CC Serve Corp. (CC Serve) offers credit card services and owns the ASPIRE federal trademark registration for credit card services. CC Serve is not a bank. It joins with banks that issue ASPIRE-branded cards to customers and CC Serve services them.

Apex Bank (Apex) is a retail bank that does not offer credit cards. Apex planned to offer Internet banking services using various ASPIRE BANK marks. Apex filed intent-to-use (ITU) applications for ASPIRE BANK for banking and financing services. CC Serve opposed registration, alleging a likelihood of confusion. The Trademark Trial and Appeal Board (Board) sustained the opposition under Section 2(d) of the Lanham Act.

The United States Court of Appeals for the Federal Circuit (Federal Circuit) affirmed-in-part, vacated-in-part and remanded to the Board for further review after finding that the Board erred in its analysis of the first and sixth DuPont factors. Apex Bank v. CC Serv. Corp., No. 23-2143 (Fed. Cir. Sept. 25, 2025). Analysis of likelihood of confusion involves consideration of the relevant 13 DuPont factors. Application of E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1360 (C.C.P.A. 1973).

The Federal Circuit concluded that the Board had properly weighed the second DuPont factor, which is relatedness of the goods and services, and that the factor weighed in favor of a finding of likelihood of confusion. However, the Federal Circuit concluded that the Board’s analysis of the sixth DuPont factor—number of similar marks on similar or related goods or services (weakness of the mark)—was wrong. Since that analysis informs the analysis under the first DuPont factor (similarities of the marks themselves), the Federal Circuit vacated and remanded as to both the first and sixth DuPont factors.

With respect to the sixth DuPont factor, Apex submitted evidence of more than 40 third-party ASPIRE marks in connection with credit card services and financial services to show that CC Serve’s rights in ASPIRE were narrow. The Board considered only the nine marks that were used for credit card services, ignoring the marks for financial services, concluding that nine marks did not rise to the level of “considerable” to consider the mark weak.

The Federal Circuit agreed with Apex that under the sixth DuPont factor, considering only the marks for identical services was legally flawed, vacating the Board’s finding and remanding for reconsideration. Because proper consideration of the sixth DuPont factor evidence could result in a different determination of the mark’s commercial strength or weakness under the first factor, the Federal Circuit vacated and remanded to the Board for reconsideration of the first factor as well.