In a non-precedential disposition, the US Court of Appeals for the Federal Circuit has reversed the TTAB’s priority determination, which was the sole basis for its denial of Brittex’s petition to cancel two trademark registrations owned by Dollar Financial (Brittex Financial Inc v Dollar Financial Group Inc, 2021 US Appeals LEXIS 34961 Federal Circuit 24 November 2021). The Federal Circuit then remanded the case to the TTAB for further proceedings.

In March 2013, Dollar Financial filed two applications to register MONEY MART for several listed services, including “pawn brokerage and pawn shops”. Dollar Financial had begun offering pawn brokerage and pawn shop services to the public the previous year, having taken steps to do so in 2010. Both applications eventually issued on the Principal Register. In 2015, Brittex Financial filed a petition to cancel both 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. It argued that its use of MONEY MART for pawn brokerage and pawn shop services preceded Dollar Financial’s use.

The TTAB denied the petition to cancel. It found that Dollar Financial had started using MONEY MART in connection with certainservices in 1984 that fit under the labels “loan financing, check cashing, and electronic funds transfer services”. The board also found that it owned an earlier registration for MONEY MART for use with “loan financing” services. In addressing priority, the board found that, as between the two parties, Brittex was the first to offer pawn brokerage and pawn shop services starting in 1993, whereas Dollar Financial was offering “loan financing, check cashing, and electronic funds transfer services” as early as 1984. However, the board construed “loan financing” in an earlier trademark registration owned by Dollar Financial “as encompassing all services that fall within the broad specification, including pawn services”. Because Brittex did not provide its pawn services until 1993, well after Dollar Financial began providing its loan financing services in 1984, the board found that Brittex had failed to establish priority and denied the petition without reaching any other issues.

On appeal to the Federal Circuit, Brittex challenged the board’s determination that it lacked priority for purposes of the Section 2(d) analysis. In rejecting the board’s conclusion on priority, the Federal Circuit found that the board provided no support for the notion that a registrant has priority as to a 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.

The court held that the board offered no authority for its priority decision where “the service the registrant was second to offer (here “pawn brokerage and pawn shops”) is expressly listed separately from the category of services (here “loan financing”) the registrant was first to offer”. It also faulted the board for invoking Dollar Financial’s earlier registration, with its expressed description “loan financing” because the case did not involve the earlier registration.

The Federal Circuit found that a straightforward application of Section 2(d) to the undisputed facts supports Brittex’s argument for its priority. It held that Brittex, not Dollar Financial, was the first to use the mark in connection with pawn brokerage and pawn shop services, and that the board did not set forth any sound basis for drawing a different conclusion. Accordingly, it reversed the board’s priority determination, and therefore its denial of the petition for cancellation, and remanded to the TTAB for further proceedings consistent with its decision.

Eric Gaum

Taft Stettinius & Hollister LLP

This article first appeared in World Trademark Review. For further information please visit https://www.worldtrademarkreview.com/corporate/subscribe