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Can a company claim first use for the term "Coffee2Go" if they have been operating commerce with a name such as "Coffee2Go Bardstown" and only using this phrase made up of two words, and not just "Coffee2Go"? And is Bardstown purely descriptive if you aren't able to purchase that coffee anywhere else except Bardstown? Do people have to know where Bardstown is like they know where NYC is for it not to be descriptive?

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  • Is the company in the US or some other jurisdiction?
    – phoog
    Sep 19, 2022 at 17:28
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    It's in the United States. Two different states and regions.
    – Tiphani Davis
    Sep 19, 2022 at 17:46

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A trademark/servicemark is a brand name for kind of goods associated with a particular trademark owner, in the case of goods, or a kind of services associated with a particular servicemark owner, in the case of services, that is used in commerce (or will be in the imminent future) and has a "secondary meaning" that is associated only with the mark owner when identified with the goods or services in question. Generally speaking, trademarks and servicemarks should not be merely descriptive (e.g. Denver liquor for a liquor store in Denver).

A trade name is the proper name of a business, sometimes an entity, and sometimes a name that sole proprietor operates under (in the narrow sense, it refers only to trade names other than the true legal proper name of the business or sole proprietor). It may be descriptive and is subject to more lenient qualification. It doesn't have to have secondary meaning, and it doesn't have to be actively used in commerce. It merely has to not be a duplicate of another trade name which is already taken under the law of the applicable state of organization of the business or entity.

"Coffee2Go" and "Coffee2Go Bardstown" are both probably too descriptive to be trademarks or service marks (absent a limitation of the trademark to a distinctive logo or stylistic script), but could be a trade name if no one else is using them in the state.

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  • If a company claims first in use for a servicemark, do they have to use the whole phrase they have been using in commerce or only part? The company Coffee2Go Bardstown have used the tradename for everything in commerce & advertising. But applied for a servicemark with the word 'Coffee2Go'. They are now claiming first-in-use of the word 'Coffee2Go', but I was wondering if they could claim that legally and if so, is it because the word 'Bardstown', the area where they are located, is merely descriptive?
    – Tiphani Davis
    Sep 23, 2022 at 15:58
  • You don't have to file to protect every part of a trademark that you could, but the shorter the trademark, the harder it can be to show secondary meaning in some cases. I am inclined to think that Coffee2Go is itself descriptive and not a good candidate for PTO approval or success in litigation.
    – ohwilleke
    Sep 23, 2022 at 19:11

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