Federal Circuit Archives

Federal Circuit

Boss move: Disclaimer that doesn’t work can still work as a disclaimer

by Joshua Revilla | Oct 30, 2025 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court’s judgment of noninfringement and no invalidity for indefiniteness, concluding that the court correctly construed the claims and properly determined that the patents’ specifications and prosecution histories would enable a person of ordinary skill in the art (POSA) to ascertain the scope of the claims with reasonable certainty. Barrette Outdoor Living, Inc. v. Fortress Iron, LP, Fortress Fence Products LLC, Case Nos. 24-1231; -1359 (Fed. Cir. Oct. 17, 2025) (Moore, Linn, Cunningham, JJ.)

Barrette sued Fortress for infringing its patents directed to a fencing assembly featuring pivoting, sliding connectors that connect pickets to rails. During claim construction, the district court determined that the terms “boss,” “projection,” and “nub” should be given the same meaning and that these “boss” terms described fastener-less and integral structures, distinguishing them from prior art. The district court also held that the terms “sliding” and “causes” were not indefinite because a POSA would understand their scope.

Following the Markman hearing, Barrette stipulated that it could not prove infringement under the court’s construction of the “boss” terms because the accused products used non-integral fasteners. Fortress stipulated, under the same construction, that it could not establish invalidity for indefiniteness. Barrette appealed, and Fortress cross-appealed.

Barrette first argued that the district court erred in finding that the specification disclaimed bosses with fasteners by disparaging prior art assemblies that used them. According to Barrette, the specification did not criticize the use of fasteners but merely distinguished the prior art designs. Fortress, however, argued that the specification repeatedly criticized assemblies employing fasteners, describing prior art systems that used fasteners to join the rails as time consuming to install. In contrast, the patented invention attributes its quick installation advantage to the use of fastener-less, integral bosses.

The Federal Circuit agreed with Barrette that the specification did not clearly and unmistakably disclaim bosses that use fasteners. The Court explained that while a patent may describe multiple advantages over the prior art, not every embodiment must incorporate each of those advantages. Accordingly, claims should not be construed to require every advancement disclosed in the specification. The Court further rejected Fortress’ argument that the claimed “boss” must always achieve the benefit of quick installation. Although the asserted patents describe ease of installation as an advantage of using bosses, that benefit does not limit the term’s structural scope. A “boss,” the Court held, is not restricted to fastener-less configurations. Accordingly, the Federal Circuit determined that the district court erred in limiting the claims to fastener-less bosses.

Barrette next argued that the district court erred by concluding that the prosecution history disclaimed non-integral bosses. The Federal Circuit rejected this argument and agreed with the district court that Barrette had clearly disclaimed non-integral boss structures during prosecution. The Federal Circuit stated that Barrette clearly distinguished prior art from the “claimed integral boss” in prosecution and expressly clarified the scope of its claims.

Barrette argued that its subsequent communications with the patent office rendered any purported disclaimer [...]

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Enablement: Skilled artisan’s knowledge no substitute for adequate written description

by Jolie B. Schenerman | Oct 30, 2025 | Patents

The US Court of Appeals for the Federal Circuit affirmed the US International Trade Commission’s (Commission) decision that a water filtration patent was invalid for lack of written description and enablement because the scope of the asserted claim was not enabled by the patent’s specification. Brita LP v. International Trade Commission, Case No. 24-1098 (Fed. Cir. Oct. 15, 2025) (Prost, Reyna, Chen, JJ.)

Brita filed a complaint at the Commission alleging that Vestergaard Frandsen and Helen of Troy infringed its water filtering patent. The main dispute focused on the patent’s only independent claim, which in part recites a “gravity-fed water filter, comprising filter media including at least activated carbon and a lead scavenger” that achieves a “Filter Rate and Performance (FRAP) factor of about 350 or less.” The patent identifies several types of filter media, including carbon filters.

The administrative law judge (ALJ) construed the term “filter usage lifetime claimed by a manufacturer or seller of the filter” to mean “the total number of gallons of water that a manufacturer or seller has validated can be filtered before the filter is replaced.” Based on this construction, the ALJ issued an initial determination finding that the asserted claims met the written description and enablement requirements.

Brita sought review of the initial determination before the full Commission. On review, the Commission reversed the ALJ’s finding of a violation, concluding that the “filter usage” term was indefinite, the asserted claims lacked adequate written description, and the claims were not enabled with respect to non-carbon block filters. Brita appealed.

To satisfy the written description requirement, a patent must demonstrate that the inventor was in possession of the claimed invention at the time of filing. This means the specification must adequately support each claim. In this case, the Federal Circuit found that the specification only supported carbon block filters meeting the claimed FRAP factor, not the broader category of “filter media” as claimed. As a result, the Court found that the asserted claims failed the written description requirement.

The Federal Circuit emphasized that the patent specification failed to support the broad claim language because of its narrow focus on carbon block filters. Specifically, the specification:

Described only carbon blocks, with other filter media mentioned solely as tested examples for FRAP factor
Provided specific formulations for carbon blocks only
Illustrated only carbon block filters in the figures
Made clear distinctions between carbon blocks and other filter types.

The Federal Circuit found persuasive the inventor’s testimony that only carbon block filters were created to meet the FRAP factor.

The Federal Circuit also affirmed the Commission’s finding that the claims were invalid for lack of enablement. Under the Federal Circuit’s 1988 In re Wands decision, enablement requires that a person of ordinary skill in the art be able to make and use the invention without undue experimentation. The Court found no reversible error in the Commission’s conclusion that undue experimentation would be required for filters other than carbon blocks to meet the claimed FRAP factor. The [...]

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When patent law meets free speech: Anti-SLAPP appellate jurisdiction

by Jodi Benassi | Oct 30, 2025 | Trade Secrets

The US Court of Appeals for the Federal Circuit determined that it had jurisdiction over an interlocutory appeal from a district court’s denial of a California anti-SLAPP (Strategic Lawsuit Against Public Participation) motion in a trade secret and inventorship case, finding such a denial was immediately appealable under the collateral order doctrine. On the merits, the Federal Circuit vacated and remanded the district court’s decision. IQE, plc v. Newport Fab, LLC, DBA Jazz Semiconductor, et al., Case No. 24-1124 (Fed. Cir. Oct. 15, 2025) (Hughes, Stark, Wang, JJ.)

IQE sued Jazz Semiconductor, Tower Semiconductor, and other entities and individuals (collectively, Tower) for violation of the Defend Trade Secrets Act, correction of inventorship under 35 U.S.C. § 256, and five claims arising under California state law, including trade secret misappropriation and intentional interference with prospective economic advantage. Tower moved to dismiss for failure to state a claim and simultaneously filed an anti-SLAPP motion to strike the claims for misappropriation and intentional interference arising under state law. The district court denied Tower’s motion to strike. Tower appealed to the US Court of Appeals for the Ninth Circuit.

The Ninth Circuit determined that under 28 U.S.C. § 1295(a) the Federal Circuit would have had jurisdiction at the time the appeal was filed. The Ninth Circuit explained that the Federal Circuit had subject matter jurisdiction over the appeal because the complaint asserted a claim for correction of inventorship, a cause of action arising under federal patent law. The Ninth Circuit further concluded that the Federal Circuit had appellate jurisdiction under Ninth Circuit law since the denial of an anti-SLAPP motion is an immediately appealable order under the collateral order doctrine. The Ninth Circuit therefore transferred the appeal to the Federal Circuit.

The Federal Circuit noted that the appeal raised a jurisdictional question of first impression: whether the Federal Circuit has jurisdiction over an appeal from a district court’s denial of an anti-SLAPP motion before entry of final judgment. The Federal Circuit agreed with the Ninth Circuit that it has subject matter jurisdiction over claims created by federal patent law. The Federal Circuit noted that appellate jurisdiction typically is limited to a final decision by the district court, but the collateral order doctrine provides a narrow exception that allows an interlocutory appeal when a trial court’s order affects rights that will be irretrievably lost in the absence of an immediate appeal. The Court analyzed the three collateral order factors and determined that an anti-SLAPP motion to strike under California law fits squarely within the collateral order exception to the final judgment rule.

IQE argued that jurisdiction was improper for two reasons:

IQE filed an amended complaint after Tower’s appeal, suggesting the district court must revisit the motion.
Some circuits have held that state anti-SLAPP statutes conflict with the Federal Rules of Civil Procedure.

The Federal Circuit rejected both arguments, finding the amended complaint improper under Ninth Circuit precedent and deferring to the Ninth Circuit’s view that California’s anti-SLAPP law applies in federal court. [...]

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Power outage: Assignment doesn’t include future improvements

by Sydney E. McDermott | Oct 23, 2025 | Patents

In a pair of related rulings, the US Court of Appeals for the Federal Circuit reviewed two decisions from two different agencies involving the same patent. The Court ultimately found that the International Trade Commission (ITC) correctly identified the owner of the asserted patent, and that the Patent Trial & Appeal Board correctly determined that the asserted patent was unpatentable. Causam Enterprises, Inc. v. Int’l Trade Comm’n, Case No. 23-1769 (Fed. Cir. Oct. 15, 2025) (Taranto, Chen, Stoll, JJ.); Causam Enterprises, Inc. v. ecobee Techs. ULC, Case No. 24-1958 (Fed. Cir. Oct. 15, 2025) (Taranto, Chen, Stoll, JJ.)

Causam initiated a complaint before the ITC, alleging that certain importers infringed its patent directed to technology for reducing electrical utilities power demands. The asserted patent claims priority as a continuation-in-part of a parent patent application. Although the face of the asserted patent lists Causam as the assignee, the parent application was assigned to another entity a decade earlier, along with “all patents which may be granted therefor” and “all divisions, reissues, continuations, and extensions thereof.” The assignment did not expressly include continuations-in-part.

The chief administrative law judge (ALJ) issued an initial determination that Causam was not the owner of the asserted patent and that no infringement had occurred. Causam subsequently requested a review of the initial determination by the full Commission. The Commission adopted the ALJ’s findings of noninfringement but declined to adopt the findings regarding ownership. Causam appealed.

Ownership of a patent is a threshold requirement for asserting Article III standing, and the complainant bears the burden of establishing standing in the pleadings. On appeal, the Commission and the ITC respondents argued that ownership of the asserted patent did not need to be decided for standing purposes as Causam had pleaded ownership in its complaint. The Federal Circuit disagreed, emphasizing that, as an Article III court, it is required to consider Article III’s standing requirements, even if the ITC is not. Because the issue turned on contract interpretation and did not require underlying factual findings, the Federal Circuit reviewed the standing issue de novo.

The Federal Circuit ultimately determined that the omission of the term “continuation-in-part” from the assignment agreement meant that the asserted patent was not included in the assignment and thus Causam had ownership of the asserted patent. The ITC respondents argued that the inclusion of “continuation” language was sufficient to encompass both continuations and continuations-in-part. The Court rejected this argument, noting that adopting such a position would effectively “insert words into the contract that the parties never agreed to,” particularly because continuations and continuations-in-part (which by definition include new matter not found in the priority application) are widely understood to be distinct concepts within patent law.

The Federal Circuit noted that such a distinction is especially significant in the context of patent assignments. In the case of continuations, recordation of the assignment of the parent patent or application is effective as to a child patent. In contrast, the same is not true for a continuation-in-part, meaning that [...]

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We’ve got standards: No issue preclusion for facts that must be proven under higher standard

by Ashley K. Justice | Oct 23, 2025 | Patents

The US Court of Appeals for the Federal Circuit vacated a summary judgment finding claims invalid, on grounds that the district court erred in applying issue preclusion based on factual findings in an inter partes review (IPR) that held other claims invalid. Inland Diamond Products Co. v. Cherry Optical Inc., Case No. 24-1106 (Fed. Cir. Oct. 15, 2025) (Prost, Reyna, Chen, JJ.)

In 2020, Inland Diamond filed a patent infringement suit against Cherry Optical asserting dependent claims of two patents. A year prior, in 2019, the Patent Trial & Appeal Board had determined that the independent claims on which the asserted dependent claims depended were unpatentable in two IPRs. During these 2019 IPRs, the Board determined that the claims now asserted at the district court were not unpatentable. The Board decision was not appealed.

The district court granted Cherry’s motion for summary judgment that the asserted claims were invalid for obviousness. The district court concluded that issue preclusion applied, so Cherry did not have to perform an independent invalidity analysis for limitations of what the district court termed unpatentable claims contained in the asserted claims. The district court’s analysis focused on limitations added by the asserted claims. The district court permitted Inland to defend the asserted claims’ validity because those claims had been adjudicated as not unpatentable in the 2019 IPRs.

Relying on issue preclusion and Cherry’s asserted prior art, the district court granted summary judgment that the asserted claims were invalid for obviousness. Inland appealed.

The Federal Circuit reversed, explaining that the district court erred in applying issue preclusion based on two 2024 decisions, ParkerVision and Kroy. In both decisions, the Federal Circuit reversed the district court’s holding for erroneous application of issue preclusion based on the Board’s factual findings. The Federal Circuit explained that facts proven under the Board’s then-lower standard of proof for unpatentability (preponderance of the evidence) cannot have issue-preclusive effects under the district court’s clear and convincing standard. The Federal Circuit distinguished cases where a claim has already been found unpatentable or invalid; in those situations, issue preclusion bars the assertion of those claims.

Applying this principle, the Federal Circuit reasoned that since the prevailing standard of proof for challenging patentability in 2019 in an IPR was lower and Inland’s asserted claims had never been determined invalid or unpatentable, the district court erred in giving issue-preclusive effect to the Board’s 2019 findings. To grant summary judgment, a district court must find that the patent challenger carried its burden under the clear and convincing standard separate from the Board’s factual findings. The Federal Circuit noted that to meet the higher standard, the evidence may be the same or similar to the evidence that led the Board to find that certain claims were unpatentable by a preponderance of the evidence.

Associational standing requires concrete, non-speculative harm

by Taylor MacDonald | Oct 16, 2025 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court decision dismissing a lawsuit against the United States Patent and Trademark Office (USPTO) for lack of associational standing since no member of the association had standing to sue. US Inventor, Inc. v. United States Patent and Trademark Office, Case No. 24-1396 (Fed. Cir. Oct. 3, 2025) (Lourie, Reyna, Stark, JJ.)

US Inventor and National Small Business United (collectively, the plaintiffs) jointly filed a petition for rulemaking at the USPTO to amend the regulations that control the USPTO’s discretion to institute inter partes review (IPR) or post-grant review (PGR) proceedings. The plaintiffs proposed five instances in which the USPTO would have no discretion to institute an IPR or PGR. Separately, the USPTO issued a request for public comments regarding institution discretion two months after the plaintiffs filed their petition.

Eventually, the USPTO denied the petition, citing redundancy with the request for public comment. The USPTO assured the plaintiffs that their request would be considered as a public comment.

In response, the plaintiffs filed a complaint in federal court claiming that the USPTO had committed three errors:

The USPTO’s assurance that the plaintiffs’ requests would be considered “in unspecified ‘future rulemaking’” violated its duty to conclude the matter in an appropriate amount of time, as required by the Administrative Procedure Act (APA).
Under the APA, the USPTO failed to state adequate grounds for denial.
The USPTO violated the America Invents Act (AIA) by “fail[ing] to promulgate notice-and-comment rulemaking.”

The USPTO filed a motion to dismiss, arguing that the plaintiffs lacked standing. The district court granted the motion, finding that the plaintiffs had neither organizational nor associational standing. The plaintiffs appealed.

Because the issue of associational standing was not specific to patent law, the Federal Circuit applied the law of the US Circuit Court for the District of Columbia, which reviews standing de novo.

Of the three requirements for associational standing (standing of at least one associational member, applicability of the issue to the association’s purposes, and individual member participation not required for the claim or relief), only the first was at issue.

The Federal Circuit concluded that since no member of the plaintiffs’ organizations had standing to sue, the plaintiffs themselves did not have associational standing. The Court noted that the plaintiffs had failed to claim anything more than speculative harm to any member resulting from the USPTO’s denial of plaintiffs’ petition. The Court found the “risk” of patent cancellation during an IPR or PGR proceeding insufficiently “actual or imminent” to afford any member standing to sue.

The Federal Circuit explained that a requisite third-party action outside of the plaintiffs’ control would need to occur before any harm to the plaintiffs’ members could be concretely realized. Third-party actions, including the filing of a petition for an IPR or PGR proceeding, the USPTO’s institution of such proceeding, and the USPTO’s ultimate decision in such proceeding, constitute multiple steps in the chain of events that might result in harm [...]

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Damages? Apportionment among licensed properties is essential, $10 million award reduced to $1

by Dexter Hamilton | Oct 9, 2025 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court decision excluding a damages expert’s testimony and reducing a jury’s $10 million damages award to nominal damages. The Court found that the plaintiff failed to put forth evidence from which a jury could reasonably determine damages without speculation. Rex Medical, L.P. v. Intuitive Surgical, Inc., Intuitive Surgical Operations, Inc., Intuitive Surgical Holdings, LLC, Case No. 24-1342 (Fed. Cir. Sept. 8, 2025) (Dyk, Prost, Stoll JJ.)

Rex Medical sued Intuitive for patent infringement. Initially, Rex asserted two related patents directed to systems for stapling tissue during surgery. Intuitive filed a petition for inter partes review (IPR) against one of the patents, and Rex withdrew it from the case.

Rex’s damages expert then opined that a hypothetical negotiation for a license to the remaining patent would have resulted in a $20 million payment. As support, he cited a prior settlement agreement between Rex and Covidien in which Rex asserted both patents before dropping the remaining asserted patent here from that case. Rex and Covidien ultimately settled, with Covidien paying $10 million to license both of the originally asserted patents alongside “eight other U.S. patents, seven U.S. patent applications and nineteen patents or applications from countries outside the United States.”

Intuitive moved to preclude Rex’s expert’s testimony regarding the Covidien license, and the district court granted the motion. Nonetheless, the jury returned an infringement verdict and granted $10 million in damages. Intuitive filed a renewed motion for judgment as a matter of law (JMOL). The district court denied the motion with respect to infringement and validity, but agreed on damages, reducing the award to $1. Rex appealed, challenging the exclusion of its expert’s testimony and the reduction of the damages award.

The Federal Circuit first addressed the exclusion of the expert testimony, reviewing for abuse of discretion. The Court noted that “[w]hen relying on comparable licenses to prove a reasonable royalty, we require a party to ‘account for differences in the technologies and economic circumstances of the contracting parties.’” The district court had held that Rex’s expert failed to adequately address the extent to which the patent dropped from this case and other patents included in the Covidien license contributed to the value of the license. As the Federal Circuit explained, the expert did not allocate the payment between the licensed patents and applications. Thus, the Federal Circuit ruled that the district court did not err in excluding the testimony.

Second, the Federal Circuit addressed the reduction in damages. Rex argued, and the Court agreed, that the reduction was in essence a grant of JMOL of no damages. The Court reviewed for abuse of discretion and described how, at trial, Rex relied primarily on the Covidien license and lay witness testimony to prove damages. While the lay witness testified that the focus of the Covidien license was both of the patents originally asserted here, the Court noted that the patent remaining at issue in this case had been dropped from [...]

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No curtain call yet: Mixed verdict in patent, trademark, standing case

by Hannah Hurley | Oct 9, 2025 | Patents, Trademarks

The US Court of Appeals for the Federal Circuit addressed a wide array of issues in a long-running dispute over shower curtain technology. The Court provided important guidance on patent claim scope using intrinsic evidence, trademark standing and ownership of the mark in issue, trade dress functionality under TrafFix, and the need for district courts to provide a reviewable explanation when issuing patent infringement summary judgment based on the facts of this case. Focus Products Grp. Int’l, LLC v. Kartri Sales Co., Inc., Case No. 23-1446 (Fed Cir. Sept. 30, 2025) (Moore, Clevenger, Chen, JJ.)

The decade-long dispute started when Focus Products sent a cease-and-desist letter to Kartri Sales and its supplier, Marquis Mills International. The letter asserted patent infringement but was largely ignored. Focus Products then filed suit asserting three utility patents, two trademarks (HOOKLESS® and EZ ON), and unregistered trade dress rights in the appearance of its shower curtains.

Four months after the Supreme Court’s 2017 decision in TC Heartland v. Kraft Foods Group Brands, Kartri raised a venue objection and filed a motion to dismiss or transfer venue. The district court denied the motion, finding it to be unreasonably late, especially considering that Kartri actively conducted litigation after TC Heartland.

The district court construed several disputed claim terms. Based on its constructions, it found no triable issue of fact and granted summary judgment of patent infringement to Focus Products. However, the district court found genuine disputes of material fact regarding trademark and trade dress infringement and ordered a bench trial on those issues.

On the eve of trial, Kartri asserted unclean hands and equitable estoppel defenses. The district court denied these defenses because they were improperly raised for the first time immediately preceding trial.

After a bench trial, the district court held that:

Focus Products had standing to enforce the unregistered EZ ON mark.
Kartri infringed the mark and Focus Products’ trade dress, which was determined to be nonfunctional.
Kartri infringed Focus Products’ HOOKLESS® mark.

Accordingly, the district court awarded lost profits, reasonable royalties, attorneys’ fees, and enhanced damages for willful infringement. Kartri appealed.

The Federal Circuit affirmed the district court’s denial of Kartri’s motion to transfer venue under TC Heartland, finding Kartri’s objection untimely. Kartri waited four months after TC Heartland to raise the issue, during which time discovery had progressed significantly. The Court emphasized that venue objections must be raised seasonably and that continued litigation in the chosen forum may constitute forfeiture.

The Federal Circuit largely reversed the district court’s infringement findings, explaining that the district court erred in its claim construction because Focus Products had disclaimed shower rings with a flat upper edge during prosecution. While an affirmative disclaimer usually originates from the patent applicant, the Court found clear and unmistakable disavowal through the applicant’s acquiescence to the examiner’s species election, claim cancellation, and narrowed claim scope. This disclaimer was reinforced by the prosecution of a related asserted patent, which explicitly claimed the disclaimed feature. A patentee cannot try [...]

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What we have here is a failure to communicate: Expert must map all claim limitations to the accused infringement

by Benjamin Ediger, Ph.D. | Oct 2, 2025 | Patents

The US Court of Appeals for the Federal Circuit reversed jury verdicts of infringement, finding that they were not supported by substantial evidence because of deficiencies in the patent owner’s expert testimony. Finesse Wireless LLC v. AT&T Mobility LLC, Case No. 2025 WL 2713518 (Fed. Cir. Sept. 24, 2025) (Moore, C.J.; Linn, Cunningham, JJ.)

AT&T Mobility was accused of infringing two patents owned by Finesse Wireless, both directed to methods for mitigating intermodulation product interference in radios. The accused technology involved Nokia radios implementing passive intermodulation (PIM) cancellation. Nokia intervened in the case. A jury found all asserted claims valid and infringed, awarding Finesse more than $166 million in lump sum damages. AT&T and Nokia moved for judgment as a matter of law (JMOL) on both noninfringement and the damages award, and alternatively sought a new trial. The district court denied the motions. AT&T and Nokia appealed.

The Federal Circuit reversed the district court’s denial of JMOL on noninfringement and vacated the damages award, concluding that the jury verdicts were not supported by substantial evidence. The Court’s decision turned largely on shortcomings in the testimony of Finesse’s infringement expert, whose analysis was the sole basis for Finesse’s infringement case.

For the first patent, the Federal Circuit found that Finesse’s expert failed to demonstrate that Nokia’s PIM cancellation feature received all input signals required by the asserted claims. The expert relied on a Nokia diagram but misinterpreted it by mistakenly identifying a signal generated by the radio as one of the required input signals. Although the expert was made aware of the error, he did not clearly correct his position or identify alternative signals that satisfied the claim limitation. Finesse argued that the expert had corrected a “misimpression,” but the Court disagreed, finding that the expert failed to provide a clear and consistent explanation reconciling his contradictory positions.

The asserted claims of the second patent required seven multiplications involving three signals. Finesse’s expert relied solely on a Nokia document that listed only three multiplications yet equated them to the seven required by the claims. The Federal Circuit found this testimony inadequate, noting that the expert failed to explain how the three multiplications mapped to the seven required. On appeal, Finesse argued that the document actually evidenced 10 multiplications, but the Court was unpersuaded. Neither Finesse nor its expert explained how the 10 multiplications corresponded to the seven required multiplications, nor did they reconcile this new position with the expert’s prior reliance on only three multiplications.

Because Finesse failed to present expert testimony that adequately mapped each claim limitation to the accused method, the Federal Circuit reversed the jury’s infringement findings for both patents and vacated the damages award.

Practice note: The decision underscores the importance of detailed and consistent expert analysis in patent infringement cases, particularly when expert testimony is the sole basis for proving infringement.

Bank on it: Likelihood of confusion analysis requires factual consistency when evaluating DuPont factors

by Taylor MacDonald | Oct 2, 2025 | Trademarks

The US Court of Appeals for the Federal Circuit reversed in part a decision by the Trademark Trial & Appeal Board and remanded for new analysis of two factors under the Dupont likelihood of confusion test. The Court emphasized that the factual determination in factor two (similarity of the parties’ goods or services) should remain consistent through the analyses for factors one and six. Apex Bank v. CC Serve Corp., Case No. 23-2143 (Fed. Cir. Sept. 25, 2025) (Moore, Hughes, Cunningham, JJ.)

CC Serve has held a registration for the word mark ASPIRE in connection with credit card services since 1998. In 2019, Apex Bank, a Tennessee-based banking chain, filed intent-to-use applications at the US Patent & Trademark Office (PTO) for marks incorporating ASPIRE BANK for use in “banking and financing services.” CC Serve, which partners with banks to issue and service credit cards, filed a letter of protest during Apex’s trademark prosecution. Despite CC Serve’s objections, the PTO published Apex’s marks in December 2019. CC Serve then formally opposed the marks, and the Board sustained the opposition, finding a likelihood of consumer confusion. Apex appealed.

The Federal Circuit reviewed the Board’s findings under the DuPont framework, which assesses likelihood of confusion based on multiple factors. Apex challenged the Board’s analysis of three specific factors:

Factor two: Similarity of the parties’ goods/services
Factor six: Strength of the prior mark in the marketplace
Factor one: Similarity of the marks themselves

The Federal Circuit upheld the Board’s finding under factor two, agreeing that “credit card services” and “banking/financing services” are highly similar based on their definitions and market overlap.

However, the Federal Circuit found fault with the Board’s analysis under factor six, which evaluates third-party use of similar marks to determine the strength of the contested mark. Apex submitted many examples of ASPIRE marks used in both the credit card and broader financial services industries. The Board, however, narrowed its focus to only those marks used in credit card services, excluding broader banking and financial services. The Federal Circuit concluded that this was inconsistent with the Board’s finding under factor two regarding the similarity of the parties’ goods and services. The Court instructed that on remand, the Board should consider third-party ASPIRE marks across both industries.

The Federal Circuit also directed the Board to revisit factor one, which assesses the similarity of the marks in light of the strength of the prior mark. Whether the strength of CC Serve’s mark is diminished when viewed in the broader financial services context could affect the “overall commercial impression” of the marks and the likelihood of confusion.

The Federal Circuit emphasized that factual determinations, particularly regarding the similarity of goods and services, must be applied consistently across the DuPont factors. The Court therefore remanded the case to the Board for reconsideration of factors one and six considering this guidance.

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