Prior Peaceful Co-Existence on Register Not Enough to Allow Re-Registration of Trademark

Need to know

In a precedential decision, the TTAB held that a trademark applicant could not rely on the benefit of a prior registration to defeat a likelihood of confusion refusal because the applicant had never proved that the prior registration had been in use in commerce.

In a precedential decision, the U.S. Trademark Trial and Appeal Board (TTAB) denied TextNow, Inc.’s, application for TOUCH MOBILE for phones and wireless messaging services. In re TextNow, Inc., Ser. No. 98231457, Jun. 23, 2026). The decision addresses the question of when, if ever, a trademark owner can rely on the benefits of registration during the grace period for filing a declaration of use, even if no declaration of use is filed.

TextNow owned a registration for TOUCH MOBILE issued on October 17, 2017. It did not file the mandatory declaration of use to maintain the registration by the October 17, 2023, deadline, but instead filed a new application on October 19, 2023. The six-month grace period for filing the declaration of use for its registration expired on April 17, 2024, and on May 3, 2024, the U.S. Patent and Trademark Office updated its record to show that the prior registration had been cancelled by operation of law as of October 18, 2023. On June 30, 2024, the examining attorney at the Trademark Office issued an initial refusal of the new application based in part on a registration issued in 2012 to Dealer Product Services, Inc., for MOBILE TOUCH.  

TextNow argued that its ownership of the prior registration, which was in the grace period and had not been formally cancelled by the Trademark Office at the time the new application was filed, entitled it to registration of TOUCH MOBILE for the same goods and services. The TTAB ruled against TextNow for four main reasons.

First, the TTAB noted that the prior registration was deemed cancelled prior to the filing date of the new application due to the unexplained failure to file the declaration of use, and such cancellation “destroys” the presumptions of validity of the registered mark and makes the question of registrability “a new ball game.” TextNow stressed that its prior registration was in existence for at least six years with the MOBILE TOUCH registration, but the TTAB found it significant that the prior registration was based on ownership of a Canadian registration and, therefore, TextNow never had to prove use of the mark in U.S. commerce. TextNow did not provide any explanation for its failure to file a declaration of use, and its new application, like the one before it, was based on an intent-to-use the mark and ownership of a foreign registration.  

According to the TTAB, the “most reasonable conclusion” was that that mark was never used in U.S. commerce. The TTAB held that was in contrast to In re Allegiance Staffing, Ser. No. 85663950, 2015 TTAB LEXIS 180 (TTAB 2015), where both (1) the applicant specifically explained that it inadvertently allowed the prior registration to lapse and attempted to correct that lapse by filing its new application within two weeks of its prior registration expiring and (2) the prior registration and new application were based on use in commerce. In the present case, the TTAB was “unable to find that there was any “meaningful co-existence” of TOUCH MOBILE and MOBILE TOUCH and that mere co-existence of marks on the trademark register does not equate to co-existence in the marketplace.

Second, the TTAB stated that while the prior registration “technically remained in force” during the six-month grace period to file the declaration of use, because no such declaration was filed, the effective cancellation date by operation of law was the sixth anniversary of the registration — not the end of the grace period. Thus, the prior registration was not in effect as of the date of the pending application. The TTAB noted that “the timing is unfortunate for Applicant, [but] the maintenance of its prior registration was entirely within its control.”

Third, the TTAB found that the cancellation of the prior registration was a “material change” and that the purpose of cancelling such registrations is to remove from the register trademarks that are not being used. Thus, contrary to TextNow’s claim that allowing its pending application to proceed to registration would “do nothing more than maintain the status quo,” allowing the new application based on ownership of a cancelled prior registration would, according to the TTAB, give TextNow “a benefit to which it is not entitled.”

Fourth, the TTAB rejected TextNow’s claim that because TOUCH MOBILE and MOBILE TOUCH were allowed to co-exist on the register that the doctrine of res judicata supports a finding of no likelihood of confusion. As the TTAB explained, res judicata requires a judgment on the merits in a prior judicial proceeding, and an examining attorney’s decision to approve an application does not meet this test.

Takeaways

In the absence of actual use of a trademark in U.S. commerce, it is not possible to file a declaration of use to maintain a registration. While filing a new application based on a bona fide intent to use the mark is permissible, trademark owners should not assume that they will be able to perpetually re-register marks that are not in use, even if there have been no new intervening rights. The old adage of “use it or lose it” remains good advice, especially considering that the decision of one examining attorney does not control that of another.