Assistance required re UK trademark registration opposition
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Description
Experience Level: Expert
Description of legal work: I have a new retail business and have submitted a trademark application for logo word and mark within 3 classes: classes 16, 18 and 25. This was so that I could keep my ideas broad and have trademark cover for whatever I wanted to do with the business. Ten months down the line and I have decided to create a product line within class 16 only.
I have received a trademark opposition from a company selling diapers and they have a trademark in class 5. They claim there is overlap in my trademark application in classes 18 and 25. The word 'diaper' appears in a couple of the boxes that I ticked during the application e.g. 'diaper bag'.
They also claim that my logo design is similar to theirs, which is just absurd. There is no similarity at all. I guess they are just trying to cover all bases.
My question is, if I remove classes 18 and 25 from my application, should this be a sufficient response to the opposition? OR could I remove the description of goods which have anything remotely to do with the word 'diaper'.
It's quite frustrating because I called their trademark attorney to start off with, and suggested that I remove all descriptions with the word 'diaper'. They agreed it would be a suitable solution and they told me that they'd prepare the paperwork for me. Next thing you know they submitted an opposition right at the very last second possible. I have a feeling they ran out of time to send me the paperwork and they just filed an opposition instead. When I contacted them again they told me that we didn't have an official agreement and that they were only acting on their clients instructions. Hmm.
Need assistance/advice re whether my original suggestion would prevent any further opposition or further action.
Extra notes:
I have received a trademark opposition from a company selling diapers and they have a trademark in class 5. They claim there is overlap in my trademark application in classes 18 and 25. The word 'diaper' appears in a couple of the boxes that I ticked during the application e.g. 'diaper bag'.
They also claim that my logo design is similar to theirs, which is just absurd. There is no similarity at all. I guess they are just trying to cover all bases.
My question is, if I remove classes 18 and 25 from my application, should this be a sufficient response to the opposition? OR could I remove the description of goods which have anything remotely to do with the word 'diaper'.
It's quite frustrating because I called their trademark attorney to start off with, and suggested that I remove all descriptions with the word 'diaper'. They agreed it would be a suitable solution and they told me that they'd prepare the paperwork for me. Next thing you know they submitted an opposition right at the very last second possible. I have a feeling they ran out of time to send me the paperwork and they just filed an opposition instead. When I contacted them again they told me that we didn't have an official agreement and that they were only acting on their clients instructions. Hmm.
Need assistance/advice re whether my original suggestion would prevent any further opposition or further action.
Extra notes:
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100% (74)Projects Completed
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17 Jan 2024
Netherlands
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