A recent lawsuit between two pest control companies operating under the same BLACK WIDOW trademark offers a useful reminder about the limits of incontestability and the role of evidence of actual confusion in trademark law.

The dispute pits Black Widow Termite & Pest Control Corp., a New York-based company, against Black Widow Pest Specialist LLC in Connecticut, with the New York company claiming infringement of its branding. According to its summary judgment motion, the plaintiff owns several federally registered marks. Plaintiff makes much of the fact that all but one of its registrations have attained “incontestable” status under the Lanham Act.  Such incontestability, though, is often misunderstood, and it seems the plaintiff could be overemphasizing its role here.

Although it provides important benefits, incontestability does not render a registration impervious to challenge. It bars certain defenses, such as descriptiveness or lack of secondary meaning, but it does not eliminate various challenges such as genericness, geographic limitations on use, and others. It also does not prevent a defendant from raising other defenses based on facts outside the registration itself. In this case, the defendant pointed out that the words BLACK WIDOW were disclaimed in the incontestable registrations and argued that the phrase and image illustrating it are generic when used in connection with pest control services. Whether or not successful, the defendant's argument highlights the underlying point that legal incontestability does not block all challenges to the registration owner’s rights.

The plaintiff isn't the only one stretching trademark law concepts. On the role and nature of evidence of actual confusion, the defendant seems to be a little, well, confused. The plaintiff presented evidence of actual consumer confusion, which courts have long held to be among the most persuasive forms of evidence in trademark disputes, citing over 20 calls from confused customers and testimony from individuals who could not distinguish the two companies’ logos. In response, the defendant attempted to recast the confusion as evidence of its own growing recognition, pointing to its TikTok following and claiming that the misdirected calls simply reflect its popularity. But this argument more likely favors the plaintiff. 

The scenario described fits the classic pattern of reverse confusion, where a junior user with greater visibility overwhelms the senior user’s brand, causing consumers to associate the senior’s services with the more prominent junior. Direct confusion, by contrast, occurs when consumers mistakenly believe the junior user’s services come from or are affiliated with the senior user. Although more commonly found in the direct form, reverse confusion equally supports a finding of a likelihood of confusion. If the plaintiff’s evidence ultimately establishes reverse confusion, the defendant may regret having crowed over its own visibility.

Whatever the outcome, this dispute highlights the nuance involved in both incontestability and confusion evidence. When enforcing or defending trademark claims, these legal tools carry significant weight, but they must be clearly understood to be effectively applied.