IP Law Daily, TRADEMARK NEWS: Trader Joe’s says ‘Trader Joe’ cryptocurrency platform infringes its trademark, (Oct 13, 2023)

By Steven Melendez

Supermarket Trader Joe’s sued the operators of a cryptocurrency platform it says copied its name and infringes its trademarks.

Trader Joe’s, the supermarket chain, has filed a lawsuit the operators of a cryptocurrency trading platform called “Trader Joe” in California federal court, alleging trademark infringement. The supermarket alleges the crypto platform deliberately copied its name, then “committed fraud to obscure that origin story and prevail” in a World Intellectual Property Organization (WIPO) proceeding, where the supermarket unsuccessfully challenged its registration of the domain name traderjoexyz.com (Trader Joe’s Company v. Joemart Ltd., filed October 5, 2023).

The crypto company also uses the Trader Joe name on the Apple App Store, in other domain names, and on numerous social media platforms, including YouTube, GitHub, Reddit, Discord and X, the former Twitter, according to the complaint in the case. A “vandalism-based marketing campaign in Paris during Paris Blockchain Week” also plastered material with the “Trader Joe” name “on public and private property around the city,” according to the complaint.

Trader Joe’s, the supermarket, says it has used the mark TRADER JOE’S for grocery services for more than 50 years and been granted numerous federal trademark registrations covering various classes of goods and services, building a reputation among loyal customers who spread the word about its stores and products. “Trader Joe’s can rely on word of mouth because it has worked tirelessly and methodically to ensure that its customers closely associate Trader Joe’s and its TRADER JOE’S marks with both innovative, high-quality products at the best prices and with the rewarding, eventful, and fun shopping experience inside Trader Joe’s stores,” according to the complaint.

The crypto platform’s use of “Trader Joe” is “confusingly similar” to its trademarks, the supermarket argues, and the crypto platform even uses “food marketplace imagery and a red color scheme” in some of its marketing, according to the complaint. In some cases, it uses the possessive form “Trader Joe’s” in online copy, exactly mirroring the supermarket’s trademarks, according to the complaint.

The supermarket alleges it has sent repeated cease and desist letters to the crypto platform and its affiliates starting in 2021, but has received no response from the platform’s operators. In January 2022, the supermarket’s lawyers sent a cease and desist letter to an employee of the platform it tracked down, and the employee forwarded it to the platform founders—sending a copy to the supermarket’s counsel—but said he couldn’t identify the founders since they “used aliases in their interactions,” according to the complaint. The employee then resigned from the crypto platform, according to the complaint.

In May 2022, the supermarket filed a complaint with WIPO, challenging the domain registration. In response, the person who registered the domain for the crypto platform claimed that it wasn’t named after the supermarket but for his brother Joe, “who is an active member of the Trader Joe community.” WIPO relied on that claim and let the crypto platform keep control of the domain, according to the complaint.

But, the supermarket alleges, one of the cofounders wrote weeks later on Substack, the online newsletter site, that the crypto platform was named “Trader Joe, after the supermarket.”

The complaint alleges trademark infringement and dilution under federal law, violation of the federal Anticybersquatting Consumer Protection Act, unfair competition under California law, common law trademark infringement and unfair competition, and common law conversion in regard to the challenged domain name. The supermarket is asking the court to bar the crypto platform from using its Trader Joe domain names, as well as similar social media handles and mobile app names. It also asks that the platform be barred from offering goods and services or operating a platform under the name “Trader Joe” or similar names, that the court declare the platform’s name infringes on the supermarket’s trademark, and that the exchange’s domain names be transferred to the supermarket.

The supermarket company is also seeking damages, costs, and attorney fees.

The Case is No. 2:23-cv-08395.

Attorneys: David R. Eberhart (O'Melveny and Myers LLP) for Trader Joe's Company.

Companies: Trader Joe's Company; Joemart Ltd. d/b/a Trader Joe

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