{"id":3203,"date":"2023-12-26T21:30:35","date_gmt":"2023-12-27T02:30:35","guid":{"rendered":"https:\/\/blogs.luc.edu\/ipbytes\/?p=3203"},"modified":"2024-07-13T06:00:47","modified_gmt":"2024-07-13T06:00:47","slug":"oh-no-trader-joe","status":"publish","type":"post","link":"https:\/\/blogs.luc.edu\/ipbytes\/oh-no-trader-joe\/","title":{"rendered":"Oh No, Trader Joe!"},"content":{"rendered":"

Trader Joe\u2019s<\/a>, the well-loved grocery chain filed suit<\/a> against Trader Joe<\/a>, a crypto exchange website, on October 5. The grocer is suing for a variety of federal trademark claims based on its word mark Trader Joe\u2019s that is very similar to the name of the cyrpto exchange company as well as its domain name.<\/p>\n

<\/p>\n

What is a trademark and does Trader Joe\u2019s have one?<\/strong><\/p>\n

A valid trademark is anything used in commerce on goods or services that identifies & distinguishes those goods or services from others; in other words, the trademark indicates that the goods and services come from a specific source. The mark in question is the word mark \u201cTrader Joe\u2019s\u201d.<\/p>\n

What is Cybersquatting?<\/strong><\/p>\n

Cybersquatting<\/a> is when a person or entity registers a domain name that is the same or similar to an existing trademark in bad faith with intent to profit. There are statutory factors that suggest cybersquatting.<\/p>\n

One example of someone acting in bad faith in this context could be registering a domain name so similar to another\u2019s that try to divert consumers who accidentally type it in and purchase from their website instead of the original. Another example of bad faith is where someone registers a domain name so similar to another\u2019s to convince the original trademark owner to pay them to return the domain name. Trader Joe\u2019s alleges that the Crypto company\u2019s registered domain name, traderjoexyz.com, is too similar to traderjoes.com.<\/p>\n

Origins of the Original Cybersquatting Claim<\/strong><\/p>\n

Trader Joe\u2019s had previously urged the owner of the site to stop using Trader Joe\u2019s in their domain name. It filed a complaint with the World Intellectual Property Organization (\u201cWIPO\u201d) Arbitration and Mediation Center<\/a>. This offers alternative dispute resolution<\/a>, meaning something outside traditional court systems for companies to resolve disputes. In particular, WIPO claims<\/a> to be \u201cthe global leader in resolving cases of \u2018cybersquatting\u2019 . . . to reclaim a domain name that unfairly targets your trademark.\u201d<\/p>\n

So, Trader Joe\u2019s filing here to force the site to stop using its domain name, traderjoexyz.com seems reasonable.<\/p>\n

WIPO Denies Trader Joe\u2019s Cybersquatting Claim<\/strong><\/p>\n

During the WIPO proceeding , the crypto company stated that it had named the company after the founder\u2019s brother, Joe, and was not a play on Trader Joe\u2019s. Ultimately WIPO accepted this reasoning and denied Trader Joe\u2019s complaint. This led to the court case in which Trader Joe\u2019s claims that this representation was false.<\/p>\n

In the complaint<\/a>, Trader Joe\u2019s also alleges the cyrpto company is liable for federal dilution by blurring as well as tarnishment, both of which are claims that apply to famous marks.<\/p>\n

Dilution by Blurring<\/strong><\/p>\n

Dilution by blurring<\/a> occurs when a trademark may reduce a famous mark\u2019s distinctiveness<\/a>. When we think about, say, CVS, everyone\u2019s mind immediately goes to the convenience store chain. There is inherent power in being such a distinct name in consumers\u2019 minds. In this example, if a different entity uses \u2018CVS\u2019 in a different industry, it \u2018dilutes\u2019 the power of the brand.<\/p>\n

The complaint<\/a> states that Trader Joe\u2019s marks are distinctive and famous. And, that the defendant\u2019s use of the \u201cTrader Joe\u201d name impairs the distinctiveness of the \u201cTrader Joe\u2019s\u201d mark, and therefore are liable for dilution by blurring. It further diluted the distinctiveness of Trader Joe\u2019s mark when it used produce and marketplace imaging on its website as seen here.<\/p>\n

\"\"
Screenshot from X (formerly known as Twitter).<\/em><\/figcaption><\/figure>\n

Dilution by Tarnishment<\/strong><\/p>\n

Trader Joe\u2019s also alleges that the Crypto company is liable for dilution by tarnishment<\/a>. Dilution by tarnishment arises when a mark is linked to products of shoddy quality or is portrayed in an unwholesome, unsavory context. Trader Joe\u2019s stated<\/a> that the \u2018Trader Joe\u2019 company participated in \u201cunscrupulous and unlawful activities\u201d and had \u201clow quality goods\u201d. The grocer claims the public associating it with the crypto company\u2019s product would diminish its reputation.<\/p>\n

What\u2019s Next for Trader Joe\u2019s-Trader Joe Debacle?<\/strong><\/p>\n

It will be interesting to see whether the courts find Trader Joe\u2019s arguments persuasive. While it does seem a bit suspect that the crypto company had no intention to play on the grocer\u2019s fame when coming up with its brand, at the end of the day it is up to the court to decide.<\/p>\n

\"\"<\/p>\n

Natalie Allen
\nAssociate Blogger
\nLoyola University Chicago School of Law, J.D. 2025<\/em><\/em><\/em><\/em><\/em><\/p>\n","protected":false},"excerpt":{"rendered":"

Trader Joe\u2019s, the well-loved grocery chain filed suit against Trader Joe, a crypto exchange website, on October 5. The grocer is suing for a variety of federal trademark claims based on its word mark Trader Joe\u2019s that is very similar to the name of the cyrpto exchange company as well as its domain name. Continue reading Oh No, Trader Joe!<\/span><\/a><\/p>\n","protected":false},"author":57,"featured_media":3893,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[11],"tags":[],"class_list":["post-3203","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-trademarks"],"_links":{"self":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/3203","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/users\/57"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/comments?post=3203"}],"version-history":[{"count":3,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/3203\/revisions"}],"predecessor-version":[{"id":4175,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/3203\/revisions\/4175"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/media\/3893"}],"wp:attachment":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/media?parent=3203"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/categories?post=3203"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/tags?post=3203"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}