Dollar Fin. Grp., Inc. v. Brittex Fin., Inc
Authored by: Jeremy J. Gustrowsky
In the recent case of Dollar Financial Group, Inc. v. Brittex Financial, Inc., the Federal Circuit addressed a dispute over who had the right to use the “MONEY MART” trademark for pawn shop services. Dollar Financial Group (DFG) had been using the “MONEY MART” name since the 1980s for loan financing and check cashing services, and registered the mark for pawn brokerage and pawn shop services in 2013. However, Brittex Financial, Inc. had been operating pawn shops under the names “MONEY MART PAWN” and “MONEY MART PAWN & JEWELRY” since 1993, giving it earlier common law rights for pawn services.
Brittex challenged DFG’s trademark registrations, arguing that its own use of the mark for pawn services came first and that DFG’s use would likely confuse consumers. The Trademark Trial and Appeal Board agreed with Brittex, finding that Brittex had priority for pawn shop services and that DFG’s registration should be partially cancelled. DFG appealed, arguing that because it had used “MONEY MART” for related financial services since the 1980s, it should be allowed to expand into pawn shops under the “zone of natural expansion” doctrine.
The Federal Circuit rejected DFG’s argument, clarifying that the zone of natural expansion doctrine is only a defensive tool. This means a business can use it to stop others from registering similar marks in areas it might naturally expand into, but it cannot use it offensively to leapfrog over someone else’s earlier rights in a new service area. The court also noted that DFG failed to properly raise an alternative argument based on the “tacking” doctrine, which sometimes allows a business to link new uses of a mark to older ones if they create the same commercial impression.
Ultimately, the court affirmed the Board’s decision: Brittex’s earlier use of “MONEY MART” for pawn shops gave it priority, and DFG could not use the mark for pawn brokerage and pawn shop services. This case highlights the importance of actually using a trademark in commerce for specific goods or services before others do, and the limits of expanding trademark rights into new business areas where competitors may be using existing registered marks.