principle applies in reverse: “Citi” and “City” have been found similar; “Blu” and “Blue” have been found similar. The standard question is how a consumer who hears or reads the marks in commerce would perceive them. If the average consumer would likely mistake one mark for the other or assume they share an origin, confusion is probable.
The time to discover a conflict is before you invest in branding, not after. A proper clearance search goes beyond the USPTO’s free TESS database. It should include: (1) a federal registration search for identical and phonetically similar marks; (2) a common law search covering unregistered uses in trade journals, domain registrations, and social media; (3) state trademark registration searches in relevant jurisdictions; and (4) international searches if you intend to operate outside the United States. Common law rights can defeat a later-filed applicant even without federal registration, as established in United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). An attorney-supervised search and opinion is the most reliable way to assess clearance risk before committing to a brand.
A Section 2(d) refusal is not always the end of the application. There are several strategies for responding: (1) arguing the marks are distinguishable on the DuPont factors—for example, that the goods or services are sold in different channels to sophisticated purchasers; (2) submitting evidence of the mark’s commercial strength, including sales figures and advertising expenditures; (3) obtaining a consent agreement from the owner of the cited registration; (4) amending the identification of goods or services to reduce overlap; or (5) filing a cancellation petition against the cited registration if it is vulnerable. The probability of success depends heavily on the specific facts, and an experienced trademark attorney can evaluate which strategy is most viable.
The Section 2(d) standard mirrors the infringement standard under Lanham Act § 32 and § 43(a), 15 U.S.C. §§ 1114, 1125(a). A business that uses a mark similar to yours can be sued for infringement if it creates a likelihood of confusion in the marketplace. Courts applying the DuPont factors in infringement cases have found liability even where the marks appeared visually distinct, because consumer perception of the overall commercial impression favored a finding of likely confusion. Registering your mark early provides significant evidentiary advantages, including a legal presumption of nationwide priority and exclusive use.
Navigating trademark clearance, responding to USPTO refusals, and enforcing your rights against confusingly similar competitors requires skilled legal counsel. Revision Legal’s trademark attorneys handle all phases of trademark prosecution, TTAB proceedings, and infringement litigation. Contact us for a consultation, or visit our Trademark Law practice page to learn more about protecting your brand.
Registering a trademark is one of the smartest investments you can make as a business owner. A trademark protects your brand, gives you exclusive rights to use your mark in commerce, and provides significant legal advantages — including a presumption of ownership and the ability to bring infringement claims in federal court. But many business […]
Read more about Six Important Trademark Questions Answered
The USPTO’s failure-to-function doctrine rejects trademarks that don’t identify a unique source. Learn what causes these refusals, why distinctiveness matters, and how to choose a stronger mark.
Read more about Trademark Failure to Function: Why the USPTO Rejects Trademarks and How to Avoid It
If another business has registered your trademark, you may still have legal options. Learn how first-to-use rights, USPTO oppositions, and common law claims can protect your brand.
Read more about Trademark Already Registered by Someone Else? Your Legal Options