Cancelled TOUCH MOBILE Registration Cannot Carry a New Application Past MOBILE TOUCH

A prior registration can be a valuable fact in a likelihood-of-confusion dispute. A cancelled registration, however, is not a renewable ticket to the same result.

In In re TextNow Inc., the Trademark Trial and Appeal Board affirmed a partial refusal to register TOUCH MOBILE for telecommunications goods and services. The closest cited mark was MOBILE TOUCH for wireless messaging services. TextNow’s principal response was that it previously owned a federal registration for the identical TOUCH MOBILE mark covering identical goods and services, and that the prior registration had coexisted with the cited registration for years.

The Board found that history insufficient. TextNow’s prior registration was cancelled after it failed to file the required Section 8 declaration of use or excusable nonuse. It had issued under Section 44(e) based on a Canadian registration, without proof that the mark was ever used in U.S. commerce. Coexistence on the federal register therefore did not establish coexistence in the marketplace—and the cancelled registration no longer carried the statutory presumptions that once accompanied it.

The New Application and the Cited Marks

TextNow sought registration of TOUCH MOBILE for numerous telecommunications devices, accessories, software, and wireless communications services. The examining attorney cited five registrations, including MOBILE TOUCH for text and numeric wireless messaging and broadcast text-message transmission services.

The Board focused on MOBILE TOUCH because it was the closest mark. If confusion was likely with that registration, there was no need to analyze the remaining cited marks.

TextNow devoted most of its appeal to its earlier TOUCH MOBILE registration. That registration issued in October 2017 under Section 44(e), based on a Canadian registration. It was cancelled by operation of law at the end of its sixth year because TextNow did not file the required declaration of use or excusable nonuse, even during the grace period.

Why Strategic Partners Did Not Apply

TextNow relied on In re Strategic Partners, Inc., a narrow decision in which an applicant’s existing prior registration helped overcome a new likelihood-of-confusion refusal.

The Board emphasized the features that made Strategic Partners unusual. The prior registration there remained alive during the appeal, had existed for more than five years, and was no longer vulnerable to cancellation by the cited registrant on ordinary priority and likelihood-of-confusion grounds. Those circumstances made the applicant’s established registration a meaningful marketplace and registration fact.

TextNow’s situation was materially different. Its prior registration was dead. Cancellation eliminated the Section 7(b) presumptions and required registrability to be evaluated anew on the current record. The registration was not alive at the time of the Board’s consideration and, because no Section 8 filing was made, its effective cancellation date preceded the filing of the new application by two days.

The Board also stressed that maintenance was within TextNow’s control. The company did not explain why it failed to file the declaration required to preserve the registration.

Register Coexistence Was Not Marketplace Coexistence

TextNow argued that TOUCH MOBILE and MOBILE TOUCH had appeared together on the register for approximately six years. The Board found that fact had limited significance because the prior TOUCH MOBILE registration issued under Section 44(e).

Section 44(e) permits a qualifying foreign owner to obtain a U.S. registration based on its home-country registration without first proving U.S. use. After registration, however, the owner must satisfy the same maintenance-use requirements that apply to other registrants.

TextNow did not file the Section 8 declaration when U.S. use had to be established. The current application also relied on intent-to-use and foreign-registration bases rather than existing U.S. use. The record contained no evidence that TextNow had used TOUCH MOBILE in the U.S. marketplace.

Against that background, the coexistence was “illusory” as a marketplace fact. Two entries may remain on the register without consumers ever encountering both marks in commerce. The register alone does not prove an absence of actual confusion or demonstrate that consumers learned to distinguish the sources.

Res Judicata Was No Help

TextNow separately argued that the prior registration created a form of claim preclusion or res judicata. The Board rejected that theory because an examining attorney’s allowance of an application is not a final judgment from a prior adjudication.

Res judicata ordinarily requires a final judgment on the merits involving the same parties or their privies and the same claim. A routine ex parte examination does not supply that judgment. Prior adjudications for this purpose include Board or reviewing-court decisions, not a different examining attorney’s approval on a different record.

The Board summarized the point plainly: there is no rule that a prior registration entitles its owner to another registration.

TOUCH MOBILE and MOBILE TOUCH Were Highly Similar

On the ordinary DuPont factors, the refusal was strong.

TOUCH MOBILE is a transposition of MOBILE TOUCH. Both marks contain the same two words, and reversing their order did not materially alter their meaning or commercial impression. In the context of mobile devices and messaging, both suggest a mobile “touch” or the ability to stay in touch while moving.

The Board found the marks highly similar in appearance, sound, connotation, and commercial impression. That factor weighed heavily for confusion.

The Goods and Services Overlapped

TextNow’s Class 38 identification included electronic transmission of text and information and wireless data services for mobile devices. Those broad services encompassed the cited registration’s text and numeric wireless messaging services, making them legally identical in part.

The Class 9 goods included cellular and mobile telephones—the devices through which the cited messaging services are provided. The Board therefore found the goods closely related to the registered services.

Because the legally identical services contained no trade-channel restrictions, the Board presumed they would reach the same purchasers through the same channels. The related phones and messaging services likewise had overlapping consumers and trade channels.

A Small Number of Registrations Did Not Show a Crowded Field

TextNow argued that MOBILE and TOUCH appeared in several registrations and that the cited mark should receive a narrow scope of protection. The Board agreed that MOBILE was descriptive in this context and noted that it was disclaimed in both marks.

But the record did not show that MOBILE TOUCH as a whole was weak. TextNow submitted no evidence of marketplace use by numerous third parties, and the cited registrations represented only two sources. That was far short of the evidence ordinarily required to establish a crowded field.

The Indefinite Identification Was an Independent Problem

The examining attorney also required clarification of portions of the Class 9 and Class 38 identifications. TextNow did not substantively dispute indefiniteness. Instead, it declined to amend because it wanted the wording to remain identical to the wording in its prior registration, strengthening its prior-registration and res judicata arguments.

That strategy failed twice. Earlier acceptance of wording does not bind the USPTO forever; identification standards and examining policies may change. And once the Board decided the appeal, the application would not ordinarily be reopened simply to give the applicant another opportunity to accept the proposed amendments.

The Board therefore affirmed the indefiniteness refusal as an additional, independently sufficient ground.

Practical Takeaways

Calendar Section 8 maintenance as a substantive right, not clerical housekeeping

Failure to maintain a registration can erase presumptions and strategic advantages that may be impossible to recreate through a replacement application.

Foreign-registration owners must prepare for the U.S. use deadline

Section 44(e) postpones the need to prove U.S. use; it does not eliminate it. Owners should develop and preserve U.S. use evidence before the sixth-year maintenance window closes.

Do not confuse register coexistence with market coexistence

A useful coexistence argument normally requires evidence that both marks were actually present in the relevant marketplace and that consumers encountered them without confusion.

Treat Strategic Partners as an exception

The decision is fact-specific and most persuasive when the earlier registration remains valid, has substantial legal maturity, and creates a genuine inconsistency that the Board must account for.

Resolve identification issues during examination

Refusing a permissible amendment to preserve a litigation theory can leave an application with an avoidable independent refusal and no later opportunity to fix it.

The Bottom Line

TextNow’s prior TOUCH MOBILE registration showed that the mark had once been approved. It did not show that TextNow had used the mark in U.S. commerce, that consumers had distinguished it from MOBILE TOUCH, or that the earlier examining decision bound the Board.

With the prior registration cancelled, the case returned to the present record. That record showed transposed marks, overlapping telecommunications services, related mobile devices, and common trade channels. The Board affirmed the likelihood-of-confusion refusal—and the indefinite identification provided a separate reason Classes 9 and 38 could not proceed.