Limits of Prior Registration and Similarity of Transposed Terms Doom Application and Apeal

Overview

This is a TTAB precedent.

The decision highlights several important strategies and warnings for trademark practitioners. First, it underscores that the mere existence of a prior registration does not entitle an applicant to a subsequent registration if that prior mark has lapsed. The Board clarified that the right to register must be determined based on the factual situation at the time of examination, and a cancelled registration is not entitled to statutory presumptions. Furthermore, the case demonstrates the Board's strict stance on "transposed" marks, where the order of identical terms is simply reversed, and illustrates the danger of refusing to amend indefinite identifications of goods and services in hopes of maintaining a legal argument that the Board ultimately finds unpersuasive.

Background

The Applicant, TextNow Inc., filed an application seeking registration of the mark TOUCH MOBILE for various telecommunications equipment and services in International Classes 9 and 38.

The Examining Attorney issued a partial refusal of registration for both Classes 9 and 38. The primary basis for the refusal was a likelihood of confusion with five existing registrations:

• MOBILE TOUCH (Registration No. 4224659)
• TOUCH TEL MOBILE (Registration No. 4345309)
• TOUCH TEL (Registration No. 2670762)
• TOUCH TEL PAGING (Registration No. 1686092)

• (Registration No. 2590233)

Following a final refusal and a subsequent denied request for reconsideration, the Applicant appealed to the Trademark Trial and Appeal Board.

How the Board Analyzed the DuPont Factors

The Board conducted a thorough evaluation of the relevant DuPont factors, focusing on those for which evidence and argument were presented in the record. Specifically, the Board centered its likelihood of confusion analysis on the mark MOBILE TOUCH, identifying it as the cited mark most similar to the Applicant’s mark, TOUCH MOBILE.

Notably, this entire analysis was shaped significantly by the Applicant's primary defense: its ownership of a recently cancelled prior registration for the exact same mark and goods.

DuPont #13: Applicant's own prior registration

The Applicant focused the majority of its arguments on the thirteenth DuPont factor, emphasizing that it previously owned Registration No. 5308993 for the identical mark, TOUCH MOBILE, covering identical goods and services. This prior registration, originally filed under Section 44(e) based on a foreign registration, was ultimately cancelled for failure to file a Section 8 Declaration of Use.

Relying heavily on In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) [precedential], as well as the doctrine of res judicata, the Applicant asserted that these principles support a finding of no likelihood of confusion. Specifically, the Applicant argued that the mark had co-existed on the register with the cited marks for six and a half years without issue.

Distinguishing Strategic Partners

The Board rejected the application of Strategic Partners, noting that the unique situation in that case involved a prior registration that was still active and in force at the time of the appeal, was over five years old, and was immune to attacks on priority. In contrast, the Applicant's registration here was cancelled before the current application was even examined.

The Board emphasized that:

"Cancellation destroys the Section 7(b) presumptions and makes the question of registrability ‘a new ball game’ which must be predicated on current thought."

Furthermore, the Board pointed out that maintaining the prior registration was entirely within the Applicant's control, yet no Section 8 declaration was filed, even during the six-month grace period.

Registration vs. Marketplace Co-Existence

The Board was similarly unpersuaded by the Applicant's co-existence argument. Because the prior registration was based on Section 44(e), it did not require proof of actual use in commerce to obtain registration. The Board sharply distinguished between the two environments:

"Simply put, co-existence of marks on the trademark register does not equate to co-existence in the marketplace..."

Consequently, the Board concluded that the mere co-existence of registrations on the register does not prove that the marks actively co-existed in the marketplace without causing confusion.

The Res Judicata Argument

Finally, the Board dispensed with the Applicant’s res judicata defense. It held that an Examining Attorney’s initial decision to approve an application does not constitute a final judgment or prior adjudication. Because the Applicant never obtained a final judgment from the Board or a reviewing court regarding its prior registration, the doctrine was wholly inapplicable.

The thirteenth DuPont factor was deemed neutral.

DuPont #6: Strength or Weakness of the Marks

The Board next addressed both the conceptual and commercial strength of the cited mark, MOBILE TOUCH.

The Applicant argued that the mark was commercially weak due to a "crowded field" of similar marks containing the elements "MOBILE" and "TOUCH." However, the Board found that the Applicant failed to provide evidence of actual third-party marketplace use, a critical requirement to demonstrate commercial weakness under this factor.

Regarding conceptual strength, the Board noted that because the cited mark is registered on the Principal Register without a claim of acquired distinctiveness under Section 2(f), it must be presumed inherently distinctive. While the word "MOBILE" was disclaimed and found to be descriptive, the Board determined that the record failed to show that the mark MOBILE TOUCH as a whole was conceptually weak.

The Board also clarified that:

"Two sources are not enough to show dilution of a mark..."

This directly addressed the fact that the five blocking registrations cited by the Examining Attorney were owned by only two separate entities. Consequently, the Board found the sixth DuPont factor to be neutral, according the cited mark its normal scope of protection.

DuPont #1: Similarity or Dissimilarity of the Marks

The Board evaluated the similarity of TOUCH MOBILE and MOBILE TOUCH in appearance, sound, connotation, and commercial impression, ultimately determining that the Applicant's mark was a "mere transposition" of the cited mark. As a general rule, the Board found that marks consisting of transposed identical words often create substantially the same commercial impression.

The Board agreed with the Examining Attorney that both marks conveyed the core meaning of a "touch" that is mobile. Specifically, the Applicant's goods included devices operated by touch, and both parties' services allowed users to "stay in touch" while on the move. The Board criticized the Applicant’s conclusory arguments regarding differences between the marks, noting that the Applicant failed to identify what those alleged differences actually were.

Consequently, the Board concluded that the marks are highly similar, such that this DuPont factor weighs heavily in favor of a likelihood of confusion.

DuPont #2: Similarity of the Goods and Services

In analyzing the relatedness of the goods and services, the Board compared the identifications in the application directly with those in the cited registration.

The Applicant’s Class 38 services included "electronic transmission of voice, text, images, data and information" and "wireless data services." The Board found these broad descriptions were "broad enough to encompass the Cited Registration’s more specific services of ‘text and numeric wireless digital messaging services,’" thereby rendering the services legally identical in part.

For the Class 9 goods, the Board found that devices like cellular telephones and mobile radios are the very apparatuses used to provide the cited text messaging services.

Furthermore, because the Applicant did not contest the similarity of the goods and services in its briefs, the Board concluded that this factor weighed heavily in favor of a likelihood of confusion.

DuPont #3: Trade Channels and Classes of Consumers

The Board noted that neither the application nor the cited registration contained any restrictions regarding trade channels or classes of consumers. Because the services were found to be legally identical in part, the Board applied the standard presumption that they "travel in the same channels of trade to the same class of purchasers."

Regarding the Class 9 goods, the Board found that because these goods are used to access the cited services, the trade channels and normal purchasers would naturally overlap.

Consequently, this factor further supported the finding of a likelihood of confusion.

Board’s Decision

The Board affirmed the partial refusal to register the mark TOUCH MOBILE in International Classes 9 and 38.

The Board found a clear likelihood of confusion under Section 2(d) because the marks were highly similar, the services were legally identical in part, and the goods were closely related. The Board dismissed the Applicant's reliance on its cancelled prior registration and the doctrine of res judicata. It noted that a lapsed registration carries no probative value for statutory presumptions and that an examiner's prior allowance does not constitute a final judgment.

Although the Applicant never explained why they failed to maintain the original registration, choosing instead to file a brand-new Section 1(b)/44(e) application, it is probable that they could not satisfy the actual use requirements of a Section 8 filing. They likely were not using the mark in commerce within the United States. Attempting to deploy a new foreign-basis application was a creative tactical effort to "backdoor" their way into continued federal protection, but the outcome of this appeal serves as a stark reminder that the United States remains firmly a use-based system.