Trader Joe’s United, the union representing Trader Joe’s employees, has been selling merchandise like apparel, buttons, bags, and coffee mugs as a means of raising funds. However, the grocery store chain is now claiming that the union is infringing on its copyright by using certain imagery and markings on the products.
According to Reuters, Trader Joe’s filed a suit last week in the U.S. District Court in the Central District of California in order to get the union to stop selling certain products that the company claims feature its “family of marks,” such as certain typefaces and logos that could confuse customers into thinking the products were officially licensed by Trader Joe’s.
Our union merch is finally here! Thank you to everyone who's been dming us about it and patiently waiting for TJU swag to become a reality.
Shirts, buttons, totes, mugs, all right here: https://t.co/9Ceg2QtY1L pic.twitter.com/kSBi1dwGNG
— Trader Joe's United (@TraderJoesUnite) June 23, 2023
Trader Joe’s sent a cease-and-desist letter to the union on June 27, demanding that it stop selling these products. The union reportedly replied that it would not abide by the request, and that the company’s very attempt to get them to stop selling the products rationalized the workers’ unionization efforts.
When your union drip is this good…your employer desperately tries to stop the flood.
That's right–less than a week after we launched our merch, Trader Joe's is threatening to sue for trademark infringement, claiming consumers might be "confused" between their products & ours. pic.twitter.com/ufDVDvTMID
— Trader Joe's United (@TraderJoesUnite) June 30, 2023
“Trader Joe’s has expended considerable resources to develop the extensive goodwill and reputation of its trademarks and trade dress, which are protected by dozens of federal trademark registrations,” the company said in its cease-and-desist letter. “To maintain the integrity of our brand, we also routinely take appropriate measures to ensure that the Trader Joe’s trademarks and trade dress are not depicted in a manner that would dilute them.”
The letter continues that the union’s use of trademarks and trade dress on its products “is likely to cause consumer confusion as to the source of these products, and dilutes Trader Joe’s famous trademarks.”
In a response from the union’s legal representation, the Trader Joe’s United union accused the grocery store chain of “trademark bullying,” and called any legal action “bad faith and frivolous claims of ‘trademark infringement and dilution.'”
“As numerous courts have recognized, a labor union’s use of an employer’s name or mark in an organizing effort or other labor dispute is not use in commerce, and is unlikely to cause confusion,” the response letter says. “Trader Joe’s is not the first anti-union employer to attempt to abuse federal trademark law in response to union activity. Courts around the country have routinely dismissed complaints by other companies that have alleged that a labor union’s use of the company’s trademark in connection with an organizing effort or other labor dispute ran afoul of trademark law.”
The union also argued that their use would be protected by the First Amendment, as the use of the trademark would be used to “communicate an idea, such as commentary, comedy, parody, news reporting, or criticism,” thus rendering it non-commercial. It also said it was protected due to the fact that the use of the logo in a labor dispute is not used to sell a rival consumer product, and thus would not be likely to cause consumer confusion.
“I think this is ridiculous,” Seth Goldstein, a lawyer at Julien, Mirer, Singla and Goldstein, which represents the union, told Vice. “There is no way that you can confuse Trader Joe’s United with Trader Joe’s, especially since this is a labor union context. And to deprive the employees [from being] able to use their logo and to be able to fundraise from that logo, really deprives their right to engage in collective action.”
Much of the merchandise does pretty clearly show that it’s coming from the worker’s union rather than the company itself. Products like tote bags use imagery like a raised fist holding the box cutter that employees use on the job, or have messaging like “Trader Joe’s United – A Union Lifts Us All.”
While the products do use the font that the company uses, it’s fairly clear what this merchandise is intended to convey and whom it represents.
Trader Joe’s has gone after other merchandisers using its logo in the past, but that was a much clearer legal standpoint. Back in May, Trader Joe’s went after merchandisers using its name and mark for bizarre and risqué merchandise. In that case, Trader Joe’s was right to shut down the sale, because such a profane message would reflect poorly on the company’s reputation, and could genuinely cause some confusion.
But, the Trader Joe’s United members feel that their merchandise clearly states that it’s coming from the worker’s union, and that their status as employees raising funds and awareness legally allows them to use the Trader Joe’s trademarks.
