“The party who first uses a mark in commerce is said to have priority over other users.” Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 419 (2015).

Under the doctrine of natural expansion, “the first user of a mark in connection with particular goods or services possesses superior rights in the mark not only as against subsequent users of the same or similar mark for the same or similar goods or services, but also as against subsequent users of the same or similar mark for any goods or services which purchasers might reasonably expect to emanate from it in the normal expansion of its business under the mark.” Mason Eng'g and Design Corp. v. Mateson Chem. Corp., 225 USPQ 956, 962 (TTAB 1985); Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1119 (TTAB 2015).

This zone of natural expansion doctrine, however, "is purely a defensive doctrine." Jackes-Evans Manufacturing Co. v. Jaybee Manufacturing Corp., 481 F.2d 1342, 1345 (CCPA 1973). 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), then 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—and defensive use of the doctrine would allow the senior user to prevent the junior user's registration of a similar mark on logically related goods. Id. But the doctrine does not give 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.; see also Am. Hygienic Lab'ys., Inc. v. Tiffany & Co., 12 USPQ2d 1979, 1989 WL 274397, at *5 (TTAB Sept. 28, 1989) (holding that an earlier registration does not establish priority for a later application when the goods or services are different). 

The Federal Circuit recently held that the zone of natural expansion doctrine cannot be used offensively to establish priority in different goods or services, especially when such use could conflict with the prior use of another. Dollar Financial Group, Inc. v. Brittex Financial, Inc., No. 23-1375, __ F.4th __ (Fed. Cir. Mar. 19. 2025). Rather, "the doctrine may only be used defensively to prevent junior users from registering similar marks on goods in a senior user's zone of natural expansion." 

Dollar has operated loan financing and check cashing businesses since the 1980s under the name MONEY MART. Dollar 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. In 2010, Dollar began “taking steps” to expand its business offerings “at certain MONEY MART retail stores” to include pawn brokerage and pawn shop services. Dollar registered two MONEY MART marks, U.S. Registration Nos. 4,524,540 and 4,532,073, listing “pawn brokerage and pawn shops” among the covered services in 2014. 

Brittex later sought to cancel Dollar's trademark registrations for the pawn-related services because Brittex had been operating pawn shops throughout Texas under the names “MONEY MART PAWN” and “MONEY MART PAWN & JEWELRY” since the 1990s. Brittex Fin., Inc. v. Dollar Fin. Grp., Inc., Cancellation No. 92060888 (TTAB Nov. 4, 2022). Brittex has never registered its mark, but it has common law rights in its use of MONEY MART (as part of its longer marks) for pawn brokerage and pawn shop services. 

The Federal Circuit held that Dollar "cannot use the zone of natural expansion doctrine offensively to defeat Brittex's intervening rights." Had Brittex attempted to register its MONEY MART mark in connection with pawn services in the 1990s, the doctrine could have been properly invoked in a defensive manner to protect Dollar's right to expand into pawn services and prevent consumers from assuming that Brittex's pawn services were associated with any of Dollar's existing services, if there was support to find that pawn services are a natural expansion of business for loan financing. But the doctrine of natural expansion may not be used offensively to establish priority because that would essentially grant Dollar 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. 

The zone of natural expansion thus only allows a senior user to prevent junior users from registering similar marks on related lines of goods, but does not confer the senior user a proactive right to register a mark.