Before: Hughes, Moore, and Cunningham. Appeal from the Trademark Trial and Appeal Board (the “Board”).
Summary: The Board erred by excluding evidence of marks used for similar services and restricting evidence of marks used for identical services.
Apex filed intent-to-use applications with the USPTO seeking to register ASPIRE BANK word and design marks for banking and financing services. During prosecution, CC Serve submitted a letter of protest and argued the proposed marks were confusingly similar to CC Serve’s registered ASPIRE mark for credit-card services. After the examiner approved the ASPIRE BANK marks, CC Serve initiated an opposition, alleging likelihood of confusion. The Board sustained the opposition.
On appeal, Apex argued the Board erred in its analysis of the DuPont factors. Specifically, Apex argued the Board erred in assessing the first factor (the similarity of the marks in appearance, sound, connotation and commercial impression), the second factor (the similarity of the parties’ goods and services), and the sixth factor (the number and nature of similar marks in use for similar goods).
The court held the Board did not err in its analysis of the second factor because the parties’ services were highly similar. But the Board erred in its analysis of the sixth factor by focusing solely on the use of Aspire-related marks for credit-card services and failing to consider the other 42 relevant uses of Aspire or Aspire-formative marks for banking or financing services. The Federal Circuit explained disregarding uses on non-identical goods was an error, especially given that the Board’s conclusion, in analyzing the second factor, that the parties’ services were highly similar. That error also infected the analysis of the first factor. The Federal Circuit therefore remanded for the Board to address the first and sixth factors in light of the finding that the parties’ services were highly similar.
Editor: Sean Murray
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