July 18, 2023
Trader Joe’s Sues Employees’ Union for Alleged Trademark Infringement on Branded Merch
The grocer wants a court to order the union to stop selling the swag and turn over the offending T-shirts, bags, mugs and hoodies for destruction, a complaint states.
Branded merchandise is at the center of a trademark-infringement lawsuit that Trader Joe’s has filed against Trader Joe’s United, an independent union representing people who work at the grocery store chain.
In a complaint filed in the U.S. District Court for the Central District of California on July 13, Trader Joe’s accuses the union of selling tote bags, mugs, buttons and T-shirts that utilize the Monrovia, CA-headquartered grocer’s registered and common law trademarks.
“Specifically, certain of defendant’s products use the Trader Joe’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,” the lawsuit states. “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.
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.
View this post on Instagram
The suit claims that the union refused to stop selling the merch after receiving a cease-and-desist letter from Trader Joe’s in late June. According to the complaint, Trader Joe’s does not object to the labor organizers using the name “Trader Joe’s United” or the sale of some merch– including certain buttons and tees – that don’t feature graphics with the grocer’s legal marks in them.
As of this writing, the union had not responded to the complaint in a formal court filing.
Trader Joe’s employees first voted to organize at a location in Massachusetts last year. The union and the company have had run-ins since. As an example, the National Labor Relations Board filed a complaint against Trader Joe’s earlier in July, alleging the food chain retaliated against pro-union workers by threatening them with frozen wages and other repercussions.
In another 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. It’s 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.