On Remand, TTAB Dismisses ASPIRE BANK Opposition After Re-Assessing First and Sixth DuPont Factors
On remand from the CAFC, the Board dismissed this opposition to registration of ASPIRE BANK & Design (in three similar forms) for "banking and financing services" (BANK disclaimed), concluding that confusion is unlikely with the registered mark ASPIRE for "credit card services." In May 2023, the Board had sustained the opposition [pdf here], but in September 2025 the CAFC vacated and remanded the case for further consideration of the Board's findings regarding the first (similarity of the marks) and the sixth (third-party marks) DuPont factors. [TTABlogged here]. CC Serve Corporation v. Apex Bank, Opposition No. 91254295 (July 17, 2026) [not precedential] (Opinion by Judge Christen M. English).
As to the sixth factor, the CAFC ordered 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.” As to reconsideration of the first DuPont factor, the court explained that “[b]ecause commercial impression informs the analysis under the first DuPont factor … 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.”
The Board had concluded that because "the parties’ services are legally identical to the extent Applicant’s ‘banking and financing services’ encompass Opposer’s ‘credit card services,’ … for purposes of the sixth DuPont factor, the properly defined relevant public are consumers of ‘credit card services.'" The Court held that this “analysis was legally flawed.” According to the CAFC:
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 appellate court explained that “[w]hen 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."
And so, the Board reviewed some 30 third-party marks in use for credit card services, banking services, and financing services, as well as registrations for some of those marks [including, e.g., THE ASPIRE CARD, ASPIRE CHECKING, and ASPIRE FINANCIAL COUNSELING]. Opposer argued that there was no evidence regarding the scope of the third-party use or advertising, but the Board pointed out that "even where the record does not include particulars about the extent of third-party uses in the marketplace, evidence of widespread third-party use may be powerful on its face to demonstrate 'that consumers have been educated to distinguish between different marks on the bases of minute distinctions.'" [See Juice Generation and Jack Wolfskin].
In sum, the Board found that, under the sixth DuPont factor, Opposer’s ASPIRE mark "is commercially and conceptually quite weak as the evidence shows it is common for third parties to adopt and use marks comprised of the first term ASPIRE coupled with a generic word, e.g. ASPIRE CHECKING, ASPIRE SAVINGS, ASPIRE LENDING." See Juice Generation, 794 F.3d at 1338-39 (explaining that “evidence of third-party use bears on the strength or weakness of an opposer’s mark” and that “highly suggestive [marks] are entitled to a narrower scope of protection, i.e., are less likely to generate confusion over source identification, than their more fanciful counterparts.”).
Overall, we find the parties’ marks in their entireties are similar in appearance, sound, connotation and commercial impression. However, taking into account the significant weakness of the shared term ASPIRE, we find that consumers are likely to notice and rely on the minor differences between the marks to distinguish them. * * * The sixth DuPont factor thus weighs heavily against finding a likelihood of confusion. Indeed, we find that the heavy weight of the sixth factor is the dominant consideration in this case.
Read comments and post your comment here.
TTABlogger comment: Ouch! Three years later, victory is turned into defeat.
Text Copyright John L. Welch 2026.
posted by John L. Welch @ 7/20/2026
7 comments
7 Comments:
Thank you Federal Circuit for this wonderful decision. Maybe Big Mamma, owner of Gloria (see 6-23 TTABLOG post) can score a victory at Federal Circuit.
Time for a reality check on this one.
I know the cases say that widespread third-party use of similar or identical marks helps show that consumers have been “educated” to distinguish between the different marks. But, in most cases, aren’t we really deceiving ourselves when we utter that platitude. Have consumers really been educated to distinguish between the various marks ASPIRE CHECKING, ASPIRE SAVINGS, ASPIRE LENDING and ASPIRE CARD? I think it is much more likely that most of the third-party uses, even if reflected in registrations, are in disparate geographic regions and that a typical consumer may only encounter a mark used in that area. If these marks are used in the same area, there would undoubtedly be confusion. If I see an Aspire Bank in a strip mall and then hear an ad to open an Aspire Checking account or to get an Aspire loan, will I really think these services come from different sources because of the different generic terms? Of course not. And there is never any evidence to back up the statement used in numerous cases that consumers supposedly notice and rely on minor differences to distinguish between the marks. We are just employing a legal fiction to help us reach the result we want. This is especially harmful if there is a registrant who owns a mark with nationwide scope, like here. And now we are allowing the conflicting mark ASPIRE BANK for related services which is also entitled to nationwide effect. We shouldn’t decide cases like this on the basis of the legal fiction that consumers have been “educated” to distinguish these marks when I think we all really know that this is not the case.
The Board observed that "most of the third-party websites in evidence promote online and mobile banking, which can be done from anywhere." So according to the Board, there was geographical overlap.
I think the word "accustomed" is more appropriate than "educated"
Anonymous responds: I just don’t think that consumers of banking and credit card services “are likely to notice and rely on the minor differences between the marks (ASPIRE and ASPIRE BANK and design) to distinguish them.” Seems really farfetched to me. All because of third-party marks out there, whose extent of use is not of record. Also, according to my research (asking Alexa), most banks in the U.S. issue credit cards under their own name (with processing being done by Visa, MasterCard, etc.). I guess the new registrant ASPIRE BANK may be hard-pressed to do that in view of the registered mark ASPIRE for credit card services, which it just did battle with. If it does, then we will have ASPIRE and ASPIRE BANK and design, both for credit card services. I’m not smart enough to distinguish the source of those marks. I guess I'm not an ordinary consumer.
You have a point. If an ordinary consumer sees advertisements for different financial companies/banks, all with the word ASPIRE in their names, the consumer is, I think, likely to assume they are related entities, not that they are different sources.
Particularly when the added wording comprises a generic term, like bank, financial services, advising, etc.
Post a Comment
<< Home