New York Trademark Attorney Blog
The US Court of Appeals for the Federal Circuit, reversed in part the Board’s analysis of two DuPont factors in the case Apex Bank v. CC Serve Corp. 2025 USPQ2d 1224 (Fed. Cir. 2025) [precedential], remanding it for more consistent application of two factors. CC Serve Corp. provides credit card services to its customers. CC Serve owns a trademark registration for the word mark ASPIRE used with credit card services. CC Serve partners with a bank and the bank issues ASPIRE branded credit cards. The accounts are serviced by CC Serve. The other party, Apex bank is a retail bank that does not offer credit card services. However, Apex offers the following services, checking and savings accounts, home mortgages, business loans among other services. Apex filed an intent to use application for ASPIRE BANK for banking and financing services.
CC Serve filed an opposition proceeding against Apex’s mark ASPIRE BANK based on a likelihood of confusion. The Board sustained the opposition and determined that consumer confusion between the marks was likely. Apex appealed the Board’s decision. Apex argued the Board erred in its analysis of DuPont factors, one, two and six. The CAFC agreed with the Board’s analysis for the second factor only. The second factor evaluates the similarity of the applicant’s and registrant’s goods and services. In this case, credit card services were compared to banking and finance services. The Board noted that the dictionary definition for banking and finance included extending credit or providing funds through the issuance of credit cards. In addition, the Board relied on third party registrations that identified both applicant’s services and registrant’s services. Thus, the second factor weighed in favor of finding confusion because credit card services and banking and finance services were determined to be highly similar.
However, the CAFC did not agree with the Board’s analysis for factor one and six. Factor six evaluates third party use of similar marks to assess the strength of the subject mark. Apex submitted evidence of ASPIRE marks for services related to credit card services and services in the financial industry. The Board did not consider the evidence in connection with the broader industry of financial services. I certainly agree with the Federal Circuit’s position that if you find the services related for the purposes of DuPont factor two, then you must consider the third party use by those owners of ASPIRE marks used in connection with financial services. Deeming ASPIRE marks used for financial services irrelevant, in my opinion is inconsistent with the analysis used to determine whether the parties’ services were related for factor two. In fact, DuPont factor six requires the Board to assess the similarity of marks for similar goods and services. The CAFC declared the Board’s restriction of third party uses only for credit card services an error. The Court refused to impose a stricter requirement for similarity in connection with the sixth factor compared to the second factor. The CAFC remanded the matter back to the Board so the proper consideration could be given to the third-party use of the ASPIRE marks in connection with financial services.
I would expect that the Board’s further analysis of the sixth factor will impact the evaluation of the first DuPont factor. The CAFC stated that reconsideration of the sixth factor would likely cause the Board to re-evaluate the similarities of the marks because the commercial strength of the mark may be altered based on consideration of additional third-party use. The first DuPont factor focuses on commercial impression, visual appearance, sound and meaning. Therefore, the CAFC also remanded for reconsideration of the first DuPont factor.
This CAFC decision is not surprising as the Court does admonish the Board from time to time regarding the need for more consistent standards. See In re Erik Brunetti, 2025 USPQ2D 1105 (Fed. Cir. 2025) [precedential], where in August of 2025, the CAFC vacated the Board’s decision and remanded the matter, in anticipation of the Board sharpening its analysis for “failure to function” cases. Hopefully, CAFC decisions such as these, will reduce those Board decisions that appear to be subjective refusals, and in the case of In re Erik Brunetti, it could be the turning point in the failure to function doctrine. If you have questions regarding likelihood of confusion cases and the application of DuPont factors, please do not hesitate to contact the firm for a courtesy consultation.