so you're saying that Pirate Joe is violation of trademark then?

rayiner · on June 10, 2017

Trademark infringement is all about context. Pirate Joe's for a place that sells pirate costumes isn't trademark infringement. Pirate Joe's in the same font that Trader Joe's uses, for a store that sells Trader Joe's products is probably crossing the line.

Note that the company was started as Transilvania Trading, and didn't get sued until after it changed its name to Pirate Joe's. Moreover, he added the disclaimer "Unauthorized, Unaffiliated and Unafraid" after the lawsuit was filed. Trader Joe's had a very legitimate trademark infringement case, especially during the period where the store was called "Pirate Joe's" with no disclaimer.

will_brown · on June 10, 2017

There is also additional case law that supports TJ claim from a trademark perspective:

1. TJ would argue PJ was selling watered down product bearing the TJ mark (I know a seemly strange arguement bc PJ was buying selling TJ product without alteration);

2. However, Inherent in all the value of all TJ products are: a) The TJ guarantee of product (i.e. TJ will replace any product you bought at TJ without question/receipt) and b) TJ customer services is part of the TJ product value bc TJ product is sold exclusively thru TJ which they control completely.

3. Therefore, without the guarantee and customer service the TJ product PJ sells is "materially different" than the TJ product TJ sells. (Before others go crazy about this point, this is not my position, it's case law, both warranties/customer service can be qualities of trademark products that remove them from first sale doctrine protections);

4. Tying this into the standard of trademark law, TJ can likely prove customers were confused and bought TJ product from PJ thinking it was TJ product, when in fact it was "materially different" product with the TJ mark.plus it doesn't help PJ advertises they sell TJ product.

5. Further by selling Product with the TJ mark not backed by the TJ guarantee dilutes the TJ mark and goodwill associated with the mark.

Trademark is definitely tricky, there are always questions of facts (I.e. Was there customer confusion in the marketplace) and so they are always ripe for trial. That said I agree with you TJ likely had a good trademark case supported by case law...unfortunately HN likes to try to make absolutes out of law and so when they hear one week about "first sale doctrine" the next they believe in absolute ownership and absolute rights to resell notwithstanding common knowledge to the contrary (they know there is no absolute right to resell rx; alcohol; guns; etc...)