Trader Joe's employee union defeats grocer's trademark lawsuit

Outbreak of coronavirus disease (COVID-19), in Bailey's Crossroads
A shopper wearing a protective face mask passes near a self-distancing queue outside Trader Joe's, as they limited the amount of shoppers allowed in the store to help prevent the spread of coronavirus disease (COVID-19), in Bailey's Crossroads, Virginia, U.S., March 31, 2020. REUTERS/Kevin Lamarque Purchase Licensing Rights, opens new tab
  • Trader Joe's said customers would wrongly think company endorsed union merchandise
  • Court said lawsuit was 'dangerously close' to being frivolous
Jan 16 (Reuters) - A Los Angeles federal court has dismissed a trademark lawsuit filed by grocery-store chain Trader Joe's against its employee union over the use of the store's logos on union merchandise.
U.S. District Judge Hernan Vera said in a decision made public on Saturday, opens new tab that Trader Joe's United's use of the chain's name and logos on tote bags, buttons, mugs and other products would not confuse consumers.
Vera also said that the lawsuit was "dangerously close" to being frivolous or improper, and that it "strains credulity" to think it would have been filed "absent the ongoing organizing efforts that Trader Joe's employees have mounted (successfully) in multiple locations across the country."
A Trader Joe's spokesperson said on Tuesday that the company "consistently takes legal action to protect our brand when we become aware that someone other than Trader Joe's is selling merchandise using our trademarks" and that it will "continue to take all appropriate action to protect our brand."
Trader Joe's United said in a statement that the decision was "a vindicating and joyous occasion for our union."
Trader Joe's sued the union last year, arguing its merchandise was likely to confuse customers into thinking the chain made or endorsed it. The union denied the allegations and said that the lawsuit was meant to retaliate for its ongoing organizing efforts.
Vera agreed with the union that its products would not cause confusion. The judge said that the union's designs were not similar to the store's trademarks and noted that the only place customers can buy the union's merchandise is through its website, which is "openly critical of Plaintiff's labor practices."
The case is Trader Joe's Co v. Trader Joe's United, U.S. District Court for the Central District of California, No. 2:23-cv-05664.
For Trader Joe's: David Eberhart and Scott Pink of O'Melveny & Myers
For the union: Seth Goldstein and Retu Singla of Julien Mirer Singla and Goldstein; Sonya Mehta of Siegel Yee Brunner & Mehta
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Trader Joe's sues employee union for trademark infringement
Trader Joe's employee union asks to dismiss grocer's trademark lawsuit

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Reporting by Blake Brittain in Washington

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets, for Reuters Legal. He has previously written for Bloomberg Law and Thomson Reuters Practical Law and practiced as an attorney.