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Court Of Appeals For The Federal Circuit Requires Comparison Of Similar, Not Identical, Goods Under The Sixth DuPont Factor
09/30/2025On September 25, 2025, the U.S. Court of Appeals for the Federal Circuit affirmed-in-part, vacated-in-part and remanded a Trademark Trial and Appeal Board (“TTAB”) decision refusing registration of ASPIRE BANK word and design marks for banking and financing services by Apex Bank. Apex Bank v. CC Serve Corp., No. 2023-2143 (C.A.F.C. Sept. 25, 2025). The Court held that the TTAB applied an inappropriately narrow definition of similarity to the sixth DuPont factor, explaining that the sixth factor requires consideration of similar marks on similar—not identical—goods.
Apex Bank filed intent-to-use applications with the USPTO to register ASPIRE BANK word and design marks for banking and financing services in August 2019. In February 2020, CC Serve opposed these marks, alleging a likelihood of confusion with CC Serve’s mark ASPIRE for credit card services. The TTAB sustained the opposition, and Apex Bank appealed.
The second DuPont factor evaluates “the similarity of the parties’ good and/or services.” The Court affirmed the TTAB’s finding that “credit card services” (CC Serve) and “banking and financing services” (Apex Bank) are “legally identical” for the purpose of a likelihood-of-confusion analysis.
However, the Court found that the TTAB erred in its analysis of the sixth DuPont factor, which evaluates the “number and nature of similar marks in use on similar goods.” The TTAB determined that relevant marks were limited to those used for credit card services only, identifying nine ASPIRE-related marks. The Court disagreed with this scope and clarified that the TTAB should have included in its analysis marks related to other types of banking and financing services: “When the [TTAB] has already made a factual finding that the services are highly similar . . . in its analysis of the second DuPont factor . . . the [TTAB] should retain the same scope in its consideration of similarity under other factors.”
The Court also vacated the TTAB’s findings regarding the first DuPont factor, which evaluates the “similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” The Court explained that reconsideration of the sixth DuPont factor “may result in a different determination of the mark’s commercial strength or weakness and affect the overall commercial impression,” necessarily shifting analysis under the first factor.
