Prof. Thomas A. Reichert: The Board Changes Its Mind Without Changing the Record: Factor Six After Apex Bank

Here is a guest blog post by Thomas A. Reichert, Assistant Professor of Law at Simmons Law School, Southern Illinois University, in Carbondale, Illinois. The Board's recent decision on remand in the Apex Bank case [TTABlogged here] led to Professor Reichert's observations on the changing role of the sixth DuPont factor in the Board's Section 2(d) analysis.

The Board Changes Its Mind Without Changing the Record: Factor Six After Apex Bank

by Professor Thomas A. Reichert

The Board has now decided the same opposition twice, on the same trial record, and reached opposite outcomes. Between the two decisions neither party filed a new brief, no witness testified, and the only additions to the record were a few judicially noticed housekeeping facts. One DuPont factor was re-scoped on appeal. Two factors flipped. The outcome inverted. 

Doctrine rarely runs a controlled experiment on itself, but in CC Serve Corp. v. Apex Bank, Opposition No. 91254295 (TTAB July 17, 2026), the Board was ordered to do just that. 

CC Serve has owned the standard-character mark ASPIRE for credit card services since 1998. It opposed Apex Bank’s three applications for ASPIRE BANK design marks (the word "aspire" over a disclaimed BANK, a mountain peak behind) for banking and financing services. In May 2023 the Board sustained the opposition: the services were legally identical in part under the second factor and the marks highly similar under the first. Every other factor favored confusion or sat neutral. On the sixth factor—the number and nature of similar marks in use on similar goods—the Board confined the relevant universe to marks used for credit card services. It counted nine ASPIRE-formative marks within this relevant universe and deemed the forty-odd others in the record “essentially irrelevant.” Nine, the Board held, fell short of the “considerable” or “ubiquitous” use that demonstrates weakness (according to Jack Wolfskin and Juice Generation), so CC Serve’s ASPIRE mark received the normal scope of protection of an inherently distinctive mark. 

On appeal, the Federal Circuit affirmed as to the second factor and vacated the sixth. Apex Bank v. CC Serve Corp., 156 F.4th 1230 (Fed. Cir. 2025) (Hughes, J.) (precedential). The Federal Circuit decreed that the Board could not find credit card services and banking/financing services “highly similar” for the factor that helps the opposer and then shrink the relevant universe to credit cards for the factor that helps the applicant. “That was an error.” “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.” And because “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 first factor fell with it. 

Thus, on remand, the relevant universe grew from nine marks to twenty-three third-party users, covering credit, banking, and financing services, with some consideration given to eighteen more for retirement and wealth management. The same record now showed a mark “commercially and conceptually quite weak,” the word ASPIRE being highly suggestive of exactly what consumers of credit card services are doing: aspiring to reach their financial goals. The marks themselves had not changed, and the Board still found them similar in their entireties; but in a crowded field, consumers “are likely to notice and rely on the minor differences between the marks to distinguish them.” Thus, the generic word BANK and a mountain peak, which counted for little in 2023, apparently now were enough to distinguish the involved marks (and change the direction of factor one). The Board found “the heavy weight of the sixth factor is the dominant consideration,” held that factors one and six outweighed two and three, and dismissed the opposition. To its credit, the Board was precise about which marks in the field made the difference: a closing footnote states it would reach the same conclusion even without the eighteen retirement and wealth-management marks. The flip thus rested on the scope of the universe the Federal Circuit ordered. 

How often does factor six actually do this? 

Unsurprisingly, almost never. The evidence is a coded corpus of roughly 4,000 final Board decisions under Section 2(d), drawn from a pair of empirical studies of confusion doctrine at the Board (here) and in the federal courts (here). 

The story those numbers tell is short. Start with the two findings that decide most oppositions: the marks are similar, and the services are close. How often does an applicant lose on both factors and still win? In about 3,500 comparisons where the Board made both findings in favor of opposer, the answer is twenty-nine times. In those 29 cases, the fight is over the other DuPont factors: third-party use, fame, actual confusion, sophistication, and the rest. 

Factor six is the best of a bad lot. It accounts for applicant’s success in 17 of those 29 cases. But notice how often it is raised and still fails: the Board found the sixth factor favored the applicant in about 935 of those 3,500 comparisons, but the applicant won only 17 times, roughly one in fifty-five. That is what makes this remand worthy of attention. Apex Bank is the Federal Circuit giving applicants a little room to work with when the field is crowded. 

Two footnotes for the curious. The sixth factor is analyzed about half the time, and its share has been climbing, to roughly 62% in 2024 and 65% in 2025, so a practitioner’s sense that it now turns up in nearly every case is directionally right and a few years ahead of the record. And the corpus is entirely pre-Apex Bank. It shows the baseline that the scope correction now perturbs, decided under the narrower factor-six practice the Federal Circuit just rejected. Whether the remand is the first observation of a new regime or a one-off is the question worth watching, and given the volume of Board determinations each year, we should be able to answer it in about eighteen months. 

What Apex Bank changes at the Board 

The practice rule is fairly straightforward: scope the third-party-use record to the relevant services as the Board finds them under the second factor, not to the opposer’s identification as written. An opposer’s broad win on the second factor now hands the applicant a wide sixth-factor universe. The finding that hurt Apex Bank on factor two is the finding that saved it on factor six. 

For opposers, the remand is a catalog of rebuttals that failed: 

• CC Serve showed an active enforcement program. The Board credited it, quoted McCarthy’s observation that diligent policing enhances strength, and then found the field crowded anyway. 
• CC Serve objected that the third parties are largely regional credit unions and community banks. The Board itself counted thirteen of the twenty-three as regional, and answered that online and mobile banking can be done from anywhere. 
• CC Serve objected that the record did not show the extent of third-party use. The Board invoked the presumption that advertised services are rendered and the rule that voluminous third-party evidence can be “powerful on its face” (Jack Wolfskin). 

A factor, or a sub-factor? 

The vacatur of the first factor is the doctrinal news. The court’s logic is that third-party use bears on a mark’s commercial strength, and that commercial strength in turn colors the overall commercial impression the mark conveys. Re-scope the sixth factor and the first factor can move with it. The remand executed exactly that sequence. The historical record, though, shows the two factors moving nearly independently: where factor six favors the applicant, factor one still favors the opposer nearly three-quarters of the time. If third-party use does its work through commercial impression, factor six collapses into factor one as a sub-factor, and Apex Bank is the most explicit appellate statement of that sequence to date. On the data, that linkage is doctrine leading practice by a wide margin. 

The remand deserves a wider audience

The remand opinion carries the “This Opinion is Not a Precedent of the TTAB” banner, which is a strange fate for the decision that shows what the Federal Circuit’s scope rule does in practice. The Board changed its mind without changing the record; the least it can do is say so citably. If you agree, you may want to file a request for precedential designation, as I recently did. 

The Federal Circuit, for its part, is already citing Apex Bank downstream. See Fuente Marketing Ltd. v. Vaporous Technologies, LLC, No. 24-1460 (Fed. Cir. Apr. 8, 2026). [TTABlogged here].

Read comments and post your comment here.

TTABlogger comment: Do you think that, in the real world, any consumer would encounter the APEX credit card mark and all 23 third-party marks?

Text Copyright John L. Welch and Thomas A. Reichert 2026.