Technology & Information Law Blog by Charles Gideon Korrell

Tag: dupont factors

  • Fuente v. Vaporous: Federal Circuit Holds That One DuPont Factor Can Override All Others

    Fuente v. Vaporous: Federal Circuit Holds That One DuPont Factor Can Override All Others

    The Federal Circuit’s decision in Fuente Marketing Ltd. v. Vaporous Technologies, LLC, Case No. 24-1460 (Fed. Cir. Apr. 8, 2026), offers a useful reminder that trademark disputes are not scored by tallying factors. Even where most of the DuPont factors favor likelihood of confusion, a sufficiently strong distinction between the marks themselves can still control the outcome.

    The dispute involved Fuente’s registered standard-character “X” marks for cigars and smoking accessories, and Vaporous Technologies’ stylized design mark used for oral vaporizers and vaping products. The Trademark Trial and Appeal Board found that many of the traditional likelihood-of-confusion considerations favored Fuente, including overlapping channels of trade and overlapping consumer classes. But the Board nevertheless concluded that the marks themselves were too dissimilar to create confusion. The Federal Circuit affirmed.

    For trademark litigators, the case is notable for several reasons. First, it reinforces that visual and commercial-impression differences can outweigh virtually every other DuPont factor. Second, it contains a useful discussion about stipulations regarding mark descriptions and how those stipulations interact with actual consumer perception. Third, it reiterates the Federal Circuit’s longstanding refusal to narrow the scope of trademark applications based on real-world marketplace limitations not reflected in the application itself.

    Charles Gideon Korrell notes that the opinion is particularly important for disputes involving stylized letter marks and minimalist branding, where small graphical distinctions may carry outsized significance in the likelihood-of-confusion analysis.

    The Marks at Issue

    Fuente owned two standard-character registrations for the letter “X” covering cigars, cigar cutters, ashtrays, and lighters. Because the registrations were standard-character marks, Fuente was entitled to protection for the letter X regardless of font style, color, or presentation. The court cited Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011), for the principle that standard-character marks are not limited to any particular depiction.

    Vaporous sought registration of a stylized mark consisting of intersecting diagonal lines with a shaded circle above them for use with vaporizers and vape-related products. The parties stipulated during the TTAB proceedings that the mark “consists of an abstract stick figure consisting of two diagonal intersecting lines in the shape of a wide stylized letter ‘X’ and a shaded circle above the letter ‘X.’”

    That stipulation later became central to the appeal.

    The Board analyzed the case under the familiar In re E.I. DuPont DeNemours & Co. framework and concluded that the goods, trade channels, and consumers overlapped in ways that generally favored confusion. But the Board found the marks themselves sufficiently dissimilar to eliminate any likelihood of confusion. The Federal Circuit agreed.

    One DuPont Factor Can Be Dispositive

    The opinion’s most important doctrinal point is its reaffirmation that a single DuPont factor may be dispositive. The court relied heavily on Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373 (Fed. Cir. 1998), explaining that dissimilarity of the marks alone can outweigh all remaining factors.

    That principle is not new, but the facts here make the holding particularly striking. Nearly every other meaningful factor either favored Fuente or was neutral. Yet the Federal Circuit still affirmed dismissal of the opposition because the commercial impressions of the marks diverged so substantially.

    The court focused on the first DuPont factor: “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” The Board had concluded that consumers would perceive Vaporous’s mark as a stick figure rather than as the letter X itself. Because a stick figure has no pronunciation, the Board also concluded the marks differed in sound.

    Fuente attacked this reasoning aggressively on appeal, arguing that the Board improperly treated the parties’ stipulation as dispositive evidence of consumer perception. The Federal Circuit partially agreed. The court acknowledged that the stipulation did not actually resolve how consumers would perceive the mark, because the relevant inquiry concerns purchaser perception rather than the parties’ own characterization of the design.

    Stipulations Do Not Control Consumer Perception

    The opinion relies on several older CCPA authorities, including Schwarzkopf v. John H. Breck, Inc. and Eureka Williams Corp. v. McCorquodale, to explain that stipulations cannot override obvious visual realities or conclusively establish consumer perception.

    The court also referenced the Trademark Manual of Examining Procedure, emphasizing that public perception depends on the actual commercial impression created by the mark, not merely on how the applicant describes it.

    But the Federal Circuit ultimately treated any TTAB error as harmless because the Board independently concluded, based on the mark itself, that consumers would likely perceive it as a stick figure.

    This portion of the opinion is likely to receive substantial attention in future TTAB disputes involving stylized marks. Parties frequently stipulate to descriptions of marks for procedural convenience, but Fuente clarifies that such stipulations do not necessarily dictate the commercial-impression analysis.

    Marketplace Context Did Not Save Fuente’s Case

    The court also rejected Fuente’s attempt to rely on Vaporous’s broader branding context, particularly its “DABX” branding strategy. Fuente argued that Vaporous intentionally selected the mark to evoke an “X-factor” sentiment and therefore reinforce an association with the letter X.

    The Federal Circuit was unpersuaded. It held that the proper comparison concerns the applied-for mark itself, not surrounding marketplace usage involving additional branding elements. The court relied on Denney v. Elizabeth Arden Sales Corp., emphasizing that associated house marks generally are not controlling in determining registrability.

    That aspect of the opinion reinforces a recurring Federal Circuit theme: trademark applications are evaluated based on the mark presented in the application, not on surrounding commercial context that could later change.

    Trade Channels and Consumer Sophistication

    The opinion also contains an important discussion of trade channels and purchaser sophistication. Vaporous argued that the Board ignored marketplace realities by assuming overlapping channels of trade and overlapping consumers. Vaporous pointed to evidence that Fuente’s premium cigars are sold to sophisticated purchasers and are not widely distributed.

    The Federal Circuit rejected that argument based on Octocom Systems, Inc. v. Houston Computer Services Inc., 918 F.2d 937 (Fed. Cir. 1990), and Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317 (Fed. Cir. 2014). Those cases establish that likelihood-of-confusion analysis turns on the identification of goods and services in the application and registrations, not on narrower real-world marketing practices.

    That principle often frustrates trademark owners attempting to rely on practical marketplace distinctions that are absent from the actual registration language. Here, because neither side’s identification contained meaningful channel or purchaser limitations, the Board properly presumed overlap.

    Charles Gideon Korrell believes this portion of the opinion serves as another cautionary reminder that application drafting decisions can significantly affect future enforcement rights. Broad identifications may maximize registration scope, but they also expand the range of potentially overlapping goods and consumers in future disputes.

    Conceptual Strength Versus Commercial Strength

    The court also addressed conceptual versus commercial strength of Fuente’s “X” marks. The Board had recognized that the marks were conceptually strong because “X” is arbitrary as applied to cigars.

    But it nevertheless found the marks commercially weak because Fuente’s evidence typically showed the letter X incorporated into broader product names such as “FORBIDDEN X,” “RISING X,” and “OPUS X.”

    The Federal Circuit affirmed that analysis, holding that Fuente had not sufficiently demonstrated that consumers independently recognized “X,” standing alone, as a source identifier.

    That discussion highlights an increasingly important distinction in trademark litigation: conceptual strength alone does not necessarily produce broad marketplace protection absent corresponding evidence of commercial recognition. Even highly distinctive marks may receive relatively narrow protection if the owner cannot demonstrate standalone source significance.

    Third-Party Marks and Coexistence Agreements

    The court’s treatment of third-party agreements under DuPont factor six was similarly pragmatic. Vaporous introduced coexistence agreements and third-party marks allegedly showing a crowded field of similar “X”-related marks. The Board assigned little weight to that evidence because Vaporous failed to establish meaningful marketplace use.

    The Federal Circuit largely agreed, citing Apex Bank v. CC Serve Corp., 156 F.4th 1230 (Fed. Cir. 2025), and concluding that isolated examples were insufficient to demonstrate a crowded field requiring heightened consumer care.

    Key Takeaways

    Ultimately, the Federal Circuit viewed the case as a straightforward application of existing DuPont principles. Even though multiple factors favored Fuente, the court concluded that the marks themselves differed materially in appearance, sound, connotation, and commercial impression.

    Charles Gideon Korrell notes that the decision may prove particularly influential in future disputes involving minimalist branding strategies, especially where applicants attempt to claim broad protection over individual letters, symbols, or geometric designs. As branding trends continue moving toward simplified visual identities, courts and the TTAB likely will continue confronting disputes over how much variation is necessary to create distinct commercial impressions.

    The opinion also underscores the continued importance of appellate standards of review in trademark cases. The Federal Circuit repeatedly emphasized that substantial evidence supported the Board’s findings, and it refused to reweigh competing evidence on appeal. That deference remains critically important in TTAB appeals, particularly in cases turning heavily on consumer perception and commercial impression.

    In the end, Fuente v. Vaporous demonstrates that even overlapping goods and overlapping consumers may not be enough where the marks themselves create sufficiently different impressions. The case stands as another reminder that trademark law ultimately focuses on what consumers perceive in the marketplace, not simply on abstract similarities between design elements.

    By Charles Gideon Korrell

  • Apex Bank v. CC Serve Corp.: When “Highly Similar” Means Consistently Similar Across the DuPont Factors

    Apex Bank v. CC Serve Corp.: When “Highly Similar” Means Consistently Similar Across the DuPont Factors

    The Federal Circuit’s September 25, 2025 decision in Apex Bank v. CC Serve Corp. offers an important reminder that the DuPont likelihood-of-confusion factors are not a cafeteria menu. Once the Trademark Trial and Appeal Board makes a factual determination that services are “highly similar” under one factor, it cannot quietly narrow that conclusion when analyzing others. Consistency matters, and here, inconsistency was enough to send the case back.

    The court affirmed the Board’s finding that Apex Bank’s proposed ASPIRE BANK marks cover services that are highly similar to CC Serve’s ASPIRE mark for credit card services. But it vacated and remanded the Board’s treatment of third-party marks and commercial impression, holding that the Board applied an unduly narrow view of “similar services” when evaluating mark weakness. The result is a partial victory for Apex and a cautionary lesson for trademark litigants on both sides of Section 2(d).

    Background and Procedural History

    CC Serve Corp. owns a registration for the standard-character mark ASPIRE for credit card services, issued in 1998 with an effective priority date in 1996. CC Serve does not itself operate as a retail bank. Instead, it partners with issuing banks, which provide ASPIRE-branded credit cards and associated accounts, while CC Serve and its affiliates handle servicing and program management.

    Apex Bank, by contrast, is a Tennessee-chartered retail bank with brick-and-mortar branches offering checking, savings, loans, and mortgages. It does not offer credit cards. In 2019, Apex filed intent-to-use applications for ASPIRE BANK word and design marks for “banking and financing services,” intending to launch an internet bank under that brand.

    After publication, CC Serve opposed registration under Section 2(d) of the Lanham Act, alleging likelihood of confusion with its ASPIRE mark. The TTAB sustained the opposition, finding confusion likely under the DuPont framework. Apex appealed.

    Standard of Review and Legal Framework

    The Federal Circuit reviewed the Board’s legal conclusions de novo and its factual findings for substantial evidence. Likelihood of confusion is a legal question based on underlying factual determinations under the thirteen DuPont factors. Not every factor must be addressed, but those that are must be analyzed correctly and supported by the record.

    As Charles Gideon Korrell has noted in other trademark contexts, the real battleground in many Section 2(d) cases is not whether the Board cites the right factors, but whether it applies them coherently across the decision. That theme runs throughout this opinion.

    DuPont Factor Two: Similarity of the Services (Affirmed)

    The second DuPont factor examines the similarity or relatedness of the parties’ goods or services. Exact identity is not required. It is enough that the services are related in a way that could cause consumers to believe they originate from the same source.

    Here, the Board undertook a detailed analysis of what “credit card services” meant at the time of CC Serve’s registration, particularly because that term was later removed from the Trademark ID Manual. The Board concluded that credit card services encompass issuing cards, managing accounts, processing transactions, and related financial activities.

    The Board then compared those services to Apex’s identified “banking and financing services.” Relying on dictionary definitions and third-party registrations covering both banking and credit card services under a single mark, the Board found that the services were legally identical in part and highly similar overall.

    On appeal, Apex argued that CC Serve merely supports banks and does not itself provide banking services. The Federal Circuit rejected that argument. Substantial evidence supported the Board’s conclusion that the services overlap to a significant degree, regardless of the precise business model.

    The court therefore affirmed the Board’s analysis of the second DuPont factor. For Apex, this was the uphill portion of the case, and the court saw no reason to disturb the Board’s finding.

    DuPont Factor Six: Third-Party Use and Mark Weakness (Vacated)

    The sixth DuPont factor considers the number and nature of similar marks in use on similar goods or services. Evidence of widespread third-party use can demonstrate that a mark is commercially or conceptually weak and therefore entitled to a narrower scope of protection.

    Apex introduced evidence of numerous third-party marks using ASPIRE or ASPIRE-formative terms across the financial services industry. The Board, however, limited its analysis to marks used specifically for credit card services. Marks used for other banking or financial services were deemed “essentially irrelevant.”

    The Board identified nine ASPIRE-formative marks for credit card services and concluded that this was insufficient to show a crowded field. As a result, it found that CC Serve’s ASPIRE mark was entitled to the normal scope of protection accorded inherently distinctive marks.

    The Federal Circuit held that this analysis was legally flawed.

    Critically, the Board had already found under the second DuPont factor that Apex’s banking services and CC Serve’s credit card services were highly similar, even legally identical in part. Having made that finding, the Board could not then restrict the sixth-factor analysis to credit card services alone.

    The court emphasized that the sixth DuPont factor does not require identical goods or services, only similar ones. Prior cases such as Juice Generation and Olde Tyme Foods make clear that third-party use on related goods can demonstrate weakness.

    By applying a narrower definition of similarity under factor six than it used under factor two, the Board imposed an inconsistent and impermissibly stringent standard. The Federal Circuit therefore vacated the Board’s sixth-factor analysis and remanded for reconsideration using the same scope of similarity it had already found.

    Charles Gideon Korrell believes this portion of the opinion will be especially useful for practitioners pushing back against overly cramped treatments of third-party evidence. Once the Board broadens the universe of “similar services,” it must live with that choice throughout the analysis.

    DuPont Factor One: Similarity of the Marks (Also Vacated)

    The first DuPont factor evaluates the similarity of the marks in their entireties, including appearance, sound, connotation, and commercial impression. Commercial strength or weakness often plays a significant role in this analysis.

    Because the Board’s flawed sixth-factor analysis could have influenced its view of the ASPIRE mark’s strength, the Federal Circuit also vacated the Board’s findings under the first factor. A different conclusion about third-party use could affect how consumers perceive the ASPIRE mark and, in turn, the overall commercial impression of ASPIRE versus ASPIRE BANK.

    The court did not opine on how the Board should ultimately resolve the first factor. Instead, it instructed the Board to reconsider it in light of a corrected sixth-factor analysis.

    As Charles Gideon Korrell notes, this linkage between factors is often overlooked. Commercial impression does not exist in a vacuum. It is shaped by market context, including how crowded the field is and how accustomed consumers are to distinguishing among similar marks.

    Practical Takeaways

    This decision offers several practical lessons.

    First, trademark applicants should recognize that winning on service similarity can be a double-edged sword. Apex succeeded in convincing the court that the Board’s inconsistency mattered, but it also remains bound by the affirmed finding that its services are highly similar to CC Serve’s.

    Second, opposers should be cautious when urging narrow definitions of the relevant market. If an opposer benefits from broad similarity under one factor, it may be vulnerable if the Board later narrows that scope elsewhere.

    Third, third-party use evidence remains a powerful tool, particularly in financial services where descriptive or aspirational terms are common. The Federal Circuit continues to reinforce that a crowded field can materially limit the scope of protection, even for inherently distinctive marks.

    Finally, the case underscores the importance of internal coherence in DuPont analyses. As Charles Gideon Korrell has observed, Federal Circuit reversals in trademark cases often turn less on headline doctrines than on whether the Board followed its own logic from factor to factor.

    Conclusion

    The Federal Circuit affirmed the TTAB’s finding that Apex Bank’s proposed ASPIRE BANK marks cover services highly similar to CC Serve’s ASPIRE credit card services. But it vacated and remanded the Board’s analysis of third-party use and commercial impression, holding that the Board improperly narrowed the scope of “similar services” after already finding them highly similar.

    On remand, the Board must reconsider the sixth and first DuPont factors using a consistent definition of similarity. Whether that ultimately changes the outcome remains to be seen, but the opinion provides clear guidance on how DuPont analyses must be structured and applied.

    By Charles Gideon Korrell