A lapsed registration's years beside a cited mark do not help the refiling

An applicant's earlier registration of the same mark helps against a §2(d) citation only while that registration is alive. Once it is cancelled, the new application is examined on the facts as they stand when registration is sought, and the old registration's years beside the cited mark do not count under the thirteenth DuPont factor. Where both the old registration and the new application rest on a foreign registration under §44(e) and nothing shows use in the United States, that register coexistence says nothing about the marketplace. The decision narrows In re Strategic Partners (TTAB 2012) to its stated conditions, applies In re Ginc UK (TTAB 2007) and In re Chippendales (Fed. Cir. 2010), and adds Board precedent to the existing rule that an examining attorney's allowance does not bind later examination.

The rule: coexistence counts only through a live registration

Strategic Partners requires a registration in force. The Board read Strategic Partners as resting on three facts: the applicant's prior registration was in effect at the time of the appeal, had been registered for over five years, and was not open to attack on a claim of priority and likelihood of confusion (slip op. at 8–9). If none of those facts exists when the new application is examined, the exception does not apply. Cancellation "destroys the Section 7(b) presumptions" and makes registrability "a new ball game" (at 9, quoting Ginc). A cancelled registration has no probative value beyond showing that it once issued (at 11–12, citing Made in Nature).

Timing is fixed by law, not by docket. The right to register is judged on the facts when registration is sought, and that period runs through examination and appeal (at 10 & n.24). It does not matter that an earlier first action might have found the old registration still on the register. Without a Section 8 declaration, a registration is cancelled as of the end of its sixth year, whatever the grace period and whenever the USPTO records the cancellation (at 6 n.13, 10 n.22). Filing during the grace period does not preserve the benefit if no declaration is ever filed (at 13).

Register coexistence is not marketplace coexistence. A §44(e) registration needs no use to issue but must show use under Section 8 to survive (at 12). Where the prior registration was §44(e)-based and cancelled for want of a use declaration, the new application is also §44(e)-based, and the record shows no US use, the Board found no "meaningful co-existence" with the cited mark; on those facts marketplace coexistence "is illusory" (at 13–14).

No preclusion from an allowance. Res judicata and issue preclusion require a prior adjudication. An examining attorney's allowance is not one, and B&B Hardware does not change that for ex parte examination (at 15–16, citing In re Cordua). "[T]here is no rule that a prior registration entitles [an applicant] to another registration" (at 16, quoting In re Country Oven). The same holds for identifications: acceptance of wording in an earlier registration does not make it acceptable now (at 28 n.44).

Limits. The holding is tied to a record with no explanation for the lapse and no evidence of use. The Board contrasted In re Allegiance Staffing (TTAB 2015), where the applicant explained an inadvertent lapse, refiled within two weeks, and both the old registration and the new application were use-based (at 12 n.28). The opinion does not decide how much weight a cancelled use-based registration's coexistence would carry on such a record.

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What it changes

The following is the editors' view, not part of the decision.

• Section 8 is the line. For §44(e) and §66(a) registrations, the sixth-year declaration is the point at which a coexistence history either survives or disappears. Docket it from the US registration date, not from the home-country registration.
• A refiling is a new examination. Counsel for a lapsed registrant should expect citations the old registration avoided and should not plan on res judicata or prior-allowance arguments. A refiling backed by US use, with the lapse explained, is the posture Allegiance Staffing describes; a §44(e) refiling with no use is the posture this case rejects.
• Comply with identification requirements. Keeping the old wording to preserve a preclusion argument gains nothing and can lose classes outright, because a decided appeal is not reopened to amend (at 29 n.45).

The case

TextNow owned Registration No. 5308993 for TOUCH MOBILE, issued under §44(e) in October 2017 on a Canadian registration. No Section 8 declaration was filed, and the registration was cancelled as of its sixth anniversary, October 17, 2023 (at 6). TextNow refiled for the same mark and the same Class 9 and 38 goods and services on October 19, 2023, under §§1(b) and 44(e) (at 2 n.1, 6). The examining attorney cited five registrations; the Board considered only MOBILE TOUCH for text messaging services (at 2–5). TOUCH MOBILE is "a mere transposition" with the same meaning (at 20–22); the Class 38 services are legally identical in part and the Class 9 phones are used to provide the cited services (at 23–24). Two owners of TOUCH-formative marks did not show a crowded field (at 19). The Board also affirmed the indefiniteness requirement, which TextNow did not contest on the merits, and the application proceeds only in Classes 16, 41 and 42 (at 26–29).

Data angle

Register counts need filtering by basis. The Board cited Made in Nature for the point that third-party registrations issued under §44(e), without use and registered for less than five years, "lack probative value" on conceptual strength (at 13–14 n.29). A crowded-field argument or clearance model that does not separate use-based from non-use-based records overstates what consumers actually encounter.