Three Trademark Decisions You Should Not Have Missed This June

The Trademark Trial and Appeal Board had a productive June. Three decisions, two precedential, one not, touched on issues that come up constantly in trademark prosecution: what happens when a prior registration lapses, whether a celebrity's nickname can block your application, and what exactly counts as an adequate specimen when your product runs on software. None of them broke new doctrinal ground in a dramatic way, but each one illustrates a trap that catches practitioners off guard more often than it should.

Lesson One: Maintaining Your Registration Is Not Optional — In re TextNow Inc.

TextNow owned a U.S. trademark registration for TOUCH MOBILE, covering telecommunications equipment and services. The registration had issued in 2017 under Section 44(e) of the Lanham Act — meaning it was based on a foreign registration, not actual use in U.S. commerce. TextNow filed a new application for the same mark and the same goods in October 2023. Then it let the old registration die. It failed to file the required Section 8 Declaration of Use by the six-year anniversary date, and the registration was cancelled by operation of law.

The problem: there was already a registration on the books for MOBILE TOUCH, covering wireless messaging and broadcast communication services. The examining attorney issued a Section 2(d) refusal based on likelihood of confusion with that mark. TextNow argued that TOUCH MOBILE and MOBILE TOUCH had coexisted on the trademark register for years without anyone complaining, and that this history of coexistence should count for something.

The Board was not persuaded. (In re TextNow Inc., Serial No. 98231457 (TTAB June 23, 2026) [precedential].)

The coexistence argument TextNow was reaching for has a name: the Strategic Partners doctrine. In Strategic Partners, the TTAB had held that a prior registration more than five years old — one that had become incontestable and could no longer be challenged on likelihood of confusion grounds — could support the registrability of a new application for the same mark. The idea is that if the marks have coexisted long enough that the prior registration is beyond challenge, the applicant has built up some equitable claim to continue using the mark.

But Strategic Partners has real requirements, and TextNow met none of them. First, the doctrine requires the prior registration to still be in force when the new application is examined. TextNow's registration was cancelled. Second, it requires actual coexistence in the marketplace — that the two marks were both in use and consumers had already sorted them out. TextNow's registration was based on Section 44(e), not use in U.S. commerce, and as the Board put it, "coexistence of marks on the trademark register does not equate to coexistence in the marketplace." If neither mark was ever used, there is nothing for consumers to sort out.

TextNow also tried a res judicata argument — essentially, the USPTO had issued the TOUCH MOBILE registration once, so it should issue it again. The Board dispatched this quickly: res judicata does not apply in the prosecution context. A prior registration is not a judgment. There is no rule that having received a registration once entitles an applicant to another one.

The Board also had little patience for TextNow's timing argument — the suggestion that if the examiner had only acted five months sooner, before the grace period expired, the application would have been approved. The Board's response was blunt: the maintenance deadline was entirely within TextNow's control. The company had missed the six-year deadline and then missed the grace period deadline. That outcome was not the USPTO's problem.

The takeaway is straightforward, but it is one that foreign brand owners running Section 44 registrations should hear clearly: if your U.S. registration is not backed by actual use in commerce, you are one missed maintenance deadline away from losing your priority position entirely. If you know you are not using the mark in the U.S. and you need to file a new application, file it while the prior registration is still alive — because once it lapses, you lose everything that registration represented.

Lesson Two: You Cannot Trademark a Famous Person's Nickname — In re Wemby Corporation

This one probably did not surprise many people, but it is worth laying out because the legal framework matters for anyone doing clearance on marks that touch celebrity culture.

Victor Wembanyama, "Wemby" to basketball fans, was the first overall pick in the 2023 NBA Draft and quickly became one of the most recognizable athletes in the sport. Someone filed a trademark application for WEMBY for athletic apparel. The applicant argued, among other things, that because it filed the application in January 2023. This was before Wembanyama was drafted and before he was particularly famous in the United States. It should be treated as the prior user of the name.

The Board rejected the application on two separate grounds. (In re Wemby Corporation, Serial No. 97752244 (TTAB June 24, 2026).)

The first is Section 2(a), which bars registration of matter that falsely suggests a connection with a person. The test has four elements: the mark must be the same as or a close approximation of the name or identity previously used by another person; it must point uniquely and unmistakably to that person; the person must not be connected with the applicant's activities; and the person's fame must be such that consumers would presume a connection when they see the mark on the applicant's goods.

The applicant's constructive first use argument did not help it on the "previously used" element. Section 2(a)'s prior use question is not a trademark priority question. It asks whether the name was previously used to identify the person — not whether the applicant commercially adopted the name first. The record showed that "Wemby" was in wide circulation as Wembanyama's nickname well before the application was filed, driven by pre-draft media coverage of his extraordinary potential. The application filing date was irrelevant to that inquiry.

The Federal Circuit had confirmed in In re Foster, 136 F.4th 1090 (Fed. Cir. 2025), that post-filing evidence can be considered in evaluating a Section 2(a) refusal. So the Board was entitled to look at everything that had happened since January 2023 (including Wembanyama's rookie season, his Nike shoe deal, and his growing international celebrity) in assessing whether the fourth element (fame) was satisfied. It was.

The Section 2(c) refusal was equally straightforward. Section 2(c) bars registration of a name identifying a particular living individual without that person's written consent. A nickname qualifies as a "name" for this purpose when it points uniquely to the individual. "Wemby" does. The applicant had no written consent from Wembanyama, and the Board found that both of the alternative tests for Section 2(c) were satisfied: he was so well known that consumers would assume a connection, and he was publicly connected with athletic apparel through his sponsorship deals.

The takeaway is that constructive use dates do not function as a shield against Section 2(a) and 2(c) refusals the way they might in a likelihood of confusion fight. If you are clearing a mark that happens to match a celebrity's name, nickname, or common identifier, check when that identifier was first publicly associated with the person — not when you filed your application. And if you need that person's consent, get it before you file, not after the refusal issues.

Lesson Three: A User Manual Can Be a Specimen — In re Stinger Equipment, Inc.

This one is the most practically useful of the three for day-to-day prosecution work.

Stinger Equipment makes agricultural machines (aerators, seeders, spreaders) and it applied to register the mark ONETOUCH for those goods. The examining attorney refused the specimens as inadequate, concluding that the ONETOUCH mark was being used in connection with a downloadable software application rather than the physical equipment itself. Stinger's specimens were a user manual for the machine's calibration system and a physical ONETOUCH calibration kit, each bearing the mark.

The Board reversed. (In re Stinger Equipment, Inc., Serial No. 97662066 (TTAB June 24, 2026).)

The key issue was whether the specimens showed the mark in use with the goods, the agricultural machines, or only with separate software. Stinger's position was that ONETOUCH did not identify a standalone app. It identified an integral operating and calibration system without which the machines could not be operated as designed. The app and the physical calibration kit were not separate products sold alongside the equipment; they were part of the equipment.

The Board accepted that framing. It noted that in evaluating specimens, it considers not just what the specimen itself shows, but also any explanation the applicant offers about the nature and context of the mark's use, as long as that explanation is consistent with what the specimen actually shows. Here, the user manual and calibration kit, read in light of Stinger's explanation, made clear that ONETOUCH identified something integral to the agricultural machines, not a distinct software product. The fact that the mark could theoretically also serve as a source identifier for downloadable software did not undercut its use as a mark for the physical goods.

The takeaway for practitioners working with technology-integrated products is to think carefully about how the mark relates to the goods before you file. If your client's mark identifies an operating system, control interface, or calibration system that ships with the physical product and is necessary for the product to function, the user-facing documentation for that system, manuals, calibration kits, setup guides, can be adequate specimens, provided you pair them with a clear explanation of the integral relationship. The examiner's instinct to characterize any software-adjacent mark as a specimen for "downloadable software" is not always correct, and Stinger gives you a roadmap for pushing back.

The Common Thread

These three decisions do not share a single doctrine, but they share a common theme: details matter in trademark prosecution, and overlooking them tends to be expensive.

TextNow let a registration lapse and lost years of coexistence value in the process. The Wemby applicant appears to have assumed that a filing date would insulate it from a connection that was obvious to anyone paying attention to basketball. Stinger's examiner drew an overly rigid line between software and goods that the Board correctly erased.

In each case, the underlying principle was not particularly complicated. The execution (or its failure) is where practitioners can make a real difference for their clients.

Jonathan L.A. Phillips is a trademark and intellectual property attorney at Brown, Hay & Stephens. You can contact him at jphillips@bhslaw.com or 309 643 6518. The views in this blog article are his, not those of his Firm.