Apex Bank v. Cc Serve Corp.

United States Court of Appeals
for the Federal Circuit
______________________
APEX BANK,
Appellant
v.
CC SERVE CORP.,
Appellee
______________________
2023-2143
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
91254295.
______________________
Decided: September 25, 2025
______________________
MICHAEL J. B RADFORD , Luedeka Neely, P.C., Knoxville,
TN, argued for appellant. Also represented by ROBERT
F OX .
AUSTIN P ADGETT , Troutman Pepper Locke LLP, At-
lanta, GA, argued for appellee.
______________________
Before M OORE, Chief Judge, HUGHES and C UNNINGHAM ,
Circuit Judges.
HUGHES , Circuit Judge.
Case: 23-2143 Document: 39 Page: 1 Filed: 09/25/2025

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APEX BANK v. CC SERVE CORP. 2
Apex Bank appeals a decision of the Trademark Trial
and Appeal Board refusing registration of Apex’s marks.
Because the Board erred in its analysis of two of the factors
of the likelihood-of-confusion analysis, we affirm-in-part,
vacate-in-part, and remand.
I
CC Serve is a company that offers credit card services
to customers. J.A. 6927–28. CC Serve is the owner of Reg-
istration No. 2126948 for the word mark ASPIRE used in
connection with credit card services. Id. The ASPIRE mark
registration was issued in 1998 and has an effective prior-
ity date of October 17, 1996. Id. CC Serve offers credit card
services in connection with the ASPIRE mark—CC Serve
joins with a bank, and the bank issues ASPIRE-branded
credit cards and associated accounts to customers.
J.A. 6930. The accounts are serviced by CC Serve and its
affiliates. Id.
Apex Bank is a retail bank chartered in Tennessee.
J.A. 7029. It has 18 branch locations and offers personal
checking accounts, personal savings accounts, business
checking accounts, home mortgages, and consumer and
business loans. Id. It does not offer credit cards. Id. Apex
plans to offer an internet bank under a different brand, us-
ing the ASPIRE BANK word and design marks. J.A. 5243.
In August 2019, Apex filed intent-to-use applications
with the United States Patent and Trademark Office to
register the ASPIRE BANK word and design marks for
“[b]anking and financing services.” J.A. 7027. During pros-
ecution, CC Serve submitted a letter of protest asserting
that Apex’s proposed marks were confusingly similar to CC
Serve’s mark. J.A. 4576. Nonetheless, the examining attor-
ney approved the ASPIRE BANK word and design marks
for publication, and the marks published on December 17,
2019. J.A. 4569–70.
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APEX BANK v. CC SERVE CORP. 3
CC Serve initiated an opposition to Apex’s marks in
February 2020, alleging a likelihood of confusion with CC
Serve’s standard character mark, ASPIRE. J.A. 2, 6931.
The Board sustained the opposition under Section 2(d) of
the Lanham Act, 15 U.S.C. § 1052(d), concluding that con-
sumer confusion between the marks was likely. J.A. 63.
Apex appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B).
II
“We review the [B]oard’s legal conclusions de novo, and
its findings of fact for substantial evidence.” M2 Software,
Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382 (Fed. Cir.
2006) (internal citation omitted). Substantial evidence is
“such relevant evidence as a reasonable mind might accept
as adequate to support a conclusion.” Consol. Edison Co. of
N.Y. v. NLRB, 305 U.S. 197, 229 (1938).
A trademark opposition under Section 2(d) of the Lan-
ham Act requires registration refusal when “confusion is
likely because of concurrent use of the marks of an appli-
cant and a prior user on their respective goods.” Applica-
tion of E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1360
(C.C.P.A. 1973). “Likelihood of confusion is a question of
law, based on findings of relevant underlying facts, namely
findings under the DuPont factors.” M2 Software, 450 F.3d
at 1381. “Each of the [thirteen] DuPont factors presents a
question of fact, findings with regard to which we test for
substantial evidence when called into question on appeal.”
Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1370
(Fed. Cir. 2002). The Board need not consider every
DuPont factor, only those “that are relevant and of record.”
M2 Software, 450 F.3d at 1382.
III
On appeal, Apex argues that the Board erred in its like-
lihood-of-confusion analysis, specifically with respect to its
analysis of the second, sixth, and first DuPont factors. The
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APEX BANK v. CC SERVE CORP. 4
Board concluded that the sixth DuPont factor did not weigh
in favor of Apex, and that the first and second DuPont fac-
tors weigh in favor of CC Serve. J.A. 62–63. We address
each factor in turn.
A
The second DuPont factor assesses the similarity of the
parties’ goods and/or services. The services need not be
identical—the evidence need only establish that “the re-
spective products are related in some manner and/or [that]
the circumstances surrounding their marketing are such
that they could give rise to the mistaken belief that they
emanate from the same source.” Coach Servs. Inc. v. Tri-
umph Learning LLC, 668 F.3d 1356, 1369 (Fed. Cir. 2012)
(internal citation omitted). The Board assessed the similar-
ities between credit card services (CC Serve’s services) and
banking and financing services (Apex’s services).
J.A. 24–28. Because the entry for “credit card services” was
deleted from the Trademark ID Manual after CC Serve’s
registration, the Board first determined the meaning of the
identified services. The Board determined that “credit card
services” encompasses “issuing credit cards for use to fi-
nance purchases as well as counseling regarding credit
card debt, processing credit card payments and transac-
tions, credit card authorization, credit card monitoring and
alerts, managing credit card accounts, and providing ac-
cess to credit scores.” J.A. 25. The Board determined that
because the dictionary definitions for “banking,” “bank,”
and “finance” encompass extending credit or providing
funds through the issuance of credit cards, Apex and CC
Serve’s services are “legally identical, in part.” J.A. 27–28.
The Board also considered third-party registrations that
cover (1) credit card and (2) 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.” J.A.
33–34. The Board concluded that because of the high de-
gree of similarity between the parties’ services, the second
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APEX BANK v. CC SERVE CORP. 5
factor weighed heavily in favor of finding likelihood of con-
fusion. J.A. 35.
On appeal, Apex argues that the parties’ services are
“not the same and . . . are not directly competitive with
each other,” especially because CC Serve is partnering with
banks to manage credit card programs—“not providing
banking services” itself. Appellant’s Opening Br. 37. We
find Apex’s argument unavailing. The Board carefully con-
sidered the descriptions of each party’s services, and sub-
stantial evidence supports the Board’s finding that the
parties’ services are highly similar. We affirm the Board’s
finding as to the second DuPont factor.
B
The sixth DuPont factor considers “[t]he number and
nature of similar marks in use on similar goods.” DuPont,
476 F.2d at 1361. “Evidence 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 pro-
tection.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 1373 (Fed. Cir.
2005). When a field is crowded with similar marks, the the-
ory is that customers will be more adept at distinguishing
marks from each other and are less likely to be confused by
similar marks. See Juice Generation, Inc. v. GS Enters.
LLC, 794 F.3d 1334, 1338 (Fed. Cir. 2015). Evidence that
consumers have been educated to distinguish between
marks in this way tends to indicate a lack of commercial
strength. See Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 1374 (Fed. Cir. 2015).
Apex submitted several exhibits to the Board that
showed third-party uses of marks including the word “As-
pire”. J.A. 40–46. The marks used the word “Aspire” in con-
nection with credit card-related services and, more broadly,
the financial services industry. The Board concluded that
because of the overlap between Apex and CC Serve’s
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APEX BANK v. CC SERVE CORP. 6
services, the properly defined relevant public is “consumers
of ‘credit card services.’” J.A. 47. The Board focused solely
on the marks identified for credit card services and deemed
the marks using Aspire for other services to be “essentially
irrelevant.” J.A. 47. The Board concluded that there were
nine Aspire-formative marks for credit card services, but
that only nine uses did not rise to the level of “considerable”
or “ubiquitous” use found to demonstrate weakness. J.A. 47
(citing Jack Wolfskin, 797 F.3d at 1373, 1373 n.2) (discuss-
ing “voluminous evidence” of registration and use of paw
print design elements at issue and highlighting fourteen
“notable examples of third-party registration and use”);
Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
1337 n.1, 1339 (Fed. Cir. 2015) (referring to 26 third-party
marks as “a considerable number”)). The Board found that
“[CC Serve] has not shown that its mark has any particular
commercial strength, but [Apex] has not shown that [CC
Serve]’s mark is commercially or conceptually weak such
that it is entitled to a narrow scope of protection,” and de-
termined that CC Serve’s mark is entitled to the “normal
scope of protection accorded inherently distinctive marks.”
J.A. 51.
On appeal, Apex contends that the Board erred in lim-
iting the relevant public to consumers of credit card ser-
vices and that the Board should have considered the 42
other third-party marks that use Aspire and Aspire-forma-
tive marks. Appellant’s Opening Br. 28. We agree that the
Board’s analysis was legally flawed. The sixth DuPont fac-
tor requires the Board to consider similar marks for similar
goods and services. In the Board’s analysis of the second
DuPont factor, see infra Section III.A, the Board deter-
mined 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. J.A. 27–
28, 33–34. When analyzing the sixth Dupont factor, how-
ever, the Board restricted the universe of marks it consid-
ered to only those relating to credit card services and
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APEX BANK v. CC SERVE CORP. 7
excluded marks related to other banking and financing ser-
vices. That was an error.
We have held that the sixth DuPont factor does not re-
quire 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. Here,
we find the Board’s definition of similarity to be too narrow.
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, J.A.
27–28, the Board should retain the same scope in its con-
sideration of similarity under the other factors. We see no
reason to impose a different and more stringent legal
standard for similarity under the sixth DuPont factor. We
thus vacate the Board’s finding with respect to the sixth
DuPont factor and remand for reconsideration of the appro-
priate scope of third-party marks eligible for consideration
in view of the Board’s factual finding that the parties’ ser-
vices are highly similar.
C
The first DuPont factor considers the “similarity or dis-
similarity of the marks in their entireties as to appearance,
sound, connotation and commercial impression.” DuPont,
476 F.2d at 1361. This analysis focuses on the overall com-
mercial impression and whether confusion as to the source
of the services offered under the respective marks is likely
to result. In re I.AM.Symbolic, LLC, 866 F.3d 1315, 1323
(Fed. Cir. 2017). Because commercial impression informs
the analysis under the first DuPont factor, we must simi-
larly vacate the Board’s analysis here because reconsider-
ation of the sixth DuPont factor may result in a different
determination of the mark’s commercial strength or weak-
ness and affect the overall commercial impression. There-
fore, we remand for reconsideration of the first factor as
well.
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APEX BANK v. CC SERVE CORP. 8
IV
We have considered the parties’ remaining arguments
and find them unpersuasive. We affirm the Board’s analy-
sis as to the second DuPont factor because the Board did
not err in its legal analysis and substantial evidence sup-
ports the Board’s finding that the parties’ services are
highly similar. But we vacate the Board’s findings with re-
spect to DuPont factors six and one and remand for the
Board to consider the number and nature of similar marks
used on similar goods and the appearance, sound, connota-
tion, and commercial impression of the marks in light of its
finding that the parties’ services are highly similar.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
Costs to appellant.
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