In determining whether there is a likelihood of confusion between marks under In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973), the sixth DuPont factor considers “[t]he number and nature of similar marks in use on similar goods.” 

“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 protection.” 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 theory 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).

In Apex Bank v. CC Serve Corp., No. 2023-2143, __ F.4th __ (Fed. Cir. Sept. 25, 2025), the Federal Circuit held that when certain services have been 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.

This was an opposition by CC Serve against Apex Bank's application to register ASPIRE BANK & Design for “banking and financing services” (with “bank” disclaimed) in view of CC Serve's registered mark ASPIRE for “credit card services.”

The TTAB had found that “credit card services” encompassed issuing credit cards to finance purchases, and the dictionary definitions of “banking” and “finance” cover extending credit or providing funds via credit cards, so the services were legally identical in part under the second DuPont factor that assesses the similarity of the parties' goods and/or services. The evidence need only establish that “the respective 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. Triumph Learning LLC, 668 F.3d 1356, 1369 (Fed. Cir. 2012) (internal citation omitted). 

But when it came time to consider the sixth DuPont factor, Apex submitted evidence of about fifty third-party uses of marks using the word “Aspire” in connection with credit card-related services and, more broadly, the financial services industry.

The TTAB, however, concluded that because of the overlap between Apex and CC Serve's services, the properly defined relevant public is “consumers of ‘credit card services'” and not the financial services industry more broadly. 

Focusing solely on the marks identified for credit card services (with the other services being “essentially irrelevant”), the TTAB concluded that the nine remaining Aspire-formative marks for credit card services (out of the some fifty third-party uses) did not rise to the level of “considerable” or “ubiquitous” use found to demonstrate commercial or conceptual weakness, such that CC Serve's mark was entitled to the “normal scope of protection accorded inherently distinctive marks. 

The Federal Circuit found that the TTAB's “analysis was legally flawed.” Because the TTAB had found that “banking and financing services” and “credit card services” were “highly similar” for the second DuPont factor, excluding third-party uses related to banking and financing services other than credit card services “was an error.”

     We have held that the sixth DuPont factor does not require 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 consideration 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 appropriate scope of third-party marks eligible for consideration in view of the Board's factual finding that the parties' services are highly similar.

And because commercial impression 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. 

Accordingly, the Federal Circuit vacated the TTAB's findings with respect to DuPont factors six and one and remanded for the TTAB to consider the number and nature of similar marks used on similar goods, and the appearance, sound, connotation, and commercial impression of the marks in light of its finding that the parties' services are highly similar.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.