Holding: When goods or services are found to be highly similar under one DuPont factor, that same scope of similarity must be applied consistently across the remaining DuPont factors.
CC Serve offers credit card services under United States Trademark Reg. No. 2,126,948 for ASPIRE. CC Serve partners with banks to issue ASPIRE-branded credit cards and associated accounts. Apex is a retail bank based in Tennessee that offers many banking services but does not offer credit cards. However, Apex plans to offer an internet bank under the brand ASPIRE BANK. Apex filed an intent-to-use application for ASPIRE BANK at the USPTO for banking and financing services. CC Serve filed a letter of protest alleging likelihood of confusion, but the ASPIRE BANK mark was approved by the Examiner anyway. After publication, CC Serve initiated an opposition and the TTAB found that consumer confusion was likely.
Apex appealed the ruling of the TTAB, alleging that the TTAB erred in its analysis of the first, second, and sixth DuPont factors. The second DuPont factor assesses the similarity of the parties’ goods and/or services. The services do not have to be identical to support a finding of likelihood of confusion, but the evidence only needs to establish a relationship between the respective products that could give rise to the belief that the services emanate from the same source. The TTAB determined that because banking and financing encompass extending credit through the issuance of credit cards, the services offered by CC Serve and Apex are legally identical, in part. Because of the similarity between the offered services, the TTAB found the second DuPont factor weighed in favor of likelihood of confusion.
Apex argued that the services are not the same since CC Serve only partners with banks and does not offer banking services on its own. However, the Federal Circuit did not agree with Apex’s argument, finding that the TTAB carefully considered each party’s services and their decision that the services are highly similar was supported by substantial evidence.
The sixth DuPont factor considers the number and nature of similar marks in use for similar goods. When a field is crowded with similar marks, it is assumed that parties will be skilled at distinguishing between marks and less likely to be confused by similar marks. Apex submitted evidence of third-party uses of marks that include the term “Aspire” for credit card services and services connected to the financial services industry.
The TTAB concluded that since Apex’s mark and CC Serve’s mark overlap at credit card services, the relevant public is consumers of credit card services. Therefore, the TTAB considered ASPIRE marks for anything other than credit card services to be irrelevant. The TTAB found that there were nine relevant marks with the term “Aspire,” not enough to rise to the level of considerable use necessary to show that CC Serve’s mark was weak.
Apex argued that the TTAB erred by limiting its consideration only to marks related to credit card services while refusing to consider the 42 other third-party marks that used the term “Aspire” in a banking context. The Federal Circuit agreed with Apex, holding that the TTAB erred by not considering these additional third-party marks. The sixth DuPont factor requires the TTAB to consider similar marks for similar goods and services. In its discussion of the second DuPont factor, the TTAB found credit card services and banking services to be highly similar. Therefore, it was error for the TTAB to not consider marks related to banking services in its analysis of the sixth DuPont factor. The sixth DuPont factor does not require consideration of only marks for identical goods, but instead allows consideration of third-party marks for similar goods.
The first DuPont factor considers the similarity or dissimilarity of the appearance, sound, connotation, and commercial impression of the entirety of the marks. Since the determination of the sixth DuPont factor is relevant to the strength or weakness of the commercial impression of the mark to be considered at the first DuPont factor, the Federal Circuit remanded for reconsideration of the first DuPont factor in light of its findings on the sixth factor.
Federal Circuit Precedential 
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