Q: Can a name be trademarked if it includes a part of a trademarked phrase?
The phrase "Car and Coffee" as well as "Cars & Coffee" are both trademarked as well as several other associated names that include locations. Can the name of our local Cars and Coffee be trademarked? "City Name" Cars and Coffee.
A:
By "trademarked," I assume that you mean "registered," either state or federally. A trademark is not the same thing as a trademark registration ...kind of like a house compared to a deed to the house.
Adding a word or a design element to a registered mark usually isn't sufficient to overcome a likelihood of confusion by consumers, and likewise, it's usually not enough to permit registration of a junior mark. For instance, if "Acme" is a federally registered mark for vacuum cleaners, a later application by someone else for "Super Acme" for vacuum cleaners (or similar goods) will probably be rejected by the USPTO because of the "dominant" or focal word Acme; i.e., adding "super" probably won't be enough to distinguish the marks.
There are many other factors involved in a trademark registrability and/or potential infringement analysis, which a trademark attorney can provide.
A: Rejections to trademark registration may arise for many reasons including likelihood of confusion with another registered trademark in the same or related class/category of goods/services, as well as refusals based on marks which are primarily descriptive/geographic descriptiveness. Also, the marks which are registered may not be the only trademarks in use which have rights against infringement. Consult with a trademark attorney to guide you through this process.
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