In Dollar Financial Group, Inc. v. Brittex Financial, Inc., No. 23-1375 (Fed. Cir. Mar. 19, 2025), the Federal Circuit affirmed a Trademark Trial and Appeal Board (Board) decision partially cancelling two of Dollar Financial Group's (DFG) trademark registrations for "MONEY MART."
Beginning in the 1980s, DFG provided loan financing under the name "MONEY MART." DFG expanded its offerings to include pawn brokerages and shops in 2012, and secured registrations for these expanded services in 2014. Brittex, who had operated pawn shops under the name "MONEY MART PAWN" since 1993, petitioned to cancel DFG's new registrations, citing Brittex's prior use and a likelihood of confusion. The Board initially denied Brittex's cancellation claim. In a first appeal, the Federal Circuit remanded, advising that loan financing encompasses pawn services.
On remand, the Board canceled DFG's registrations for pawn services, finding that Brittex had priority because Brittex's first use of "MONEY MART PAWN" in 1993 predated DFG's expansion into pawn services. The Board rejected DFG's reliance on the "zone of natural expansion" doctrine and found DFG's tacking claims were forfeited.
When the case was appealed again to the Federal Circuit, it affirmed. The Court emphasized that a senior user's rights in one line of business do not automatically extend to different services where another party has intervening priority. The Court confirmed the Board's analysis that the "zone of natural expansion" is a purely defensive doctrine and does not give a senior user a proactive right to register a mark in an expanded line of goods where despite a likelihood of confusion with a junior user's mark. Applying the DuPont factors, the Court affirmed the Board's finding of a likelihood of confusion.
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