Summary
This Federal Circuit opinion reviews a Trademark Trial and Appeal Board decision granting in part a petition to cancel two trademark registrations owned by Dollar Financial Group. The court addresses whether DFG could rely on the zone of natural expansion doctrine or the doctrine of tacking to establish priority over Brittex Financial's common-law rights in the "MONEY MART PAWN" mark. Applying the DuPont factors, the court finds substantial evidence supports the Board's conclusion that there is a likelihood of confusion between the marks. Consequently, the court affirms the TTAB's partial cancellation order.
Topics
Practice areas
Questions Presented
- Whether DFG may rely on the zone of natural expansion doctrine to establish priority over Brittex's common‑law rights.
- Whether the TTAB erred in finding a likelihood of confusion between the marks.
- Whether DFG's tacking argument, raised for the first time on appeal, is forfeited.
- Whether the TTAB's analysis of the DuPont likelihood‑of‑confusion factors was erroneous.
Holdings
- The zone of natural expansion doctrine is a purely defensive doctrine and cannot be used offensively to establish priority; therefore DFG may not rely on it to defeat Brittex's intervening rights.
- The TTAB's likelihood‑of‑confusion analysis, applying the DuPont factors, was supported by substantial evidence and therefore correct.
- The tacking argument is forfeited because it was not raised to the TTAB and was first raised on appeal.
- The TTAB's analysis of each relevant DuPont factor was supported by substantial evidence and therefore not erroneous.
Key quotations
“We review the [B]oard’s legal conclusions de novo, and its findings of fact for substantial evidence.” (at *4)
“The Board’s basis for rejecting Brittex’s priority … could not stand.” (at *6)
Factual background
Dollar Financial Group (DFG) has operated loan‑financing and check‑cashing businesses under the MONEY MART mark since the 1980s. Brittex Financial, Inc. (Brittex) has used the MONEY MART PAWN marks in Texas pawn shops since 1993. DFG registered two MONEY MART trademarks in 2014 covering pawn brokerage and pawn shop services; Brittex sought cancellation of those registrations alleging prior common‑law rights.
Procedural history
The TTAB partially granted and partially denied Brittex's petition to cancel DFG's two MONEY MART registrations. The Federal Circuit reversed the TTAB's denial of the petition and remanded for further proceedings, affirming the partial grant.
Remand instructions
The TTAB is instructed to delete the services “pawn brokerage and pawn shops” from Registration Nos. 4,524,540 and 4,532,073.