In Apex Bank v. CC Serve Corp., 156 F.4th 1230 (Fed. Cir. 2025), the Federal Circuit held that when certain services are found to be similar under the second DuPont factor, those same services also are applicable to define the universe of similar marks on similar goods under the sixth DuPont factor. Because the commercial impression in view of the universe of similar marks informs the analysis under the first DuPont factor regarding the similarity of the marks, the Court also held that 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. 

On remand in CC Serve Corp. v. Apex Bank, Opposition No. 91254295 (TTAB July 17, 2026), the TTAB dismissed the opposition to the registration of ASPIRE BANK & Design for "banking and financing services" because confusion was unlikely with the registered mark ASPIRE for "credit card services" in view of the first and sixth DuPont factors. 

Reviewing some thirty third-party marks in use for credit card services, banking services, and financing services, the TTAB pointed out that such "evidence of widespread third-party use may be powerful on its face to demonstrate 'that consumers have been educated to distinguish between different marks on the bases of minute distinctions,'" citing Omaha Steaks Int'l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324 (Fed. Cir. 2018) (internal quotation marks omitted); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1337, n.1 (Fed. Cir. 2015)(evidence of “considerable number” of third-party marks may be “powerful on its face”); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1373, n.2 (Fed. Cir. 2015) (discussing “voluminous evidence” of registration and use of paw print design elements); and Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, No. 91217095, 2016 WL 7655551, at *7 (TTAB 2016) (“evidence of extensive use and registration of a term by others as a mark, as is the case here, can be ‘powerful on its face'”).

One purpose of introducing evidence of third-party use is to show commercial weakness by demonstrating that “customers have become so conditioned by a plethora of ... similar marks that customers have been educated to distinguish between different [such] marks on the bases of minute distinctions.” Omaha Steaks Int'l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324 (Fed. Cir. 2018) (quoting Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1374 (Fed. Cir. 2005)) (internal quotation marks omitted); see also Apex Bank, 156 F.4th at 1235 (“When a field is crowded with similar marks, the theory is that customers will be more adept at distinguishing marks from each other and are less likely to be confused by similar marks.”).

A second purpose of third-party use, as well as third-party registrations, is to prove conceptual weakness by demonstrating “that some segment of the [mark] has a normally understood and well recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339 (Fed. Cir. 2015) (finding the Board erred because it “never inquired whether and to what degree the extensive evidence of third-party use and registrations indicates that the phrase PEACE & LOVE carries a suggestive or descriptive connotation in the food service industry, and is weak for that reason”) (emphasis omitted).

Noting the sixth DuPont factor was the dominant consideration in this case, the TTAB found that the opposer's ASPIRE mark "is commercially and conceptually quite weak as the evidence shows it is common for third parties to adopt and use marks comprised of the first term ASPIRE coupled with a generic word, e.g. ASPIRE CHECKING, ASPIRE SAVINGS, ASPIRE LENDING." See Juice Generation, 794 F.3d at 1338-39 (explaining that “evidence of third-party use bears on the strength or weakness of an opposer's mark” and that “highly suggestive [marks] are entitled to a narrower scope of protection, i.e., are less likely to generate confusion over source identification, than their more fanciful counterparts.”).

Overall, we find the parties' marks in their entireties are similar in appearance, sound, connotation and commercial impression. However, taking into account the significant weakness of the shared term ASPIRE, we find that consumers are likely to notice and rely on the minor differences between the marks to distinguish them.

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... Indeed, we find that the heavy weight of the sixth factor is the dominant consideration in this case and “affect[s] the overall commercial impression” of the parties' marks under the first factor. Apex Bank, 156 F.4th at 1236. That is, although the parties' marks are similar under the first factor, consumers are likely to rely on the minor differences between the parties' marks (i.e. the addition of the generic word BANK and mountain peak design in Applicant's marks) to distinguish them in the crowded field of ASPIRE marks. The first factor therefore also weighs against finding a likelihood of confusion. Juice Generation, 794 F.3d at 1338 (an “applicant's mark can come closer” to a weak mark “without causing a likelihood of confusion and … invading what amounts to its comparatively narrower range of protection”); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 353 (Fed. Cir. 1992) (“[W]here a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights.”).

Finding that the first DuPont factor and the dominant sixth factor outweighed the second and third factors, the TTAB dismissed the opposition.