Labor & Employment Law Daily Wrap Up, LABOR—9th Cir.: Trader Joe’s alleged likelihood of confusion between its marks and labor union’s tote bags, (Sep 10, 2025)

By Patricia K. Ruiz, J.D.

District court’s dismissal of infringement claims and award of attorney fees to labor union reversed.

The U.S. Court of Appeals for the Ninth Circuit reversed a California district court’s dismissal of a trademark infringement and unfair competition lawsuit by Trader Joe’s Co. against Trader Joe’s United, a labor union. The Ninth Circuit found that the lower court erred in its application of the likelihood-of-confusion test and its finding of no jurisdiction under the Norris-LaGuardia Act (Trader Joe’s Co. v. Trader Joe’s United, Nos. 24-720, 2826 (9th Cir. Sept. 8, 2025)).

Trader Joe’s marks. Trader Joe’s owns many registered trademarks, including logos, and typed and stylized word marks. It uses those marks in connection with food and beverage products, as well as certain branded merchandise, including tote bags. The union, on its website geared to its organizing efforts, sells such merchandise as mugs, apparel, buttons, and tote bags, which bear the union name and designs. Trader Joe’s claims that the union’s merchandise uses Trader Joe’s typed and stylized word marks, typeface, red coloring, and concentric circle design, thus infringing them. Trader Joe’s “most specific allegation of infringement,” according to the court, relates to the union’s sale of tote bags, which Trader Joe’s claims infringe on its trademark covering “merchandise bags” in Class 16, and “carrying bags” in Class 18.

Complaint; motion to dismiss. Trader Joe’s brought five claims in its complaint: federal trademark infringement; federal unfair competition, false association, and false designation of origin; federal trademark dilution; California statutory unfair competition; and California common law trademark infringement and unfair competition. Trader Joe’s also sought a permanent injunction against the union’s use of its marks or any similar marks.

The union moved to dismiss, and the U.S. District Court for the Central District of California dismissed with prejudice all five of Trader Joe’s claims, holding that a union’s use of an employer’s trademark as part of communications about the employer’s labor practices, given the context, is not likely to cause confusion. The court noted that, because the claims arose in the midst of ongoing labor disputes between the parties, it lacked jurisdiction to issue an injunction against the union’s use of the marks, pursuant to the Norris-LaGuardia Act (see IP Law Daily, Jan. 17, 2024).

Likelihood of confusion. On Trader Joe’s appeal, the Ninth Circuit reversed the dismissal of the trademark infringement claim, holding that, viewing the allegations in the light most favorable to Trader Joe’s, the district court erred in its application of the fact-specific likelihood-of-confusion test. The Ninth Circuit held that the strength of the marks, the relatedness of the parties’ goods, and the similarity of the marks weighed in favor of Trader Joe’s. First, the union did not dispute that the Trader Joe’s mark is strong. Second, the court found that reusable tote bags are the only products currently sold by both parties and that they target the same class of purchasers—the general public. Third, Trader Joe’s marks and the union’s marks are strikingly similar, as they both name “Trader Joe’s” using capitalized lettering, the same red color, and similarly stylized fonts, both found within concentric circles. However, the court found that the other five factors were neutral. Thus, the Ninth Circuit held, this is not one of the rare trademark infringement cases in which there was no plausible likelihood that a reasonably prudent consumer would be confused about the origin of the goods bearing Trader Joe’s marks. The district court’s dismissal of Trader Joe’s trademark infringement and unfair competition claims were reversed.

Trademark dilution. Trader Joe’s asserted a trademark dilution by blurring claim under the Lanham Act. The court noted that the relevant inquiry for dilution by blurring is does not depend on a finding of likelihood of confusion, but “whether the ‘association arising from the similarity between a mark or trade name and a famous mark... impairs the distinctiveness of the famous mark.’” (citations omitted). The district court did not evaluate Trader Joe’s dilution claim under the applicable four-factor test, finding instead that the union’s use of the Trader Joe’s mark constituted nominative fair use, even though the union did not assert a nominative fair use defense. “Because TJU never asserted a nominative fair use defense below, the district court erred in dismissing Trader Joe’s dilution claim on this ground,” the appeals court said.

Injunctive relief. The Ninth Circuit further held that the district court prematurely concluded that it was barred from granting injunctive relief under the Norris-LaGuardia Act without further development of the record or the parties’ positions. While the Act prohibits courts from issuing injunctions in any case “involving or growing out of a labor dispute,” it was not clear whether Trader Joe’s trademark infringement claims and the nature of the injunctive relief sought by Trader Joe’s related to or grew out of the ongoing labor dispute. The district court’s holding that it lacked jurisdiction to enter injunctive relief in this matter was vacated the issue remand for further proceedings.

The Case is Nos. 24-720, 2826.

Judge: Sanchez, G.

Attorneys: Melissa A. Sherry (Latham & Watkins) for Trader Joe’s Co. Sonya Z. Mehta (Goldstein & Singla) for Trader Joe’s United.

Companies: Trader Joe’s Co.; Trader Joe’s United

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