Federal Circuit Demands Consistency in TTAB's DuPont Analysis
CAFC Remands on Likelihood of Confusion Finding
In a recent precedential trademark decision, the U.S. Court of Appeals for the Federal Circuit provided a critical reminder to the Trademark Trial and Appeal Board (TTAB): factual findings must be applied consistently across the entire likelihood-of-confusion analysis. The ruling in Apex Bank v. CC Serve Corp., No. 2023-2143 (Fed. Cir., Sept. 25, 2025) underscores the interconnected nature of the DuPont factors and provides a valuable lesson for practitioners on the importance of logical consistency in trademark disputes.
The CAFC panel, in vacating and remanding a TTAB decision that had sustained a trademark opposition, held that the Board erred by applying an inconsistently narrow definition of “similar” services when evaluating the strength of a mark based on third-party use (Slip Op., pp. 2, 8).
Background of the Dispute
The dispute began when Apex Bank (”Apex”), a Tennessee-based retail bank, filed intent-to-use applications to register the word mark ASPIRE BANK and an associated design mark for “[b]anking and financing services” (p. 2). Apex, which offers traditional banking products like checking accounts and loans but does not currently offer credit cards, planned to use the marks for a new internet banking brand (p. 2).
The applications were opposed by CC Serve Corp. (”CC Serve”), which owns a 1998 registration for the standard character mark ASPIRE for use in connection with “credit card services” (p. 2). CC Serve’s business model involves partnering with banks to issue ASPIRE-branded credit cards to consumers. Id.
Following a letter of protest from CC Serve, the USPTO examining attorney nonetheless approved Apex’s marks for publication (p. 2). CC Serve then initiated an opposition proceeding, arguing that Apex’s proposed marks were likely to cause confusion with its senior ASPIRE mark (p. 3).
The TTAB agreed with CC Serve, sustaining the opposition under Section 2(d) of the Lanham Act and finding that consumer confusion was likely (p. 3). Apex subsequently appealed the Board’s decision to the Federal Circuit, challenging the Board’s analysis of three of the thirteen DuPont factors: the similarity of the services (factor 2), the number and nature of similar marks in use (factor 6), and the similarity of the marks themselves (factor 1) (p. 3).
The Court’s Analysis: An Inconsistent Standard for “Similarity”
The Federal Circuit’s decision hinged on a perceived flaw in the TTAB’s reasoning. The panel found that the Board applied one standard of similarity when comparing the parties’ services but an entirely different, more restrictive standard when considering third-party use of similar marks.
First, the court addressed the second DuPont factor, which assesses the similarity of the goods or services. The Board had determined that “credit card services” (CC Serve) and “banking and financing services” (Apex) were not only highly similar but “legally identical, in part,” because the definitions of “banking” and “finance” can encompass the extension of credit through credit cards (pp. 4, 7). The Board also noted third-party registrations covering both service types, suggesting they could emanate from a single source (p. 4). The Federal Circuit found that substantial evidence supported this conclusion and affirmed the Board’s finding that this factor weighed heavily in favor of finding a likelihood of confusion (p. 5).
The fatal error, however, occurred in the Board’s analysis of the sixth DuPont factor: “[t]he number and nature of similar marks in use on similar goods” (p. 5). Evidence of widespread third-party use of similar marks can show that a mark is weak and entitled to only a narrow scope of protection, as consumers in a “crowded field” become more adept at distinguishing between marks.
Apex presented evidence of numerous third-party marks using the word “Aspire” in connection with both credit card services and the broader financial services industry (p. 5).
Despite its broad finding of similarity under factor two, the Board abruptly narrowed its focus for factor six. It defined the relevant field as only “consumers of ‘credit card services’” and dismissed marks related to other financial services as “essentially irrelevant” (p. 6).
After considering only nine marks specific to credit cards, the Board concluded this number was insufficient to demonstrate weakness (p. 6). The Federal Circuit held this was a legal error. The court explained:
When the Board has already made a factual finding that the services are highly similar—in fact, partially legally identical—in its analysis of the second DuPont factor, the Board should retain the same scope in its consideration of similarity under the other factors. We see no reason to impose a different and more stringent legal standard for similarity under the sixth DuPont factor. (p. 7)
Because the Board’s analysis of the sixth factor was legally flawed, the court vacated the finding and remanded for reconsideration (p. 8). Consequently, the court also vacated the Board’s finding on the first DuPont factor (similarity of the marks).
The analysis of a mark’s commercial impression is directly affected by its commercial strength or weakness. Since the flawed factor six analysis prevented a proper determination of the ASPIRE mark’s strength, the analysis of its overall commercial impression under factor one must also be revisited (p. 7).
Key Takeaways and Practical Implications
This decision offers important strategic guidance for brand owners and trademark counsel.
Logical Consistency is Paramount. The core lesson is that the TTAB and litigants cannot have it both ways. A party arguing for a broad interpretation of “similar services” to win on DuPont factor two cannot then argue for a narrow interpretation to discount evidence of third-party use under factor six. This ruling provides a (precedential) example for practitioners to challenge inconsistent reasoning and hold the Board to a consistent application of its own factual findings across the entire DuPont framework.
The Scope of “Similar Services” in Clearance is Broad. For brand owners, this case reinforces the need for comprehensive trademark clearance searches. When assessing the strength of a potential mark or the risk posed by a senior mark, the analysis of third-party use must extend to all “similar” goods and services, not just identical ones. The broader financial services landscape was deemed relevant here, and the same principle applies in other industries. A field that appears open when viewed narrowly might be quite crowded—and the marks within it correspondingly weaker—when viewed through the proper, broader lens of “similarity.”
A Domino Effect in DuPont Analysis. The case illustrates how a strong finding on one factor can influence others. Here, the Board’s definitive finding that the services were “highly similar” ultimately became the undoing of its final conclusion. Apex’s counsel successfully used that finding as a lever to demonstrate the inconsistency in the Board’s factor six analysis, which in turn required a re-evaluation of factor one. This highlights the interconnectedness of the DuPont factors and the need for a holistic, internally consistent litigation strategy.
Conclusion
The Federal Circuit’s decision in Apex Bank v. CC Serve Corp. does not announce a new legal principle, but it serves as a powerful and necessary course correction. By demanding logical rigor and consistency, the court reinforces the predictability and fairness of the likelihood-of-confusion analysis.
The TTAB, on remand, will now have to reconsider the strength of the ASPIRE mark by evaluating third-party use across the broad field of financial services it previously deemed relevant (p. 8).
For brand owners and attorneys, the case is a reminder that in trademark law, as in logic, premises must be applied consistently to reach a sound conclusion.
Disclaimer: This is provided for informational purposes only and does not constitute legal or financial advice. To the extent there are any opinions in this article, they are the author’s alone and do not represent the beliefs of his firm or clients. The strategies expressed are purely speculation based on publicly available information. The information expressed is subject to change at any time and should be checked for completeness, accuracy and current applicability. For advice, consult a suitably licensed attorney and/or patent professional.