Non-U.S. Trademark Registrants Beware!

A non-U.S. party can obtain a U.S. trademark or service mark registration based on a home country registration and without use of the mark in the U.S. However, a Declaration of Use or Excusable Nonuse must be filed in the U.S. within six years after the date of registration plus a 6-month grace period. If that Declaration is not filed, that U.S. registration will be cancelled and given no further effect after the end of the six-year period.

Allowing such a U.S. registration to lapse can have an unfortunate consequence, as demonstrated in a precedential decision of the Trademark Trial and Appeal Board (TTAB). In re TextNow Inc., Application No. 98231457 (T.T.A.B. June 23, 2026).

A Canadian company named TextNow Inc. (Applicant) obtained a U.S. registration of the mark TOUCH MOBILE for telecommunications and wireless digital messaging goods and services based on its Canadian registration, without any claim of U.S. use. That registration (the Prior Registration) was cancelled after six years, for failure to file a Declaration of Use or Excusable Nonuse. 

While the Prior Registration was still subsisting, but after Applicant had missed the filing deadline for its Declaration of Use or Excusable Nonuse, Applicant reapplied in the U.S. to register the identical mark for the identical goods and services. The Examining Attorney refused registration, on the ground that the mark TOUCH MOBILE was likely to be confused with a cited third-party registration for MOBILE TOUCH, which had been registered while the Prior Registration was in effect, covering services in part legally identical to Applicant’s services (the Cited Registration).

Applicant appealed to the TTAB, which affirmed the refusal.

Applicant argued that its Prior Registration weighed against a likelihood of confusion, relying on In re Strategic Partners, Inc., Application No. 77903451 (T.T.A.B. 2012). In that case, the prior registrant prevailed because its U.S. registration was over five years old and thus it could not be attacked by the cited registrant on grounds of priority or likelihood of confusion. The TTAB found that none of the determinative facts in Strategic Partners were present at the time the new MOBILE TOUCH application was examined.

Here, even though the two registrations had co-existed, the Prior Registration had lapsed and as such was not entitled to any weight. Additionally, the TTAB said, “Simply put, co-existence of marks on the trademark register does not equate to co-existence in the marketplace”, an illusory notion where the Prior Registration and current application were each based on non-U.S. registrations, and not on use in U.S. commerce.

Applicant also argued that the Prior Registration was equivalent to a final judgment, barring reconsideration of the likelihood of confusion issue. The TTAB rejected this argument and stated, “Bottom line, ‘there is no rule that a prior registration entitles [an applicant] to another registration.’”

A further argument by Applicant was that the Cited Registration mark was weak in trademark significance, because it had been simultaneously registered to Applicant. However, there was no evidence of any commercial strength for either mark. Moreover, the Cited Registration did not have a claim of acquired distinctiveness, so it was entitled to the normal scope of conceptual strength for inherently distinctive marks. 

TOUCH MOBILE is a mere transposition of the Cited Mark MOBILE TOUCH. The marks conveyed the same meaning, covered legally identical services at least in part, as well as covering goods closely related to those services, and were presumed to overlap in trade channels and classes of consumers in the absence of any restrictions in the application or Cited Registration.

Accordingly, the TTAB gave no effect to the lapsed Prior Registration, affirming the finding of a likelihood of confusion with the Cited Registration.

Author’s Note:

If you are a non-U.S. company obtaining a U.S. registration based on your non-U. S registration, you should take care to make use of your mark in U.S. commerce so that you can timely file the required Declaration of Use, to prevent against cancellation of your U.S. registration.

If that is not possible, either file a Declaration of Excusable Nonuse, or file a new U.S. application in plenty of time for it to be examined and advance to registration, before your prior registration lapses. That should block an intervening registration.

Otherwise, you risk losing any rights for your mark in the U.S. if a third party should use or register a confusingly similar mark before you seek to replace your lapsed U.S. registration.