DOLLAR FINANCIAL GROUP, INC. v. BRITTEX FINANCIAL, INC. [OPINION]
Before Prost, Taranto, and Hughes. Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board.
Summary: The zone of natural expansion doctrine cannot not be used to establish priority over a third party’s common-law trademark rights.
In 2014, Dollar Financial Group (DFG) registered two trademarks for MONEY MART covering pawn services, claiming use since 2012. Brittex Financial, which had been operating pawn shops under the names “MONEY MART PAWN” and “MONEY MART PAWN & JEWELRY” since 1993, petitioned to cancel DFG’s trademark registrations, arguing that DFG’s use of MONEY MART for pawn services would create consumer confusion. At the TTAB, DFG argued that the zone of natural expansion doctrine allowed it to claim priority over Brittex based on its use of MONEY MART for loan financing since the 1980s. The TTAB held that the zone of natural expansion is a purely defensive doctrine, and that DFG could not rely on the doctrine to claim priority over Brittex’s common law rights. The TTAB therefore granted the petition to cancel. DFG appealed to the Federal Circuit.
The Federal Circuit affirmed. Under the zone of natural expansion doctrine, a senior user of a mark in connection with particular goods or services can claim superior rights in the mark for other goods or services which purchasers might reasonably expect to come from the same source in the normal expansion of the senior user’s business. But the doctrine cannot be used offensively to enable the senior user to register a mark on an expanded line of goods where the use of the mark would lead to a likelihood of confusion, mistake or deception. The court therefore ruled that DFG could not rely on the doctrine to claim priority over Brittex and affirmed the TTAB’s cancellation of DFG’s registration.
Editor: Sean Murray
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