Trader Joe’s Co. (“Trader Joe’s”), the popular grocery store chain, recently filed suit against crypto trading platform Trader Joe (“Trader Joe”) and its developers for allegedly violating its rights in the TRADER JOE’S trademark.
Trader Joe’s owns numerous federal trademark registrations for the TRADER JOE’S mark in connection with various food and beverage goods as well as retail grocery services. In 2021, Trader Joe’s became aware of Trader Joe, it’s cryptocurrency platform, and its use of the traderjoexyz.com domain name.
In the complaint, Trader Joe’s claims that Trader Joe is named after the Trader Joe’s supermarket and that the creators of “Trader Joe” developed a narrative around a fictionalized “Trader Joe” who sells crops in a local marketplace, to further evoke the TRADER JOE’S brand and business. The Trader Joe platform’s avatar also features an image of “Trader Joe” wearing a red cap, the famed color of Trader Joe’s logo, store motifs, and memorabilia. The “Trader Joe” creators also offer a mobile app called “Trader Joe,” where users can interact with the Trader Joe platform, and operate many social media profiles under the name “Trader Joe” and/or “Trader Joe XYZ.” See below for images of the mobile app and the Trader Joe imagery the creators posted on X.
Source: Compl. p. 3.
Trader Joe’s attempted to resolve the matter directly with the creators of the “Trader Joe” platform, but such attempts were fruitless and resulted in Trader Joe’s filing a complaint with the World Intellectual Property Organization (“WIPO”) Arbitration and Medication Center to divest the creators of the domain name traderjoexyz.com. In the WIPO proceeding, the creators claimed that the “Trader Joe” platform was named after one of the creator’s brothers, Joe Liu. WIPO relied on this representation and denied Trader Joe’s complaint. The creators of the “Trader Joe” platform subsequently registered two additional domain names, trader-joes.site and trader-joe.website.
Weeks after the WIPO proceeding, one of the creators of the “Trader Joe” platform admitted in a Substack publication (i.e., a blog) that the platform had indeed been named after the Trader Joe’s supermarket chain. A copy of that publication is below.
Source: Compl. p. 9.
In light of Trader Joe’s previous failed attempts to force the platform’s creators to cease use of “Trader Joe”, Trader Joe’s brought suit in the United States District Court for the District of Central California against both the creators and Trader Joe asserting causes of action for federal trademark infringement, federal trademark dilution, violations of the Anti-Cybersquatting Consumer Protection Act, California statutory unfair competition, common law trademark infringement and unfair competition, common law conversion, and declaratory relief.. See TRADER JOE’S COMPANY, a California corporation, Plaintiff, v. JOEMART LTD D/B/A TRADER JOE, a corporation of the British Virgin Islands; SOJ TRADING LTD D/B/A JOEPEGS, a corporation of the British Virgin Islands; CHENG CHIEH LIU, an individual; and DOES 1-10, Civil Case No. . 2:23-cv-8395 (C.D. Cal. 2023). Trader Joe’s seeks defendants’ profits and reasonable attorneys’ fees for trademark infringement; and is seeking a permanent injunction against any use in commerce of the TRADER JOE’S family of marks, the “Trader Joe” name or any confusingly similar variation, as well as treble damages for willful dilution; damages and fees associated with willful violations of the Anti-Cybersquatting Consumer Protection Act as well as an order transferring the domain names traderjoexyz.com, trader-joes.site, and trader-joe.website to Trader Joe’s or cancellation of the domain names; as well as declaratory relief, common law conversion and unfair competition claims. None of the defendants have answered the complaint.
If the action continues, attention should be paid to see if the strength and fame of Trader Joe’s rights in the TRADER JOE’S mark is sufficient to establish both fame for its dilution claim and likelihood of confusion with respect to use of a nearly identical mark for goods and services that are different from those actually offered by Trader Joe’s.