Trademark Wars! Joe vs. Schmo

We have another episode of Trademark Wars! It seems grocery giant Trader Joe’s — my favorite grocery store! — has fended off the predations of a naughty infringer, bent on using the fame of the Trader Joe’s name to promote their own goods.

Naughty infringer Jeffrey Glassover sought to use the brand “Trader Schmos” for a line of kosher foods, and Trader Joe’s opposed his application, and rightly so. Having used the Trader Joe’s name for grocery services and food products since 1967, Trader Joe’s has built up substantial goodwill in their brand. The grocery has somewhat of a cult following, and engenders a tremendous amount of loyalty in it’s customers. The mark is famous in the United States for grocery stores and for their branded food products.

Trader Joe’s has longstanding rights to the “TRADER JOE’S” mark, and often uses foreign variants of its name — Trader Giotto’s for Italian foods, Trader Jose for Mexican goods, etc, so the use of “Trader Schmo’s” for a line of kosher foods would be confusing for the average consumer.

I’m quite shocked that the trademark examiner allowed this mark to be published for opposition, which means that he found no issue with the applicant’s mark vis-a-vis other marks. This illustrates why trademark holders must regularly review the record for infringing marks, because sometimes the trademark examiner mistakenly allows a conflicting mark.

This is a classic case of a competitor attempting to use the goodwill and name recognition of a large, famous brand to garner goodwill for his own goods. The applicant’s proposed mark is intended to give the consumer the impression that the applicants’ goods are somehow related to those of the trademark owner, and is calculated to deceive the consumer and mislead her or him as to the source of the goods. There is no other reason, other than a desired association with the famous mark, for the applicant to use TRADER SCHMO’S on his goods.

Aside from the obvious issue with the copycat name, infringements of this sort are damaging to the famous mark owner, because it has no way of policing the quality of the goods produced by the infringer. This could result in a tarnishment of the senior owner’s brand, because consumers might confuse the infringers’ inferior goods with those of the senior mark holder, thus damaging the reputation of the senior brand.

The infringer’s mark was withdrawn shortly after counsel for Trader Joe’s filed the Opposition proceedings. Infringements of this sort tend to be more common when, as here, the applicant is not represented by counsel. A competent trademark attorney can steer her clients away from marks that are going to either be rejected by the trademark examiner, or draw fire from existing mark holders. The Applicant will forfeit the filing fee; there are no “do-overs” when you file your trademark. He’ll have to pick another mark and rebrand his goods. Let’s hope he gets trademark advice going forward.

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