A federal judge has rebuked Trader Joe’s for filing a “meritless” trademark claim against its workers’ union and ordered the grocer to cover the union’s legal fees as a deterrent against similar litigation.
The company had claimed that Trader Joe’s United, a new union representing employees at four stores, violated Trader Joe’s trademarks through its name and logo. But U.S. District Judge Hernán D. Vera dismissed the lawsuit in January, finding that Trader Joe’s had tried to “weaponize the legal system” against its own workers.
In a new order issued Tuesday, Vera went a step further and said Trader Joe’s should have to pay more than $112,000 in attorney’s fees for the union. He wrote that the trademark claim was notable for its “lack of substantive merit,” and reiterated his belief that Trader Joe’s never would have filed it if it wasn’t battling the union in an organizing campaign.
“Employers should be discouraged from bringing meritless claims against unions they are challenging at the ballot box”
– U.S. District Judge Hernán D. Vera
“Employers should be discouraged from bringing meritless claims against unions they are challenging at the ballot box,” he wrote.
A Trader Joe’s spokesperson could not immediately be reached for comment Tuesday.
Union attorney Seth Goldstein said the order should put employers who would pursue similar claims on notice. Goldstein and one other lawyer for the union will be paid by Trader Joe’s under Vera’s order.
“This is a very, very good day for labor because companies are now being told that you can’t use trademark law and other types of cases to try to deter workers from organizing,” Goldstein said. “If the company wants to continue this frivolous exercise then they’re going to have to pay for it.”
John Greim via Getty Images
Trader Joe’s has appealed Vera’s dismissal of the case from January, and Goldstein said the company could pursue a stay against the order to pay the union’s attorneys fees. But such litigation could end up only increasing the company’s legal tab with union.
Trader Joe’s is not the only company to pursue trademark litigation against a staff union.
Medieval Times and Starbucks filed similar claims against Medieval Times Performers United and Starbucks Workers United, respectively, alleging they could dilute the brands with their names and logos. In all three cases, the unions criticized the claims as an effort to intimidate them and bog them down in costly litigation.
“If the company wants to continue this frivolous exercise then they’re going to have to pay for it.”
– Seth Goldstein, attorney for Trader Joe’s United
Trader Joe’s brought its lawsuit against the union last July. It claimed the goods the union was selling in its online store, such as a reusable shopping bag that says “Trader Joe’s United,” could confuse customers and lead to “significant reputational harm” for the grocer.
Vera, however, found it highly unlikely that a customer would conflate the union’s merchandise with that of the grocer, noting that it could only be bought from the union’s online store. In his order Tuesday, Vera said the company’s claim that it was worried about its brand being hurt “cannot be taken seriously.”
“Setting aside the Union’s use of the name ‘Trader Joe’s’ … all that remains are two red concentric circles,” Vera wrote of the logos. “And even those concentric circles are of different ratios.”