CAFC Reverses and Remands ASPIRE BANK Opposition for Reconsideration of First and Sixth DuPont Factors

In a precedential opinion, the CAFC affirmed-in-part and reversed-in-part the Board's decision [pdf here] sustaining an opposition to registration of ASPIRE BANK & Design (in three similar forms) for "banking and financing services" (BANK disclaimed) in view of the registered mark ASPIRE for "credit card services." The appellate court upheld the Board's analysis of the second DuPont factor (the similarity of the services) but vacated the findings regarding the first (similarity of the marks) and the sixth (third-party usage) factors and remanded the case to the Board for further consideration. Apex Bank v. CC Serve Corp., 2025 USPQ2d 1224 (Fed. Cir. 2025) [precedential].

The Second DuPont Factor: The Board determined that Opposer CC's "credit card services" encompass issuing credit cards to finance purchases. Because the dictionary definitions of "banking," "bank" and "finance" cover extending credit or providing funds via credit cards, the Board found that the involved services are legally identical in part. The Board also considered third-party registrations that cover credit card and banking and financing services to support its finding that "the services are of a type that may emanate from a single source under one mark." CAFC ruled that substantial evidence supported the Board's finding that the parties' services are "highly similar."

The Sixth DuPont Factor: The appellate court next considered the sixth DuPont factor: "[t]he number and nature of similar marks in use on similar goods." DuPont, 476 F.2d at 1361. It observed that "[e]vidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1373 (Fed. Cir. 2005).

Apex had submitted evidence of dozens of third parties using marks containing the word "Aspire" in connection credit card services and, more broadly, financial services. Nonetheless, the Board concluded that, in light of the overlap in the parties' services, this DuPont factor weighed "heavily" in CC's favor. However, in its analysis, the Board considered only marks relating to credit card services, the area of overlap, and it deemed marks for other services to be "essentially irrelevant." There were nine Aspire-formative marks for credit card services, but the Board concluded that only nine uses did not rise to the level of "considerable" or "ubiquitous" that would demonstrate weakness (citing Jack Wolfskin and Juice Generation).

Apex contended that the Board should have considered the 42 other third-party marks that comprised or contained the word "Aspire"for banking and/or financial services The CAFC agreed.

The sixth DuPont factor requires the Board to consider similar marks for similar goods and services. In the Board’s analysis of the second DuPont factor *** the Board determined that the parties’ services are highly similar, which led the Board to conclude that the second factor weighed heavily in favor of finding likelihood of confusion. *** When analyzing the sixth Dupont factor, however, the Board restricted the universe of marks it considered to only those relating to credit card services and excluded marks related to other banking and financing services. That was an error.

The CAFC observed that the sixth DuPont factor does not require identical goods—only similar ones. See, e.g., Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 204 (Fed. Cir. 1992); Juice Generation, Inc., 794 F.3d at 1338. The court saw no reason to impose a stricter standard for similarity under the sixth factor than under the second.

And so, the CAFC vacated the Board’s finding under the sixth DuPont factor and remanded the case to the Board "for reconsideration of the appropriate scope of third-party marks eligible for consideration in view of the Board’s factual finding that the parties’ services are highly similar."

The First DuPont Factor: The first DuPont factor considers the “similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” DuPont, 476 F.2d at 1361. The CAFC pointed out that reconsideration of the sixth DuPont factor may inform the Board's analysis under the first factor because "it may result in a different determination of the mark’s commercial strength or weakness and affect the overall commercial impression." Therefore, the Board remanded for reconsideration of the first factor as well.

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TTABlogger comment: So how much elbow room is there when arguing that third-party goods or services are related for purposes of the sixth DuPont factor?

Text Copyright John L. Welch 2025.