News September 15, 2023
Union Wants Judge To Toss Trader Joe’s Merch Trademark Lawsuit
In July, Trader Joe’s sued a union representing some of its workers, alleging the group was selling tote bags, mugs, buttons and T-shirts that use the grocery chain’s registered and common law trademarks without permission.
Things are heating up in a court battle centered on branded merchandise that pits Trader Joe’s against a union representing workers employed by the grocery store chain.
In July, Trader Joe’s filed a trademark infringement lawsuit that accuses the union of selling tote bags, mugs, buttons and T-shirts that illegally use the Monrovia, CA-headquartered grocer’s trademarks.
But now, the union – Trader Joe’s United – is punching back. The organized labor group representing people who work at the chain store has filed a motion that asks a federal judge to dismiss the case.
The filing requests that all five complaints in the grocer’s suit be tossed out by the court.
Those complaints include federal trademark infringement, unfair competition/false association, federal trademark dilution, common law trademark infringement, and California statutory unfair competition.
In asking for the case to be trash-binned, Trader Joe’s United cites a civil procedure rule that allows a defendant to assert a suit should be dismissed on the grounds that the plaintiff failed to establish a strong factual basis for its claims in a complaint.
A hearing on the motion to dismiss is scheduled for later this year.
The union’s motion also asks the court to acknowledge, as a matter of judicial notice, a publicly filed complaint that the National Labor Relations Board has made against Trader Joe’s for alleged unfair anti-union activities. Judicial notice is a rule that allows a fact to be introduced into evidence if the truth of that fact is so notorious or well-known, or so authoritatively attested, that it cannot reasonably be doubted.
Trader Joe’s Claims
In its lawsuit, grocer Trader Joe’s claims that some of the branded merch the union sells makes use of the grocery chain’s “typed word mark and stylized word mark, the unique Trader Joe’s typeface and red coloring, and/or the concentric circle design and general composition of the registered Trader Joe’s logo. … Trader Joe’s has not authorized the defendant to use Trader Joe’s intellectual property in this way to advertise and sell merchandise.”
The use of the grocer’s trademarks will cause marketplace confusion, compelling consumers to think Trader Joe’s is selling or has endorsed the products, the company asserts. It’s asking the court to order the union to stop selling the swag with the alleged infringing graphics.
View this post on Instagram
Additionally, Trader Joe’s wants the union to recall from any “distributors, retailers, vendors or others” all the products in question and to turn the merch over for destruction. The grocer is also asking for damages, attorney fees and that a judge declare that the union was “willful” and “reckless” in disregarding Trader Joe’s marks.
In a separate, unrelated case filed in April, Trader Joe’s sued online apparel seller T-Shirt AT Fashion LLC for trademark infringement tied to graphics used on profane and politically incendiary T-shirts. The case has yet to be adjudicated, but Trader Joe’s has filed for a default judgement, which if granted would result in the judge ruling in favor of Trader Joe’s due to T-Shirt AT Fashion LLC failing to respond to a court summons regarding the suit.
The case has been complicated by the fact that Trader Joe’s has had difficulties serving notice on the defendant, in part because T-Shirt AT Fashion does not appear to be operating out of the Texas address it has listed online and is using what may be a fictious/unregistered business name, court papers indicate.
Legal arguments and outcomes in trademark and copyright cases related to graphics on apparel and branded merchandise can prove useful for promotional products pros, as they consider potential trademark/copyright issues in the course of business.