Case: 21-1370 Document: 52 Page: 1 Filed: 11/24/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
BRITTEX FINANCIAL, INC.,
Appellant
v.
DOLLAR FINANCIAL GROUP, INC.,
Cross-Appellant
______________________
2021-1370, 2021-1449
______________________
Appeals from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
92060888.
______________________
Decided: November 24, 2021
______________________
ROBERT L. MCRAE, Gunn, Lee & Cave, PC, San Anto-
nio, TX, argued for appellant. Also represented by
NICHOLAS ADAM GUINN.
BASSAM IBRAHIM, Buchanan Ingersoll & Rooney PC, Al-
exandria, VA, argued for cross-appellant. Also represented
by BRYCE J. MAYNARD.
______________________
Before NEWMAN, PROST, and TARANTO, Circuit Judges.
Case: 21-1370 Document: 52 Page: 2 Filed: 11/24/2021
2 BRITTEX FINANCIAL, INC. v. DOLLAR FINANCIAL GROUP, INC.
TARANTO, Circuit Judge.
The Trademark Trial and Appeal Board denied a peti-
tion to cancel two trademark registrations. Brittex Finan-
cial, Inc. v. Dollar Financial Group, Inc., Cancellation No.
92060888 (TTAB Sep. 30, 2020) (Board Op.). We reverse
the Board’s priority determination, which formed the sole
basis for its denial of the petition, and remand for further
proceedings.
I
In March 2013, Dollar Financial Group filed two appli-
cations to register MONEY MART (one in standard char-
acters, one with a design) as a trademark for several listed
services, including “pawn brokerage and pawn shops.” See
Board Op. at 1–2; J.A. 88, 218. Only the year before, i.e.,
2012, had Dollar “beg[u]n offering pawn brokerage and
pawn shop services to the public,” having “beg[u]n taking
steps” to do so in 2010. Dollar Response Br. at 8–9; see
Board Op. at 12. In May 2014, the Patent and Trademark
Office (PTO) issued the requested Principal Register regis-
trations—Nos. 4,524,540 and 4,532,073—under Lanham
Act § 1(a), 15 U.S.C. § 1051(a). 1
1 Registration No. 4,524,540 is for MONEY MART
(with “MONEY” disclaimed), as a standard character
mark, for “pawn brokerage and pawn shops; providing
monetary exchange services, namely, exchanging gold and
silver of others for cash; issuing of prepaid debit cards; is-
suing of prepaid gift cards; [and] gift card transaction pro-
cessing services.” J.A. 88.
Registration No. 4,532,073 is for MONEY MART (with
“MONEY” disclaimed), consisting of “the stylized wording
‘MONEY MART’ superimposed over a circular design,” for
“loan financing; check cashing and electronic funds trans-
fer services, but not including extensions of credit except to
the extent evidenced by a check; pawn brokerage and pawn
Case: 21-1370 Document: 52 Page: 3 Filed: 11/24/2021
BRITTEX FINANCIAL, INC. v. DOLLAR FINANCIAL GROUP, INC. 3
In 2015, Brittex Financial, Inc. filed with the PTO, un-
der Lanham Act § 14, 15 U.S.C. § 1064, a petition to cancel
those Dollar registrations. Brittex had been consistently
using MONEY MART PAWN or MONEY MART PAWN &
JEWELRY in connection with its pawn brokerage and
pawn shop services since 1993. Board Op. at 13–15. Brit-
tex contended (among other things) that the registrations
were improperly issued, in violation of Lanham Act § 2(d),
which bars registration on the Principal Register of a mark
that “so resembles . . . a mark or trade name previously
used in the United States by another and not abandoned,
as to be likely, when used on or in connection with the
goods of the applicant, to cause confusion, or to cause mis-
take, or to deceive.” 15 U.S.C. § 1052(d). Brittex argued
its use of MONEY MART (as part of its slightly longer
marks) for pawn brokerage and pawn shop services pre-
ceded Dollar’s use for those services, Dollar’s use of the
mark for those services would likely cause confusion with
Brittex’s use for such services, and Brittex was likely to be
damaged as a result.
The PTO’s Trademark Trial and Appeal Board denied
the petition to cancel on September 30, 2020. Board Op. at
1, 3, 29. The record established the above-stated facts, and
the Board found certain other facts that it invoked in re-
jecting the petition for cancellation. Thus, the Board found
that Dollar had started using MONEY MART in connection
with certain services in 1984 that fit under the labels “loan
financing, check cashing, and electronic funds transfer ser-
vices.” Board Op. at 12–13; see id. at 10–13; Dollar Re-
sponse Br. at 8 (“[Dollar] primarily offers check cashing
and loan financing services, including payday lending
shops; providing monetary exchange services, namely, ex-
changing gold and silver of others for cash; issuing of pre-
paid debit cards; issuing of prepaid gift cards; [and] gift
card transaction processing services.” J.A. 218.
Case: 21-1370 Document: 52 Page: 4 Filed: 11/24/2021
4 BRITTEX FINANCIAL, INC. v. DOLLAR FINANCIAL GROUP, INC.
services, at its MONEY MART stores. . . . Payday lending
services are a form of loan financing . . . .” (citing J.A. 2317,
2322–23)). The Board also found that Dollar owned an ear-
lier registration, namely, Registration No. 3,206,120 for
MONEY MART for use with “loan financing” services (no
other services specified) and that the ’120 registration—is-
sued in February 2007 based on an April 2006 application
that asserted 1984 as a date of first use, J.A. 1977—is now
“incontestable and unchallenged in this proceeding.”
Board Op. at 23; see generally Lanham Act §§ 15, 33, 15
U.S.C. §§ 1065, 1115; Park ‘N Fly, Inc. v. Dollar Park &
Fly, Inc.,
469 U.S. 189 (1985); In re Cordua Rests., Inc.,
823
F.3d 594, 599–600 (Fed. Cir. 2016). 2
The Board recognized that “there are two elements of
[Brittex’s] § 2(d) claim, i.e., that [Brittex] has priority, and
2 Earlier in the Board proceedings, Dollar, invoking
the ’120 registration, presented a defense to the petition to
cancel based on Morehouse Mfg. Corp. v. J. Strickland &
Co.,
407 F.2d 881 (CCPA 1969). See also O-M Bread, Inc.
v. U.S. Olympic Committee,
65 F.3d 933, 938 (Fed. Cir.
1995). Dollar asserted that, in light of Dollar’s incontesta-
ble, unchallenged ’120 registration for “loan financing,”
Brittex could not be injured by the two 2014 registrations
now at issue, because pawn brokerage and pawn shop ser-
vices were within the “loan financing” services for which
the ’120 registration gave Dollar exclusive rights. See J.A.
50–51, 509. On January 17, 2018, the Board struck that
defense. J.A. 44, 49–55. The Board concluded that Brittex
separately alleged injury from likely confusion as to non-
pawn services listed in the 2014 registrations (which cov-
ered, e.g., exchanging gold and silver of others for cash and
prepaid debit or gift cards)—services that Dollar had not
asserted, and the Board did not find, come within the ’120
registration even if pawn brokerage and pawn shop ser-
vices do. J.A. 52–55.
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BRITTEX FINANCIAL, INC. v. DOLLAR FINANCIAL GROUP, INC. 5
that a likelihood of confusion exists.” Board Op. at 10. The
Board proceeded to address priority. It first made the find-
ings that, as between Brittex and Dollar, Brittex was the
first to offer pawn brokerage and pawn shop services (start-
ing in 1993), whereas Dollar was offering “loan financing,
check cashing, and electronic funds transfer services” as
early as 1984.
Id. at 10–15; see
id. at 15 (“[Dollar] does not
dispute that [Brittex] was the first party to use the term
MONEY MART expressly in connection with pawn ser-
vices.”). The Board then stated: “If we find that pawn bro-
kerage and pawn shop services are covered or encompassed
by loan financing, then we must resolve the issue of priority
in [Dollar’s] favor.”
Id. at 17. “If we do not,” the Board
added, it would consider whether pawn brokerage and
pawn shop “services are within [Dollar’s] zone of natural
expansion.”
Id.
The Board did not reach the natural-expansion issue
(or the likely-confusion issue) because it found that pawn
brokerage and pawn shop services are “covered or encom-
passed by loan financing.” The Board recited evidence that
clearly establishes the fact that pawn brokerage and pawn
shop services have two features: one is the making of col-
lateralized loans; the second is the retail sale of the collat-
eral when forfeited under the terms of the loan.
Id. at 17–
23. The Board then reached its conclusion by introducing
Dollar’s ’120 registration of MONEY MART for “loan fi-
nancing” (from 2007) into the analysis, noting its incontest-
able and unchallenged character:
That registration grants [Dollar] the exclusive
right to use that mark in connection with those ser-
vices. Stone Lion Capital Partners, L.P. v. Lion
Capital LLP,
746 F.3d 1317[, 1324], 110 USPQ2d
1157, 1162 (Fed. Cir. 2014); see also 15 U.S.C.
§ 1057(b) (the registration is prima facie evidence
of the registrant’s exclusive right to use the mark
“in connection with the goods or services specified
in the certificate”). As such, we construe [Dollar’s]
Case: 21-1370 Document: 52 Page: 6 Filed: 11/24/2021
6 BRITTEX FINANCIAL, INC. v. DOLLAR FINANCIAL GROUP, INC.
“loan financing” in that registration as encompass-
ing all services that fall within that broad specifi-
cation, including pawn services, See Sw. Mgmt.,
Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025[,
2015 WL 4464550, at *17] (TTAB 2015) (Where ser-
vices are identified broadly, “we must presume that
the services encompass all services of the type iden-
tified.”) quoted in In re Country Oven, Inc., 2019
USPQ2d 443903, *4[,
2019 WL 6170483, at *2]
(TTAB 2019) and cited in In re AC Webconnecting
Holding B.V., 2020 USPQ2d 11048, *11-12[,
2020
WL 5544272, at *13] (TTAB 2020).
Consequently, since [Brittex] did not provide
its pawn services until 1993, well after [Dollar] be-
gan providing its loan financing services in 1984,
[Brittex] has failed to establish priority through its
common law rights in the mark MONEY MART
PAWN or MONEY MART PAWN & JEWELRY
and thus cannot prevail in its petition to cancel
[Dollar’s] registrations on grounds of priority and
likelihood of confusion.
Board Op. at 23–24. The Board then rejected Brittex’s
claim of fraud on Dollar’s part, which was the then-remain-
ing ground for the petition to cancel, and is not at issue on
appeal.
Id. at 24–29.
Brittex timely appealed. Dollar timely cross-appealed
the dismissal of its Morehouse defense. We have jurisdic-
tion under 28 U.S.C. § 1295(a)(4)(B).
II
We decide de novo whether the Board’s rulings rest on
legal errors, and we review the Board’s factual findings for
support in substantial evidence, which is “such relevant ev-
idence as a reasonable mind might accept as adequate to
support a conclusion.” In re N. Carolina Lottery,
866 F.3d
1363, 1366 (Fed. Cir. 2017).
Case: 21-1370 Document: 52 Page: 7 Filed: 11/24/2021
BRITTEX FINANCIAL, INC. v. DOLLAR FINANCIAL GROUP, INC. 7
A
Brittex challenges the Board’s determination that it
lacked priority for purposes of the § 2(d) analysis. We
agree that the Board’s conclusion regarding priority cannot
stand.
A straightforward application of § 2(d) to the facts be-
fore us—which are undisputed insofar as they matter for
present purposes—supports Brittex’s argument for its pri-
ority. In the two applications at issue, filed in 2013, Dollar
seeks to register MONEY MART for use in connection with,
among other things, “pawn brokerage and pawn shop ser-
vices.” The Board did not deny, and we may presume, that
such use by Dollar would likely cause confusion because of
Brittex’s own use of that two-word phrase as a prominent
part of its own offering of pawn brokerage and pawn shop
services. Brittex, not Dollar, was the first to use that mark
in connection with pawn brokerage and pawn shop ser-
vices. In short, Dollar seeks to use a mark that “so resem-
bles . . . a mark or trade name previously used in the United
States by another and not abandoned,” as to be likely to
cause confusion, respecting specific services expressly
listed in the registrations. Lanham Act § 2(d), 15 U.S.C.
§ 1052(d). “It is sufficient in an inter partes case if likeli-
hood of confusion is found as to use of the mark on any item
that comes with the description of goods or services in the
application or registration.” 3 J. McCarthy on Trademarks
and Unfair Competition § 20:15 (5th ed. 2021) (hereinafter
McCarthy).
The Board set forth no sound basis for drawing a dif-
ferent conclusion. The evidence readily showed, of course,
that one part of pawn brokerage and pawn shop services is
one kind of “loan financing.” But the Board did not cite any
authority, or offer legal support, for using that fact to strip
Brittex of its facial priority.
Even as a general matter, the Board provided no sup-
port for the notion that a registrant has priority as to a
Case: 21-1370 Document: 52 Page: 8 Filed: 11/24/2021
8 BRITTEX FINANCIAL, INC. v. DOLLAR FINANCIAL GROUP, INC.
specific service it was second to offer just because it was
first to offer a different specific service that is a species of
a genus that covers both specific services. Here, such au-
thority or other sound basis in law would be necessary to
give Dollar priority over even the collateralized lending as-
pect of pawn services (as to which Brittex was first) just
because Dollar was first in offering certain other forms of
lending, even if both can be described under the label, “loan
financing.” Even more specifically, the Board did not offer
authority or a sound legal basis for drawing its priority con-
clusion where, as is true of one of the registrations at issue
here, the service the registrant was second to offer (here
“pawn brokerage and pawn shops”) is expressly listed sep-
arately from the category of services (here “loan financing”)
the registrant was first to offer.
More specifically still, the Board provided no support
for its priority conclusion in the distinctive circumstance
present here. The evidence makes clear that pawn broker-
age and pawn shop services integrate two different compo-
nents, only one of which can be labeled “loan financing”—
the lending, but not the retail sale of collateral. If the
Board is understood to have found as a factual matter that
the entirety of this mixed-character business is “covered or
encompassed by loan financing,” Board Op. at 17, that find-
ing is unreasonable and therefore unsupported by substan-
tial evidence.
The Board invoked Dollar’s ’120 registration, with its
express description “loan financing,” to fill the gap between
its findings and the ultimate conclusion it reached. See id.
at 23–24. But the Board set forth no basis on which that
registration supplies an answer to the question presented
in this case—which is whether two different, later registra-
tions of Dollar’s are invalid under § 2(d) because they ex-
pressly cover services as to which Brittex, not Dollar, was
first to use the mark being registered (or one so resembling
it so that confusion is likely).
Case: 21-1370 Document: 52 Page: 9 Filed: 11/24/2021
BRITTEX FINANCIAL, INC. v. DOLLAR FINANCIAL GROUP, INC. 9
This case does not involve infringement of the trade-
mark registered in the ’120 registration or the validity of
that registration (including the role of incontestability),
both of which would present distinct questions about that
registration’s scope. 3 Nor does this case involve any appli-
cation for registration by Brittex being opposed by Dollar
based on the ’120 registration (or a Brittex registration
sought to be cancelled on that basis). Putting aside the
Board-rejected Morehouse defense (discussed infra), Dollar
has not shown, and the Board did not explain, how the
analysis of the validity of Dollar’s ’540 and ’073 registra-
tions is properly affected by Dollar’s ’120 registration. Cf.
In re Cordua, 823 F.3d at 600 (noting that “this proceeding
does not involve a challenge to” an earlier registration and
explaining that “[t]he presumption of validity of 15 U.S.C.
§ 1057(b) does not carry over from registration of the older
mark to a new application for registration of another mark
that happens to be similar (or even nearly identical). See,
e.g., In re Shinnecock Smoke Shop,
571 F.3d 1171, 1174
(Fed. Cir. 2009) (‘Applicant’s allegations regarding similar
marks are irrelevant because each application must be con-
sidered on its own merits.’)”). And as to priority dates in
particular, the Board here did not conclude, much less jus-
tify any conclusion, that the ’120 registration—which is-
sued in 2007 on a 2006 application that asserts a first use
of 1984—establishes as a matter of law that Dollar has pri-
ority back to 1984 for every service that comes within the
3 The Stone Lion decision and the three Board deci-
sions cited by the Board in its paragraph invoking the ’120
registration all involved questions of the validity of a par-
ticular registration, assessed based on what goods or ser-
vices that registration declared covered. The Board did not
point to anything in those decisions that addressed use of
a trademark owner’s not-at-issue registration to affect the
analysis of the validity of a new registration by the same
owner.
Case: 21-1370 Document: 52 Page: 10 Filed: 11/24/2021
10 BRITTEX FINANCIAL, INC. v. DOLLAR FINANCIAL GROUP, INC.
broad category “loan financing.” Cf. 2 McCarthy § 16:19 &
nn. 4–5 (noting limited significance of registration’s asser-
tion of date of first use, citing 37 C.F.R. § 2.122(b)(2)).
For those reasons, the Board’s basis for rejecting Brit-
tex’s priority under § 2(d) cannot stand. Given that we next
affirm the Board’s rejection of the Morehouse defense, we
must reverse the denial of the petition and remand.
B
In its cross-appeal, Dollar challenges the Board’s strik-
ing of Dollar’s Morehouse defense. See note 2, supra. We
reject the challenge.
The Morehouse defense “is an equitable defense, to the
effect that if the opposer can not be further injured because
there already exists an injurious registration, the opposer
can not object to an additional registration that does not
add to the injury.” O-M Bread,
65 F.3d at 938. In More-
house, this court’s predecessor explained, in the opposition
context of Lanham Act § 13, 15 U.S.C. § 1063, that
as a matter of law, the opposer cannot be damaged,
within the meaning of section 13 of the statute, by
the issuance to the applicant of a second registra-
tion where applicant already has an existing regis-
tration of the same mark for the same goods.
Implicit in this are the corollaries that if opposer
cannot procure the cancellation of the existing reg-
istration it cannot prevent the granting of the sec-
ond registration; that there is no added damage
from the second registration of the same mark if
the goods named in it are in fact the same; and that
if there is no added damage, there is no ground for
sustaining the opposition.
407 F.2d at 884. We review the Board’s decision for abuse
of discretion. Teledyne Techs., Inc. v. W. Skyways, Inc.,
208
Fed. Appx. 886, 890 (Fed. Cir. 2006). A showing of abuse
of discretion requires showing that the decision rests on
Case: 21-1370 Document: 52 Page: 11 Filed: 11/24/2021
BRITTEX FINANCIAL, INC. v. DOLLAR FINANCIAL GROUP, INC. 11
legal error or insufficiently supported factual findings or an
unreasonable judgment in weighing relevant factor. See
Highmark Inc. v. Allcare Health Mgmt. Sys., Inc.,
572 U.S.
559, 563 n.2 (2014); Bernard v. Dep’t of Agriculture,
788
F.3d 1365, 1367 (Fed. Cir. 2015).
Dollar’s challenge to the Board’s striking of its More-
house defense rests on the premise that all uses covered by
the two 2014 registrations from which Brittex claims in-
jury are already covered by the ’120 registration, which is
limited to “loan financing.” The Board committed no abuse
in rejecting that premise. It reasonably construed Brittex’s
petition as claiming injury from the new registrations’ cov-
erage of all the listed services, not just pawn brokerage and
pawn shop services. J.A. 54 (discussing J.A. 499–500).
And it noted that, as to a number of such non-pawn services
(“‘monetary exchange services, namely, exchanging gold
and silver of others for cash; issuing of prepaid debit cards;
issuing of prepaid gift cards; gift card transaction pro-
cessing services’”), Dollar “has not asserted, and we do not
find, that these additional services are encompassed within
or are substantially identical to those in the prior registra-
tion.” J.A. 53.
That is enough to reject Dollar’s cross-appeal chal-
lenge. The Morehouse defense, we have said, “require[s]
that the prior and proposed marks be essentially the
same,” i.e., “legal equivalents.” O-M Bread,
65 F.3d at 938,
939. The Board reasonably determined that Brittex chal-
lenged the registrations at issue for, among other things,
services related to, e.g., prepaid debit cards, gift cards, and
gold and silver, that are not “essentially the same” as loan
financing services.
Id. Although the Board struck the de-
fense sua sponte, Dollar has shown no prejudicial error
from that process given the substantive inapplicability of
the Morehouse defense.
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12 BRITTEX FINANCIAL, INC. v. DOLLAR FINANCIAL GROUP, INC.
III
For the forgoing reasons, we reverse the Board’s prior-
ity determination (and therefore its denial of the petition
for cancellation) and remand for further proceedings con-
sistent with this opinion.
The parties shall bear their own costs.
REVERSED AND REMANDED
