The US Court of Appeals for the Federal Circuit reversed in part a decision by the Trademark Trial & Appeal Board and remanded for new analysis of two factors under the Dupont likelihood of confusion test. The Court emphasized that the factual determination in factor two (similarity of the parties’ goods or services) should remain consistent through the analyses for factors one and six. Apex Bank v. CC Serve Corp., Case No. 23-2143 (Fed. Cir. Sept. 25, 2025) (Moore, Hughes, Cunningham, JJ.)
CC Serve has held a registration for the word mark ASPIRE in connection with credit card services since 1998. In 2019, Apex Bank, a Tennessee-based banking chain, filed intent-to-use applications at the US Patent & Trademark Office (PTO) for marks incorporating ASPIRE BANK for use in “banking and financing services.” CC Serve, which partners with banks to issue and service credit cards, filed a letter of protest during Apex’s trademark prosecution. Despite CC Serve’s objections, the PTO published Apex’s marks in December 2019. CC Serve then formally opposed the marks, and the Board sustained the opposition, finding a likelihood of consumer confusion. Apex appealed.
The Federal Circuit reviewed the Board’s findings under the DuPont framework, which assesses likelihood of confusion based on multiple factors. Apex challenged the Board’s analysis of three specific factors:
- Factor two: Similarity of the parties’ goods/services
- Factor six: Strength of the prior mark in the marketplace
- Factor one: Similarity of the marks themselves
The Federal Circuit upheld the Board’s finding under factor two, agreeing that “credit card services” and “banking/financing services” are highly similar based on their definitions and market overlap.
However, the Federal Circuit found fault with the Board’s analysis under factor six, which evaluates third-party use of similar marks to determine the strength of the contested mark. Apex submitted many examples of ASPIRE marks used in both the credit card and broader financial services industries. The Board, however, narrowed its focus to only those marks used in credit card services, excluding broader banking and financial services. The Federal Circuit concluded that this was inconsistent with the Board’s finding under factor two regarding the similarity of the parties’ goods and services. The Court instructed that on remand, the Board should consider third-party ASPIRE marks across both industries.
The Federal Circuit also directed the Board to revisit factor one, which assesses the similarity of the marks in light of the strength of the prior mark. Whether the strength of CC Serve’s mark is diminished when viewed in the broader financial services context could affect the “overall commercial impression” of the marks and the likelihood of confusion.
The Federal Circuit emphasized that factual determinations, particularly regarding the similarity of goods and services, must be applied consistently across the DuPont factors. The Court therefore remanded the case to the Board for reconsideration of factors one and six considering this guidance.
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