Why Do YOU Need a Lawyer?

You’re forming a business. You need a lawyer because you need to do it right. You need the magic words that form the business you want to form in the formation documents (do you know what those magic words are?).

Or maybe you’re developing a brand for your new business. You need a lawyer because you need to do it right. Yes, a lawyer is expensive, but a trademark infringement action brought by a senior user of the mark you adopt … without knowing there even IS a senior user … gets mighty pricey mighty quickly.

Or you’ve invented something and you want to get your invention out to the public immediately. But wait; do you want to profit from your invention? You need to take steps to protect that invention. Do you know what steps are available to you? And do you know how steps that seem to be diametric opposites and never able to work together can actually allow you to effectively extend the term of protecting your invention? You need a lawyer because you need to do it right.

Or maybe you’ve written something. Let’s say you’re J.K. Rowling and you’ve just completed your very first “Harry Potter” book. You want all the protection you can get for that book. Do you know the ins and outs of obtaining and using that protection? You need a lawyer because you need to do it right.

Or you want to … ooh, ooh, ooh … start up a company that franchises its business methods and trademark (i.e., you’re Ray Croc) out to others. What do you need to do to start that franchise and comply with the state and federal laws that govern franchises? What business and legal models do you need to have in place? You need a lawyer because you need to do it right.

Or you don’t want to franchise, but you do want to license your intellectual property for others to use. How do you license out your intellectual property without creating a franchise? You need a lawyer because you need to do it right.

Or someone has handed you a contract to sign. It’s long and full of legal jargon. What does it actually say? Remember, lawyers use words differently than most people do, and it’s lawyers who will interpret any contract you sign that goes south. You need a lawyer because you need to do it right.

You need a lawyer because you’re in business and you need to do it right.

Delain Law Office, PLLC


Starbarks and Starbucks: A Story of a Trademark Problem

Starbucks objects to the name of a new dog daycare facility outside of Chicago. Starbarks is evidently too similar to Starbucks for the coffee chain. They’ve sent a cease-and-desist letter threatening legal action unless the owner changes the name post haste.

Andrea McCarthy-Grzybek, who co-owns the Illinois facility, can’t afford to pursue the case in court, so she, having just launched her business, says she will comply and change the name, even though she insists that any resemblance to the Starbucks name is merely coincidental.

Trademark infringement is determined by a series of factors which descend from Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir. 1961), specifically: “…the strength of his make, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant’s good faith in adopting its own mark, the quality of defendant’s product, and the sophistication of the buyers. Even this extensive catalogue does not exhaust the possibilities–the court may have to take still other variables into account.” Every circuit court of appeals in the US has adopted its own very similar list of factors that it looks at for trademark infringement claims.

If I were the judge deciding this case under Polaroid, I would analyze this as follows:

1. Strength of the mark: Starbucks is an arbitrary mark, which is strong; an arbitrary mark is a mark that uses existing words to mean something entirely out of the context of the meaning of the word or words. Furthermore, the Starbucks mark is famous; Starbarks is more suggestive for the services provided; dogs bark, this is a dog day care facility, which makes Starbarks a more suggestive mark, which is weaker than an arbitrary mark. This factor leans toward Starbucks.

2. Similarity between the two marks: Starbucks vs. Starbarks has two letters’ difference. That’s pretty similar. Furthermore, Starbucks has as one of its logos an oval or circle with the word STARBUCKS in the top side of the rim, a star on each side of the word, and COFFEE in the lower portion of the rim, with a stylized face inside; This logo, although color is not a registered part of it, is generally shown in green and white. Compare that to the logo shown on the poster made by Starbarks, shown here. To my eye, these two marks are disturbingly similar, leaning this factor toward Starbucks.

3. Proximity of the products. Coffee … doggie day care. Not similar at all. This leans toward Starbarks.

4. Likelihood that the prior owner will bridge the gap. Is it really likely that Starbucks, known for its coffee and related products, actually going into the dog-walking business? Probably not. This leans toward Starbarks.

5. Actual confusion: We know of no one who has actually confused Starbucks and Starbarks; if it is indeed the case that no consumer actually confused the two businesses, this factor leans toward Starbarks.

6. Reciprocal of defendant’s good faith in adopting its own mark: Ms. McCarthy-Grzybek insists that any resemblance to the Starbucks name and logo is merely coincidental. If that’s true, her good faith is large, which would lean toward Starbarks; if, as Starbucks would very likely maintain if the case were to go to court, this factor would lean toward Starbucks.

7. Quality of defendant’s product: We know nothing of the quality of the dog-sitting service Ms. McCarthy-Grzybek provides. Assuming it’s of a reasonable quality, this factor would lean toward Starbarks; if she neglects the dogs or otherwise does not perform her duties in the way a reasonable dog-sitter would do, it would lean toward Starbucks.

8. Sophistication of the buyers: Both companies have the upscale general public for customers. The courts have repeatedly held that the general public is not a sophisticated buyer. This factor leans toward Starbucks.

Solely on the Polaroid analysis, Starbarks, the Doggie Daycare, could win. However, there’s another prong to a trademark infringement suit. Because the Starbucks mark can easily be proved to be famous, the spectre of trademark dilution raises its ugly head. Starbucks, once it shows its mark is famous, has standing to prevent anyone, no matter how disparate the product or service, from using a mark that is similar to its own. The logic behind that is that since a famous mark is so well known among consumers, those consumers automatically assume that a mark that is similar to a famous mark is affiliated with the owner of the famous mark regardless of the product or service being sold.

Frankly, I don’t see much hope for Starbarks under the dilution doctrine. It is wise of Starbarks’ owner to decide that changing the name and the logo of the doggie daycare business to something that does not come anywhere close to Starbucks’ name and logo is the way to go.