Brittex Financial, Inc. v. Dollar Financial Group, Inc.
21-1370
| Fed. Cir. | Nov 24, 2021Background
- Dollar Financial filed two trademark applications in 2013 to register MONEY MART (standard and design) covering services including "pawn brokerage and pawn shops," and obtained registrations in 2014.
- Dollar previously owned an incontestable 2007 registration (filed 2006) for MONEY MART limited to "loan financing," claiming first use in 1984 (Registration No. 3,206,120).
- Brittex had used MONEY MART PAWN / MONEY MART PAWN & JEWELRY for pawn services since 1993 and in 2015 petitioned to cancel Dollar’s 2014 registrations under Lanham Act § 2(d) for lack of priority and likelihood of confusion.
- The TTAB denied cancellation, finding pawn services were "covered or encompassed by loan financing," relied on Dollar’s earlier loan-financing registration to defeat Brittex’s priority, and struck Dollar’s Morehouse defense; the Board also rejected Brittex’s fraud claim.
- On appeal the Federal Circuit reversed the TTAB’s priority ruling (the sole basis for denial of cancellation) and remanded, concluding the Board lacked legal and factual support for treating pawn services as encompassed by Dollar’s loan‑financing registration.
- The Federal Circuit affirmed the TTAB’s striking of Dollar’s Morehouse defense, finding no abuse of discretion because the challenged 2014 registrations included non‑loan services not covered by the 2007 registration.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Priority under §2(d) for pawn services | Brittex: used the mark for pawn services since 1993, so has priority as to those services | Dollar: earlier 1984 use for loan financing (and an incontestable registration) gives priority, because pawn services are a form of loan financing | Reversed TTAB: Brittex has priority for pawn services; TTAB erred in treating Dollar’s earlier loan‑financing rights as defeating Brittex’s facial priority for expressly listed pawn services; remanded |
| Whether pawn services are "covered/encompassed" by "loan financing" | Brittex: pawn services include both lending and retail sale of collateral, so not fully encompassed by generic "loan financing" | Dollar: pawn services are a species of loan financing, so covered by its prior registration | Held for Brittex: TTAB’s factual/conceptual finding that pawn services are wholly encompassed by loan financing was unsupported and legally insufficient to strip Brittex’s priority |
| Use of Dollar’s earlier incontestable registration to defeat new registrations | Brittex: the validity/rights of a prior registration do not automatically determine validity of later, separately applied-for registrations covering expressly listed services | Dollar: the incontestable loan‑financing registration establishes exclusive rights that preclude Brittex’s damage and defeat cancellation (Morehouse defense) | Court: TTAB improperly relied on the earlier registration to decide priority; but affirmed striking of Morehouse defense because the 2014 registrations cover additional services (e.g., prepaid cards, monetary exchange) not in the 2007 registration |
Key Cases Cited
- Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317 (Fed. Cir. 2014) (registration is prima facie evidence of exclusive rights for specified goods/services)
- In re Cordua Restaurants, Inc., 823 F.3d 594 (Fed. Cir. 2016) (presumption of validity of an earlier registration does not automatically govern a distinct later application)
- Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881 (C.C.P.A. 1969) (equitable Morehouse defense: no added damage from issuance of a second registration for same mark/goods)
- O-M Bread, Inc. v. U.S. Olympic Committee, 65 F.3d 933 (Fed. Cir. 1995) (explaining Morehouse and "legal equivalents" requirement)
- Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985) (treating incontestability and scope of registrations under Lanham Act principles)