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In Apex Bank v. CC Serve Corp., No. 2023-2143 (Fed. Cir. Sep. 25, 2025), the Federal Circuit affirmed-in-part, vacated-in-part, and remanded the Trademark Trial and Appeal Board (TTAB) decision to sustain an opposition proceeding and refuse registration of the standard character mark and design mark for ASPIRE BANK for banking and financing services. In review of a likelihood of confusion determination, the Board turned to the second Dupont factor, holding that Apex's banking and financing services are legally identical to that of CC Serve's credit card services. Then, the Board turned to the sixth Dupont factor, where Apex submitted third-party uses of marks, including the word "ASPIRE," in connection with credit card services and various other financial services. The Board held that because of the overlap between Apex and CC Serve's services, the properly defined relevant public is consumers of credit card services. As such, the Board only looked at the 9 marks submitted by Apex for credit card services, ignoring 42 other marks submitted for financial services, and held that the sixth factor did not weigh in favor of Apex. During the appeal, the Federal Circuit held that the Board should have considered the 42 additional ASPIRE marks for related services in the financial industry, not just the marks for credit card services. The Federal Circuit agreed that the Board's analysis was flawed, and that the sixth factor requires the Board to consider similar marks for similar goods and services, not just identical goods and services. The Federal Circuit held that if the Board has already made a factual finding that the services are highly similar in the analysis of the second factor, the Board should retain the same scope in its consideration of the other factors. The sixth factor should not have a more stringent legal standard. The Federal Circuit vacated the Board's finding of the sixth Dupont factor and remanded for reconsideration.
CC Serve is a credit card services company and the owner of US Reg. No. 2126948 for the word mark ASPIRE used in connection with credit card services. The ASPIRE mark was issued in 1998 and has an effective priority date of October 17, 1996. CC Serve offers credit card services through various banks that issue ASPIRE-branded credit cards, while CC Serve manages the associated credit card accounts. Apex Bank is a retail bank based in Tennessee offering checking and savings accounts, mortgages, and loans. Specifically, Apex does not offer credit cards. Apex planned to open an internet bank option under a different brand using the ASPIRE BANK word and design marks. In August 2019, Apex filed ITU applications for banking and financing services for the ASPIRE BANK word and design marks. CC Serve asserted the proposed marks were confusingly similar to CC Serve's ASPIRE mark in a letter of protest. However, the USPTO allowed the marks and moved them to publication. CC Serve then filed a timely opposition to the Apex marks alleging a likelihood of confusion. The Board sustained the opposition, finding confusion likely. Apex appealed.
The Board held that the sixth Dupont factor (number and nature of similar marks in use on similar goods) did not weigh in favor of Apex, but that the first (similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression) and second (similarity of goods or services) Dupont factors weighed in favor of CC Serve. The Board sustained the opposition finding confusion likely. In regard to the second factor, the Board held that the dictionary definitions for banking, banks, and finance encompass extending credit or providing funds through the issuance of credit cards and as such Apex and CC Serve's services are legally identical. The Board further held that the services are of a type that are likely to come from a single source under one mark.
Regarding the sixth factor, Apex submitted third-party uses of marks, including the word ASPIRE in connection with credit card services and various other financial services. The Board held that because of the overlap between Apex and CC Serve's services, the properly defined relevant public is consumers of credit card services. As such, the Board only looked at nine marks submitted by Apex for credit card services and held that the sixth factor did not weigh in favor of Apex.
Regarding the second factor, Apex argued that the services are not the same as CC Serve outsources to banks to issue the credit cards. The Federal Circuit affirmed the TTAB's holding in regard to the second factor, finding the services are highly similar.
Regarding the sixth factor, Apex argued that the Board should have considered the 42 additional ASPIRE marks for related services in the financial industry, not just the marks for credit card services. The Federal Circuit agreed that the Board's analysis was flawed, and the sixth factor requires the board to consider similar marks for similar goods and services, not just identical goods and services. The Federal Circuit held that if the Board has already made a factual finding that the services are highly similar in the analysis of the second factor, the Board should retain the same scope in its consideration of the other factors. The sixth factor should not have a more stringent legal standard. The Federal Circuit vacated the Board's findings of the sixth factor and remanded for reconsideration. reconsideration. The Federal Circuit held that reconsideration of the sixth factor may result in a different determination of the mark's commercial strength or weakness and affect the overall commercial impression.
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