{"id":3368,"date":"2024-02-15T14:08:37","date_gmt":"2024-02-15T19:08:37","guid":{"rendered":"https:\/\/blogs.luc.edu\/ipbytes\/?p=3368"},"modified":"2024-07-03T21:50:15","modified_gmt":"2024-07-03T21:50:15","slug":"checking-out-trader-joes-tote-bag-trademark-battle","status":"publish","type":"post","link":"https:\/\/blogs.luc.edu\/ipbytes\/checking-out-trader-joes-tote-bag-trademark-battle\/","title":{"rendered":"Checking Out Trader Joe\u2019s Tote Bag Trademark Battle"},"content":{"rendered":"

Trader Joe\u2019s: A Long Grocery List of Trademarks<\/strong><\/p>\n

Trader Joe\u2019s is an undeniably popular grocery store chain<\/a>.
\nIt operates over 500 locations in the United States across 42 states<\/a> and Washington, D.C., with estimated annual sales that reach $16.5 billion.<\/p>\n

I\u2019m a fanatical patron myself. I love its funky, mom-and-pop aesthetic and products that I can\u2019t seem to get elsewhere like Everything But the Bagel seasoning<\/a> (Trader Joe\u2019s owns the trademark for that). The chain has achieved wide success with its “cult-like” customer base <\/a><\/p>\n

<\/p>\n

Photo from Madalyn Cox\/Trader Joe\u2019s<\/span><\/p>\n

Trader Joe\u2019s is an IP giant when it comes to trademarks. But what exactly is a trademark? A valid trademark is any word, symbol, or device (or a combination of these) that is used in commerce on specific goods that identifies and distinguishes the goods from others. Most critically, trademarks help stymie confusion among consumers because they indicate that the good comes from a specific source.<\/p>\n

Trader Joe\u2019s owns over 90 trademarks <\/a>,including a black and white illustration <\/a> of a wine bottle, cheese, and bread with the stylized, iconic \u201cTrader Joe\u2019s\u201d underneath it in a circle. Trademarks are always for a specific good or collection of goods. In this case, this trademark is for use on \u201cfood carrying bags\u201d including \u201creusable bags made from cloth or other textiles to carry products from grocery stores.\u201d This trademark has recently become the subject of a lawsuit <\/a>Trader Joe\u2019s filed against its union for trademark infringement. While Trader Joe\u2019s complaint touched on a number of issues regarding its many trademarks, this article will only explore the trademark mentioned in this paragraph. The actual lawsuit\u2019s outcome could hinge on other marks and claims that I will not address in depth.<\/p>\n

Trader Joe’s Puts Trader Joe’s United in a Pickle<\/strong>
\nIn July 2023, the grocer sued Trader Joe’s United<\/a>, an independent labor union run by Trader Joe\u2019s crew members. The grocery store chain argued that its trademark, described above, used on \u201cmerchandise bags\u201d and sold at Trader Joe\u2019s locations was being inappropriately used<\/a> by the union on their own tote bags sold on their website, resulting in trademark infringement, as well as dilution of the power of its famous mark, among other claims. Trader Joe\u2019s is challenging the union merchandise that includes an image of a raised fist holding a green box cutter set within a white circle with the words \u201cTrader Joe\u2019s United\u201d in red along the border.<\/p>\n

In its complaint<\/a>, Trader Joe\u2019s wrote: \u201cDefendant operates a commercial website where it markets and sells various products, including apparel, home goods, and reusable tote bags, for profit. Some of these items make use of Trader Joe\u2019s registered and common law trademarks in a way that is likely to cause consumer confusion.\u201d<\/p>\n

In August 2023, the union filed a motion<\/a> urging the court to dismiss the case in response to the lawsuit, essentially claiming that there is no likelihood of confusion between the marks involved.<\/p>\n

This case gets at the heart of trademark infringement: Is the alleged trademark infringement creating a likelihood of confusion for consumers?<\/p>\n

Photo info: Graphic illustration from Trader Joe\u2019s lawsuit against Trader Joe\u2019s United. <\/span><\/p>\n

Can Trader Joe’s Sue for This?<\/strong><\/p>\n

Let\u2019s establish whether Trader Joe\u2019s has a prima facie<\/em> case for infringement\u2013meaning whether \u201cat first impression\u201d its legal claim is sufficient to proceed to court.<\/p>\n

Firstly, is the trademark valid? It\u2019s helpful that Trader Joe\u2019s already owns a (federally) registered mark<\/a> for the illustration as well as the words \u201cTrader Joe\u2019s,\u201d and even a stylized red version of the words \u201cTrader Joe\u2019s\u201d. These registered marks mean the company previously sought and obtained approval by the United States Patent and Trademark Office, which evaluates whether applications meet certain criteria. So, they are presumed valid during litigation.<\/p>\n

Photo info: nicotitto\/Unsplash<\/span><\/p>\n

Next, is Trader Joe\u2019s United using the same or similar trademark on its own goods in interstate commerce? At first glance, some could argue that Trader Joe\u2019s United is using an illustration similar to the registered marks on its own tote bags in their online store. The font is similar and is cast in that same bold, red color and housed within a circle like the chain\u2019s registered trademark. While the red ink is not protected by this particular mark, Trader Joe\u2019s did include the red ink in its complaint. However, the box cutter image is clearly different than the wine and cheese illustration trademarked by Trader Joe\u2019s.<\/p>\n

To satisfy the interstate commerce element, this means that the good or service is being sold in more than just one state. Trader Joe\u2019s United is the umbrella organization for four unionized stores<\/a> located in different states, meaning its merchandise is likely being sold and shipped to multiple states. Also, since its merchandise is available online<\/a>, it would likely meet the interstate commerce element. However, the union made the argument <\/a> that the bag is not purely commercial.<\/p>\n

Let\u2019s take a deeper dive into the other factors that are part of a prima facie<\/em> case for trademark infringement.<\/p>\n

In a Nutshell: Are the Union\u2019s Goods Likely to Cause Confusion?<\/strong><\/p>\n

Right now, Trader Joe\u2019s alleges that the union\u2019s use of Trader Joe\u2019s marks could potentially lead to consumers mistaking the union tote bags as being affiliated with or from the chain itself.<\/p>\n

Courts think about confusion in trademark infringement cases through several factors.<\/p>\n

For one, how strong is the Trader Joe\u2019s term or logo in terms of its market strength and how strong is the trademark itself? For the latter question, the words are likely to be classified as \u201carbitrary\u201d meaning that words or symbols being used on unrelated goods because Trader Joe\u2019s has nothing to do with groceries. This level of classification is one of the strongest a trademark owner could have. In terms of market strength, the words Trader Joe\u2019s are strong, but not the Trader Joe\u2019s logo. The logo does not rise to the level of trademarks like the Nike \u201cswoosh\u201d or Apple logo.<\/p>\n

Spilling the Beans: Other Factors that Courts Explore in Determining Trademark Infringement<\/strong>
\nNext, let\u2019s look at how related the goods and services are. In this case, the allegedly infringed trademark is being used in similar goods: reusable cloth bags. Trader Joe\u2019s is using the trademark for bags primarily sold for commercial purposes, which is pretty much what the union is doing as well on their website. The union also argued in its motion that courts have recognized a low likelihood of confusion when a union \u201cuses the other party\u2019s mark during a unionization campaign because unions do not offer a product or service that competes with the employer that is being organized.\u201d<\/p>\n

Photo info Tara Clark\/Unsplash<\/span><\/p>\n

Now, what\u2019s the likelihood of expansion into each other\u2019s market? Trader Joe\u2019s and Trader Joe\u2019s United are already in the same market of reusable cloth bags.<\/p>\n

The two entities don\u2019t have similar marketing channels, another factor analyzed by courts. Trader Joe\u2019s focuses on marketing in storefronts, its Fearless Flyer publication<\/a> filled with seasonal deals, and via social media<\/a>. Though the union is likely to market to union members or prospective union members through more organic means like word of mouth or perhaps union meetings, it is arguably still marketing it on the Internet. However, the different bags probably won\u2019t be marketed similarly, in a way that a consumer would encounter both together.<\/p>\n

As discussed earlier, what is the similarity of the marks? Well, it depends on the mark. The stylized text employed by the union is definitely similar to Trader Joe\u2019s. But, the images used are different<\/a>. The union employs a raised fist with a box cutter while the grocery store chain has a wine and cheese spread.<\/p>\n

Courts won\u2019t look for a specific number of factors to be met to come to a decision. The more a court determines there to be a difference between the mark and the union\u2019s illustration, the less likely will court find infringement. Because the illustrations are arguably pretty different, the scales could tip into the union\u2019s favor at this time. The contrasting images help reduce confusion, even if there are similar words on the tote bags. Ultimately, there are other things in the lawsuit that might throw a wrench \u2013 or perhaps a boxcutter \u2013 in the analysis.<\/p>\n

What About Other Unions?<\/strong><\/p>\n

It\u2019s not the first time that a corporation has sued a union over alleged trademark infringement. Last year, Medieval Times, a \u201crestaurant-and-show\u201d chain sued its employee union for using the Medieval Times name<\/a>. One lawyer explained that unions like the Medieval Times Performers United are allowed to use their organization\u2019s names through \u201cnominative fair use.\u201d This means that, in their defense, they are simply using the corporation\u2019s trademark to refer to the corporation itself, which courts will permit if not too much is taken and there is no attempt to suggest improper affiliation.<\/p>\n

So for now, Trader Joe\u2019s consumers, labor organizers, and IP law afficionados alike will have to wait and see if the courts strike Trader Joe\u2019s United a killer deal and dismiss the grocer’s lawsuit<\/a>.<\/p>\n

\"\"<\/p>\n

Maris Medina<\/em>
\nSenior Editor<\/em>
\nLoyola University Chicago School of Law, J.D. 2025<\/em><\/p>\n","protected":false},"excerpt":{"rendered":"

Trader Joe\u2019s: A Long Grocery List of Trademarks Trader Joe\u2019s is an undeniably popular grocery store chain. It operates over 500 locations in the United States across 42 states and Washington, D.C., with estimated annual sales that reach $16.5 billion. I\u2019m a fanatical patron myself. I love its funky, mom-and-pop aesthetic and products that I can\u2019t seem to get elsewhere like Everything But the Bagel … Continue reading Checking Out Trader Joe\u2019s Tote Bag Trademark Battle<\/span><\/a><\/p>\n","protected":false},"author":53,"featured_media":4023,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[11],"tags":[],"class_list":["post-3368","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\/3368","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\/53"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/comments?post=3368"}],"version-history":[{"count":2,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/3368\/revisions"}],"predecessor-version":[{"id":3861,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/3368\/revisions\/3861"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/media\/4023"}],"wp:attachment":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/media?parent=3368"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/categories?post=3368"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/tags?post=3368"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}