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 service that is a species of a genus that covers both specific services.
The Trademark Trial and Appeal Board’s priority determination, which formed the sole basis for its denial of a petition by Brittex Financial, Inc. (Brittex) to cancel two trademark registrations for pawn brokerage and pawn shops by Dollar Financial Group, Inc. (Dollar), was reversed and remanded by the Federal Circuit. According to the court, a straightforward application of Section 2(d) of the Lanham Act to the facts before the court supported Brittex’s argument for its priority. In the two applications at issue, filed in 2013, Dollar sought to register MONEY MART for use in connection with, among other things, pawn brokerage and pawn shop services. Brittex, not Dollar, was the first to use that mark in connection with pawn brokerage and pawn shop services, said the court, and 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 (Brittex Financial, Inc. v. Dollar Financial Group, Inc., November 24, 2021, Taranto, R.).
Case date: 24 November 2021
Case number: No. 21-1370
Court: United States Court of Appeals, Federal Circuit
A full summary of this case has been published on Kluwer IP Law.