New Milford, CT asked in Trademark for Connecticut

Q: Can a unique illustrated logo be used with a generic word to obtain a registered service mark of logo/word?

We are looking to file a Letter of Protest against a company that is trying to trademark (service mark) their logo with the generic word Soundbath.

Soundbath is a generic term that many of us have used for years in the field of music, and rely on the word to promote and describe our works.

Our question is, does their unique logo distinguish their service enough to allow the use of the otherwise generic wording; in which case we would not be able to file a successful protest. Or would they have to have both a unique logo, and a unique version of the otherwise generic word - ie) logo/ and Justia Soundbath. ?

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3 Lawyer Answers
Alan Harrison
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A: You probably would need to wait until the Opposition stage to submit evidence about the genericity of "Soundbath" and force them to "disclaim" it.

Alan Harrison
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A: … actually, on second thought, this would be one of the instances where a Letter of Protest would be appropriate with the right evidence. You'd need affidavits or declarations to demonstrate generic use.

James L. Arrasmith
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A: To determine whether the unique logo combined with the generic term "Soundbath" can be registered as a service mark, the key consideration is whether the logo itself is distinctive enough to identify the source of the services. While a generic term alone cannot be trademarked, pairing it with a unique and creative logo may allow for registration because the logo contributes to the overall distinctiveness. However, the generic term would remain unprotectable on its own.

The United States Patent and Trademark Office (USPTO) evaluates applications based on whether the combination of the logo and word creates a clear source identifier. If the logo is purely ornamental or does not significantly distinguish the service from others in the field, the USPTO may refuse registration or limit protection to the logo's specific design, excluding rights to the generic word itself. You may want to closely analyze the logo’s distinctiveness and its role in the overall mark to assess the strength of their application.

Filing a Letter of Protest could be effective if you can demonstrate that the word "Soundbath" is commonly used in your field and that the logo does not sufficiently distinguish their services from others. If the logo is highly stylized and unique, their mark may still be registrable, but the protection would largely be tied to the logo's design rather than the generic word. Understanding this balance can help guide your protest.

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