The trademark application of “SEIKO” in Class 41by our client Seiko Holdings Kabushiki Kaisha (Seiko Holdings) was rejected by citing a prior trademark “SEIKA S & device” (cited mark) of a third party in 2013. Through Internet search, we think it was quite possible that the cited mark had not been in use. To overcome that obstacle, we advised the client to file a cancellation against the cited mark on the conflicting goods for a try.

In 2014, the Trademark Office made the non-use cancellation decision in which the Office admitted the effectiveness of the evidence submitted by the cited mark owner and maintained its registration. We further advised the client to appeal the case. In the appeal, we submitted a thorough argument against the evidence, based on a careful study of the time the evidence formed, the relevance between the designated services of the trademark and those operated by the registrant in practice, whether the use was commercial use, etc. The Trademark Review and Adjudication Board (TRAB) made the decision in May 2015 and decided the evidence was ineffective and the cited mark was cancelled on the conflicting services, which finally cleared the obstacle for the client’s registration.