Dollar Financial Group, Inc. v. Brittex Financial, Inc.

United States Court of Appeals
for the Federal Circuit
______________________
DOLLAR FINANCIAL GROUP, INC.,
Appellant
v.
BRITTEX FINANCIAL, INC.,
Appellee
______________________
2023-1375
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
92060888.
______________________
Decided: March 19, 2025
______________________
BRYCE J. MAYNARD, Buchanan Ingersoll & Rooney PC,
Alexandria, VA, argued for appellant. Also represented by
BASSAM I BRAHIM , L AURA P ITTS .
ROBERT L. MCR AE, Gunn, Lee & Cave, PC, San Anto-
nio, TX, argued for appellee. Also represented by J ULIE P.
BELL , N ICHOLAS ADAM G UINN.
______________________
Before P ROST , T ARANTO, and HUGHES , Circuit Judges.
HUGHES , Circuit Judge.
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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 2
Dollar Financial Group, Inc. appeals a decision of the
Trademark Trial and Appeal Board granting in part and
denying in part Brittex Financial, Inc.’s petition for cancel-
lation of two trademark registrations. Because the Board
correctly determined that DFG may not rely on the zone of
natural expansion doctrine to establish priority and that
there was a likelihood of confusion with respect to DFG’s
recited pawn brokerage and pawn shop services, we affirm.
I
DFG has operated loan financing and check cashing
businesses since the 1980s under the name MONEY
MART. DFG owns two trademarks for the use of the
MONEY MART mark in connection with these businesses
and alleges a first use of these marks in 1984.1 In 2010,
DFG began “taking steps” to expand its business offerings
“at certain MONEY MART retail stores” to include pawn
brokerage and pawn shop services. Appellant’s Br. 3. DFG
began using the mark in commerce in connection with
these services in 2012. J.A. 13.
In 2013, DFG registered two marks, U.S. Registration
Nos. 4,524,540 and 4,532,073. Brittex Fin., Inc. v. Dollar
Fin. Grp., Inc., Cancellation No. 92060888 (T.T.A.B.
Nov. 4, 2022); J.A. 1–2, 63 nn.1–2. These Registrations
listed “pawn brokerage and pawn shops” among the cov-
ered services. The ’540 Registration covers the standard
1 DFG’s two registered trademarks are U.S. Regis-
tration No. 3,206,120 (“MONEY MART” mark used in con-
nection with “loan financing”) and U.S. Registration
No. 2,244,158 (“MONEY MART” mark used in connection
with “check cashing and electronic funds transfer services,
but not including extensions of credit except to the extent
evidenced by a check”). J.A. 3391–92 (’120 Registration)
(capitalized in original); J.A. 3450–51 (’158 Registration)
(capitalized in original).
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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 3
characters “MONEY MART,” and the ’073 Registration co-
vers a design mark featuring the same text. The applica-
tions were registered in 2014.
Brittex petitioned to cancel the Registrations on sev-
eral grounds, including that the Registrations were im-
properly issued in violation of Lanham Act § 2(d), see
J.A. 2, 538, which bars registration on the Principal Regis-
ter 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 mistake, or to deceive.” 15 U.S.C. § 1052(d). Since
the 1990s, Brittex Financial, Inc. or its predecessor in in-
terest, Pawn Management, Inc., (collectively, Brittex) has
operated pawn shops throughout Texas under the names
“MONEY MART PAWN” and “MONEY MART PAWN &
JEWELRY.” Brittex has never registered its mark, but it
has common law rights in the mark. Brittex argued to the
Board that its use of MONEY MART (as part of its longer
marks) for pawn brokerage and pawn shop services had
priority over DFG’s use and that DFG’s use of the MONEY
MART marks would likely cause confusion.
The Board denied the petition to cancel. Brittex Fin.,
Inc. v. Dollar Fin. Grp., Inc., Cancellation No. 92060888
(T.T.A.B. Sep. 30, 2020); J.A. 82. The Board concluded that
DFG had priority to the MONEY MART mark because it
had used the mark in connection with loan financing ser-
vices since the 1980s, and loan financing services encom-
passpawn services. J.A. 102–03. Because Brittex did not
provide pawn services until 1993, the Board concluded that
Brittex failed to establish priority and could not prevail in
its cancellation petition.
Brittex appealed, and we reversed the denial of the pe-
tition and remanded for further proceedings. Brittex Fin.,
Inc. v. Dollar Fin. Grp., Inc., Nos. 2021-1370, 2021-1449,
2021 WL 5504880 at *6 (Fed. Cir. Nov. 24, 2021). We
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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 4
concluded that the Board’s reasoning for rejecting Brittex’s
priority argument was erroneous because “[t]he evidence
makes clear that pawn brokerage and pawn shop services
integrate two different components, only one of which can
be labeled ‘loan financing’—the lending, but not the retail
sale of collateral.” Id. at *4. Therefore, to the extent the
Board found that pawn services are covered by loan financ-
ing services, that finding was unsupported by substantial
evidence. We reversed and remanded because “the Board’s
basis for rejecting Brittex’s priority . . . [could not] stand.”
Id.
On remand, the Board held that Brittex had priority
because it was “clearly the first to offer pawn brokerage
and pawn shop services under [its] mark[]” because Brittex
had been using the mark MONEY MART PAWN or
MONEY MART PAWN & JEWELRY in connection with
pawn services since 1993, while DFG had only used the
MONEY MART mark in connection with pawn brokerage
and pawn store services since 2012. J.A. 12–13. The Board
also concluded that DFG could not rely on the zone of nat-
ural expansion doctrine to claim priority because the doc-
trine is purely defensive. The Board then determined that
the relevant DuPont factors, which are used to assess the
likelihood of confusion between two trademarks, heavily fa-
vored a finding of likelihood of confusion because the marks
are highly similar and because the “parties’ pawn services
are overlapping and move through normal trade channels
to the same classes of consumers.” J.A. 32–33. The Board
accordingly partially granted the petition for cancellation
and required “[p]awn brokerage and pawn shops” be de-
leted from Registration Nos. 4,524,540 and 4,532,073.
J.A. 41.
DFG appeals the Board’s partial grant of the petition
for cancellation. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B).
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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 5
II
“We review the [B]oard’s legal conclusions de novo, and
its findings of fact for substantial evidence.” M2 Software,
Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382 (Fed. Cir.
2006) (quoting Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d
1238, 1240 (Fed. Cir. 2004)). Substantial evidence is “such
relevant evidence as a reasonable mind might accept as ad-
equate to support a conclusion.” Consol. Edison Co. of N.Y.
v. NLRB, 305 U.S. 197, 229 (1938).
“The Board’s determination of priority is a question of
fact reviewed for substantial evidence.” Araujo v. Fram-
boise Holdings Inc., 99 F.4th 1377, 1380 (Fed. Cir. 2024).
“Likelihood of confusion is a question of law, based on find-
ings of relevant underlying facts, namely findings under
the DuPont factors”; we review the DuPont factors for sub-
stantial evidence. M2 Software, 450 F.3d at 1381; Bose
Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1370
(Fed. Cir. 2002).
III
On appeal, DFG asserts that the Board improperly un-
derstood our decision in Brittex to conclusively resolve the
issue of priority. DFG also argues the Board erred in refus-
ing to allow DFG to rely on the zone of natural expansion
doctrine or, alternatively, to invoke the doctrine of tacking.
DFG further argues that the Board’s conclusion that there
was a likelihood of confusion between the marks was erro-
neous. We address each issue in turn.
A
To make a proper § 2(d) claim, Brittex must show that
it has priority in its “MONEY MART PAWN” or “MONEY
MART PAWN & JEWELRY” mark for pawn services and
that DFG’s registered marks are confusingly similar to
Brittex’s mark. 15 U.S.C. § 1052(d); J.A. 12. “The party
who first uses a mark in commerce is said to have priority
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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 6
over other users.” Hana Fin., Inc. v. Hana Bank, 574 U.S.
418, 419 (2015).
1
DFG argues that the Board erred by overreading our
decision in Brittex as “holding that Brittex was entitled to
priority, rather than merely finding that the Board had
erred in relying upon DFG’s [prior registration] to establish
priority.” Appellant’s Br. 13. But the Board did not hold
that Brittex conclusively established that Brittex had pri-
ority. The Board instead concluded that Brittex was the
first to use the “MONEY MART” mark in connection with
pawn services, which is undisputed. The Board then con-
sidered and addressed DFG’s zone of natural expansion ar-
gument, which would not have been necessary if the Board
had read Brittex as conclusively settling the issue of prior-
ity. Therefore, the Board did not err in its application of
Brittex on remand.
2
We next address the zone of natural expansion doc-
trine. On appeal, DFG argues that it should be able to in-
voke the zone of natural expansion doctrine to establish
priority. Appellant’s Br. 15–34.
DFG owns two trademarks for MONEY MART in con-
nection with loan financing and check cashing. Brittex has
common law rights in its MONEY MART PAWN and
MONEY MART PAWN & JEWELRY marks in connection
with pawn shops. DFG sought to register MONEY MART
in connection with pawn brokerage and pawn shops, which
Brittex petitioned to cancel because of its intervening com-
mon law rights. J.A. 1–2. DFG argues that pawn services
are a natural zone of expansion from loan financing ser-
vices, and because DFG had used MONEY MART marks in
connection with loan financing services since the 1980s,
DFG should have been allowed to rely on the doctrine to
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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 7
establish priority for pawn brokerage services despite Brit-
tex’s intervening common law rights.
Under the doctrine of natural expansion,
the first user of a mark in connection with
particular goods or services possesses supe-
rior rights in the mark as against subsequent
users of the same or similar mark for any
goods or services which purchasers might rea-
sonably expect to emanate from it in the nor-
mal expansion of its business under the mark.
Orange Bang, Inc. v. Ole Mexican Foods, Inc.,
116 U.S.P.Q.2d 1102, 2015 WL 5675641, at *19 (T.T.A.B.
Sept. 10, 2015) (precedential). We considered the applica-
bility of this doctrine in Jackes-Evans Manufacturing Co.
v. Jaybee Manufacturing Corp., 481 F.2d 1342, 1345
(C.C.P.A. 1973). There, we held “that the ‘expansion of
business’ doctrine is purely a defensive doctrine.” Id. We
then explained the policy underlying the defensive use of
the doctrine. If a consumer is familiar with a user’s mark
that has been established on a particular line of goods (i.e.,
the senior user with regard to that line of goods), and that
consumer sees a similar mark on a logically related line of
goods from another user (i.e., the junior user with regard
to the original line of goods), the consumer might naturally
attribute the junior user’s goods to the senior user because
the logically related goods would seem to be a natural “zone
of expansion” for the senior user’s goods. Defensive use of
the doctrine would allow the senior user to prevent the jun-
ior user’s registration of a similar mark on logically related
goods. Id. But the doctrine does not give the senior user
offensive use, which would be the “right to register [a] mark
on an expanded line of goods where the use of the mark
covered by such registration would lead to a likelihood of
confusion, mistake or deception.” Id. The zone of natural
expansion thus only allows a senior user to prevent junior
users from registering similar marks on related lines of
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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 8
goods but does not confer the senior user a proactive right
to register a mark.
The Board has previously relied on the proposition that
an earlier registration does not establish priority for a later
application when the goods or services are different. See,
e.g., Am. Hygienic Lab’ys., Inc. v. Tiffany & Co.,
12 U.S.P.Q.2d 1979, 1989 WL 274397, at *5 (T.T.A.B.
Sept. 28, 1989) (“While applicant has rights in the mark
TIFFANY for a wide variety of items such as jewelry, sil-
ver, china, etc., the question in this proceeding is which
party has prior rights as a result of use of the mark in con-
nection with cosmetics and toiletry products. That is to say,
while there is no doubt that applicant has priority of use of
its marks on a wide array of products (jewelry, crystal,
china, etc.), we do not believe that this use may be relied
on to establish priority with respect to the specific cosmetic
and toiletry products in its application.”). We agree. The
zone of natural expansion cannot be used to establish pri-
ority in different goods or services, especially when such
use could conflict with the prior use of another. We decline
to expand the scope of the zone of natural expansion doc-
trine and affirm that the doctrine may only be used defen-
sively to prevent junior users from registering similar
marks on goods in a senior user’s zone of natural expan-
sion.
Under this precedent, DFG cannot use the zone of nat-
ural expansion doctrine offensively to defeat Brittex’s in-
tervening rights. DFG could have properly invoked the
zone of natural expansion in a defensive manner had Brit-
tex attempted to register its MONEY MART mark in con-
nection with pawn services in the 1990s and DFG opposed
that registration. In that scenario, DFG could assert the
doctrine defensively to protect its right to expand into
pawn services and prevent consumers from assuming that
Brittex’s pawn services were associated with any of DFG’s
existing services, if subsequent analysis supported finding
that pawn services are a natural expansion of business for
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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 9
loan financing. But the doctrine may not be used offen-
sively to establish priority in the manner DFG suggests be-
cause that would essentially grant DFG the right to
register its mark on a line of expanded goods, even though
it would likely cause confusion with Brittex’s established
common law rights.
Because we conclude that DFG cannot rely upon the
zone of natural expansion in an offensive manner to estab-
lish priority, we need not decide whether loan financing
and pawn shop services are sufficiently similar or whether
a supplier of loan financing would naturally expand into
pawn shop services.
3
We next turn to DFG’s argument that the Board should
have alternatively analyzed the doctrine of tacking after
the Board concluded the zone of natural expansion doctrine
was not available to DFG. The doctrine of tacking allows a
trademark user to make “certain modifications” to its mark
and still rely on “the priority position of an older mark.”
Bertini v. Apple Inc., 63 F.4th 1373, 1377 (Fed. Cir. 2023).
We allow tacking because otherwise “a trademark owner’s
priority in his mark would be reduced each time he made
the slightest alteration to the mark, which would discour-
age him from altering the mark in response to changing
consumer preferences, evolving aesthetic developments, or
new advertising and marketing styles.” Brookfield
Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1048
(9th Cir. 1999). Tacking is applicable where the two marks
“‘create the same, continuing commercial impression’ so
that consumers ‘consider both as the same mark[,]’” Ber-
tini, 63 F.4th at 1377 (quoting Hana Fin., 574 U.S. at 422),
and where the “new and old goods or services [are] ‘sub-
stantially identical.’” Id. at 1380–81. “Goods and services
are substantially identical for purposes of tacking where
the new goods or services are within the normal evolution
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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 10
of the previous line of goods or services,” but they need not
be completely identical. Id. at 1381.
DFG argues that the Board should have considered the
doctrine of tacking when analyzing DFG’s priority claim.
But DFG did not make a tacking argument before the
Board and instead raised the argument for the first time
on appeal. DFG argues that it impliedly asserted a tacking
defense when it argued that pawn and loan financing ser-
vices were “substantially identical” in its trial brief. Appel-
lant’s Reply Br. 13–14. But the language DFG refers to was
quoting a prior ruling of the Board and did not invoke tack-
ing. See J.A. 5860. As a result, the Board never considered
tacking because DFG neither briefed nor clearly pled this
argument during the cancellation proceeding. We therefore
conclude that DFG’s tacking argument is forfeited because
it was raised for the first time on appeal. See Hylete LLC v.
Hybrid Athletics, LLC, 931 F.3d 1170, 1174 (Fed. Cir.
2019) (“Generally, federal appellate courts do not consider
issues ‘not passed upon below’ or entertain arguments not
presented to the lower tribunal.” (quoting Golden Bridge
Tech., Inc. v. Nokia, Inc., 527 F.3d 1318, 1322 (Fed. Cir.
2008))).
B
DFG argues that the Board’s finding of likelihood of
confusion was erroneous. Likelihood of confusion is ana-
lyzed using the multi-factor test set forth in In re E.I.
DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).
The Board need not consider every DuPont factor, only
those “that are relevant and of record.” M2 Software,
450 F.3d at 1382. The parties dispute only five of the
DuPont factors. They are:
(1) The similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connota-
tion and commercial impression. . . .
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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 11
(5) The fame of the prior mark (sales, advertising,
length of use). . . .
(9) The variety of goods on which a mark is or is not
used (house mark, “family” mark, product
mark). . . .
(11) The extent to which applicant has a right to
exclude others from use of its mark on its goods. . . .
(13) Any other established fact probative of the ef-
fect of use.
DuPont, 476 F.2d at 1361.
1
First, we address the fame or strength of Brittex’s
mark. The fifth DuPont factor considers “[t]he fame of the
prior mark (sales, advertising, length of use).” Id. “In a like-
lihood of confusion analysis, the fame or strength of a mark
is not a binary factor, but rather varies along a spectrum
from very strong to very weak.” Bureau Nat’l Interprofes-
sionnel du Cognac v. Cologne & Cognac Ent., 110 F.4th
1356, 1366 (Fed. Cir. 2024) (citing Joseph Phelps Vine-
yards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323,
1325 (Fed. Cir. 2017)). “Marks are often classified in cate-
gories of generally increasing distinctiveness . . . they may
be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary;
or (5) fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 768 (1992).
The Board concluded that Brittex’s “MONEY MART”
mark was suggestive of pawn services and that use of the
mark with “PAWN” or “PAWN & JEWELRY” did not de-
tract from the mark’s suggestiveness. J.A. 24. But the
Board agreed with DFG that the mark was not “particu-
larly strong, commercially.” J.A. 25. The Board thus found
that “MONEY MART possesses a slightly stronger than av-
erage degree of commercial strength” and concluded that
this factor was neutral in the analysis. J.A. 26.
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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 12
DFG argues that the Board’s analysis on this factor
was flawed and contends that the Board erroneously eval-
uated the strength of Brittex’s mark “on a binary scale,
where suggestive, fanciful, and arbitrary marks are all
equally ‘strong,’ and only descriptive marks are ‘weak.’”
Appellant’s Br. 46. We do not read the Board’s analysis as
evaluating strength on a binary scale, as DFG suggests,
but instead clarifying that suggestive marks are not inher-
ently “weak.” See J.A. 25 (quoting In re Great Lakes Can-
ning, Inc., 227 U.S.P.Q. 483, 1985 WL 71929, at *3
(T.T.A.B. June 28, 1985) (“[T]he fact that a mark may be
somewhat suggestive does not mean that it is a ‘weak’
mark entitled to a limited scope of protection.”)). Further,
substantial evidence supports the Board’s conclusion that,
conceptually, MONEY MART is suggestive of pawn ser-
vices and that Brittex’s evidence of advertising or the mere
fact that it had used its mark for 27 years were not suffi-
cient to increase the commercial strength of the mark.
J.A. 24–26.
2
We next address the similarity of the marks. The first
DuPont factor considers “[t]he similarity or dissimilarity of
the marks in their entireties as to appearance, sound, con-
notation and commercial impression.” DuPont, 476 F.2d
at 1361.
The Board found that DFG’s “MONEY MART word and
MONEY MART word and design marks are highly similar
to [Brittex’s] MONEY MART marks in appearance, sound,
connotation and commercial impression.” J.A. 22. Alt-
hough Brittex uses “MONEY MART PAWN” or “MONEY
MART PAWN & JEWELRY” for its stores, the Board con-
cluded that “pawn” and “jewelry” did not “add[] any source-
identifying significance” and were thus entitled to less
weight in the analysis. J.A. 21. The Board concluded that
this factor weighed heavily in favor of likelihood of confu-
sion. J.A. 22.
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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 13
DFG argues that the Board failed to give adequate
weight to the inclusion of the terms “pawn” and “jewelry”
in Brittex’s mark. DFG argues that the Board’s errors in
analyzing the strength of Brittex’s mark colored this anal-
ysis because while the addition or deletion of descriptive
terms may not be enough to distinguish commercially
strong marks, it can be sufficient when the marks are com-
mercially weak. We find no legal error in the Board’s anal-
ysis. We also agree with the Board’s finding that Brittex’s
mark has greater commercial strength than average, so the
addition of descriptive or generic terms is not enough to di-
lute the dominant portion of Brittex’s marks. See In re Nat’l
Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985) (“That a
particular feature is descriptive or generic with respect to
the involved goods or services is one commonly accepted ra-
tionale for giving less weight to a portion of a mark.”). Fur-
ther, substantial evidence supports the Board’s conclusion
that DFG’s marks are highly similar to Brittex’s marks in
appearance, sound, connotation, and commercial impres-
sion.
3
Third, we turn to the ninth DuPont factor, which con-
siders “[t]he variety of goods on which a mark is or is not
used.” DuPont, 476 F.2d at 1361. “If a party in the position
of plaintiff uses its mark on a wide variety of goods, then
purchasers are more likely to view a defendant’s related
good under a similar mark as an extension of the plaintiff’s
line.” DeVivo v. Ortiz, 2020 U.S.P.Q.2d 10153, 2020 WL
1227592, at *16 (T.T.A.B. 2020) (precedential). The Board
rejected DFG’s argument on this factor, concluding that
this factor is purely defensive and can be used “only to pre-
vent registration or use of a mark.” J.A 28. The Board
found that, as a result, this factor was neutral.
On appeal, DFG argues that the Board committed legal
error by concluding that this was a purely defensive factor.
DFG also argues the Board failed to adequately consider
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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 14
the variety of services for which DFG’s marks are used, in-
cluding “money transfer services, money exchange ser-
vices, short-term consumer loans, debit card services, and
gift card services.” Appellant’s Br. 50.
The Board did not err in its analysis. The Board cited
DeVivo, which states the rationale behind the considera-
tion of this factor: “[i]f a party in the position of plaintiff
uses its mark on a wide variety of goods [or services], then
purchasers are more likely to view a defendant’s related
good[s] [or services] under a similar mark as an extension
of the plaintiff’s line.” 2020 WL 1227592, at *16. Thus, the
correct comparison is whether Brittex’s use of the mark
would lead consumers to believe that DFG’s later use was
associated with Brittex—which is the comparison the
Board made. We see no error in the Board’s conclusion that
this factor was neutral in the overall analysis.
4
Fourth, we turn to DFG’s right to exclude. The eleventh
DuPont factor considers “[t]he extent to which applicant
has a right to exclude others from use of its mark on its
goods.” DuPont, 476 F.2d at 1361. The Board concluded
that DFG did not have a right to exclude because Brittex
“began using its MONEY MART PAWN or MONEY MART
PAWN & JEWELRY mark in 1993 and developed valuable
intervening rights in this use of its marks for pawn services
well before [DFG] commenced use of its mark on those ser-
vices in 2012.” J.A. 30–31. The Board ultimately concluded
that this factor was neutral in its analysis.
On appeal, DFG argues the Board failed to consider
this factor. Appellant’s Br. 51–52. We find DFG’s argument
unavailing. The Board did consider DFG’s potential right
to exclude and concluded that this factor was neutral due
to Brittex’s intervening rights. We find no error in the
Board’s analysis of this factor.
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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 15
5
Finally, we address the thirteenth DuPont factor,
which considers “[a]ny other established fact probative of
the effect of use.” DuPont, 476 F.2d at 1361. Before the
Board, Brittex argued that the Board should find that DFG
acted with bad faith because Brittex had sent DFG multi-
ple cease-and-desist letters, so DFG was aware of Brittex
when filing its trademark applications. The Board con-
cluded that this argument was unavailing because “mere
knowledge of a prior similar mark” is not sufficient to war-
rant a bad-faith inference. J.A. 32. The Board concluded
that this factor was neutral in its analysis. J.A. 32.
On appeal, DFG argues that the Board failed to con-
sider that DFG owns “two incontestable registrations for
the identical mark MONEY MART in connection with vir-
tually identical, or at least extremely closely related ser-
vices.” Appellant’s Br. 52. DFG relies on In re Strategic
Partners, Inc., where the Board, in considering the thir-
teenth DuPont factor, held that an applicant’s earlier un-
contestable registration for goods that included footwear
meant that its later applied-for registration with a “sub-
stantially similar” mark and “identical goods,” which also
included footwear, would not be confused with a previously
registered mark. 102 U.S.P.Q.2d 1397, 2012 WL 1267930
at *1, *3–4 (T.T.A.B. March 28, 2012) (precedential). But
the present case is factually distinguishable. There, both
registrations included footwear, but here, DFG’s prior reg-
istrations make no mention of pawn shops or pawn ser-
vices. The Board did not err in failing to consider the earlier
registrations for different services because there are not
common goods or services between DFG’s prior registra-
tions and the registration at issue. Further, the Board con-
sidered the impact of the prior registrations throughout its
analysis. See J.A. 27–31. Therefore, we do not find legal er-
ror in the Board’s analysis under the thirteenth factor.
Case: 23-1375 Document: 53 Page: 15 Filed: 03/19/2025

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DOLLAR FINANCIAL GROUP , INC. v. BRITTEX FINANCIAL , INC. 16
IV
We have considered DFG’s remaining arguments and
find them unpersuasive. Because the Board did not err
with respect to its priority analysis and because substan-
tial evidence supports the Board’s determinations for each
disputed DuPont factor, we affirm.
AFFIRMED
Case: 23-1375 Document: 53 Page: 16 Filed: 03/19/2025

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