Precedential No. 3: Ownership of Lapsed Registration No Justification for New Application for Same Mark and Good/Services

Foreign owners of registrations based on Section 44 or 66 should pay close attention to this decision. The Board affirmed a Section 2(d) refusal of the mark TOUCH MOBILE for telecommunications equipment and telecommunications services  [MOBILE disclaimed], concluding that confusion is likely with the registered mark MOBILE TOUCH for "Text and numeric wireless digital messaging services; Broadcast communication services, namely, transmitting text messages to designated recipients for others." Applicant TextNow owned a registration for TOUCH MOBILE for the same goods and services, but while the new application was pending TextNow failed to file its Section 8 Declaration. The cited registration had issued prior to the lapsed registration, but the Board ruled that their coexistence was irrelevant to the examination of the new application. In re TextNow Inc., Serial No. 98231457 (June 23, 2026) [precedential] (Opinion by Judge Jessica B. Bradley).

TextNow's prior registration issued on October 17, 2017 under Section 44(e) of the Trademark Act. That registration was cancelled by operation of law as of the end of the sixth anniversary of the registration date, October 17, 2023, for failure to file a Declaration of Use and/or Excusable Nonuse Under Section 8 of the Act. TextNow filed its new application on October 19, 2023, during the prior registration's grace period.

TextNow contended that ownership of its cancelled registration, which (it claimed) remained in force at the time its new application was filed, was relevant to the registrability of its identical mark of the new application, specifically under the doctrine of res judicata and pursuant to the Board's Strategic Partners decision. The Board disagreed.

The Board distinguished this case from Strategic Partners because there, the prior registration was still in force when the new application was filed, and the prior registration was more than five years old and could not be challenged on the ground of likelihood of confusion. Moreover, in Strategic Partnersthe mark of the prior registration had been in actual use, whereas here it appeared that TextNow's mark had never been used. Thus, TextNow's mark and the cited mark had never co-existed in the marketplace.

Simply put, co-existence of marks on the trademark register does not equate to co-existence in the marketplace, and the notion of “co-existence” of these marks specifically in the marketplace is illusory where the Prior Registration and current application are both based on Section 44(e), not use in commerce.

The Board concluded that the six years of co-existence between TextNow's lapsed registration and the cite registration "holds less weight than that in Strategic Partners."

TextNow asserted that the examining attorney "would presumably have determined that the mark TOUCH MOBILE is registrable if the Examining Attorney had had a shorter backlog of applications to review and had therefore considered [Applicant’s] application just five (5) months after its filing date rather than about 7-1/2 months after its filing date [i.e., before Applicant’s Prior Registration was cancelled]." The Board was unmoved.

Applicant had already missed the October 17, 2023 deadline to file a Section 8 Declaration to maintain its Prior Registration, and subsequently failed to file a Section 8 Declaration by the April 17, 2024 grace period deadline. As a result, the current application did not overlap with the term of the Prior Registration. While the timing is unfortunate for Applicant, the maintenance of its Prior Registration was entirely within its control.

As for TextNow's res judicata argument, the Board pointed out that re judicata does not apply in the prosecution context, and "there is no rule that a prior registration entitles [an applicant] to another registration." In re Country Oven, Inc., 2019 TTAB LEXIS 381, at *23 (TTAB 2019).

Turning to the Section 2(d) refusal, the Board found the involved marks to be "highly similar and this weighs heavily in our analysis." The goods and services are in-part identical or closely related, and the trade channels and classes of consumers are presumed identical or overlapping. The factors regarding the strength or weakness of the cited registration and TextNow's prior registration (factor 13) were deemed neutral

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Foreign owners of non-used based U.S. registrations may want to file new applications earlier than later when they know their marks have not been used in the U.S., so that examination of the new application will occur before the prior registration lapses.

Text Copyright John L. Welch 2026.