Mirror, Mirror on the Wall, What is Fair Use After All? A Tale of Union Trademark Use
MIRROR, MIRROR ON THE WALL, WHAT IS FAIR USE AFTER ALL?
A TALE OF UNION TRADEMARK USE.
Written by Branden Surgnier
Introduction and Case Overview.
In June 2023, Trader Joe’s United (“TJU”), a labor union representing employees of Trader Joe’s, began selling merchandise bearing Trader Joe’s iconic red typeface and logo:[1]
Trader Joe’s brought suit in the District Court for the Central District of California objecting to TJU’s unauthorized use of its mark in commerce.[2] Trader Joe’s objection was not that TJU referenced “Trader Joe’s” in their union activities, but that TJU sold products (particularly tote bags, see below) bearing Trader Joe’s marks on its website, risking consumer confusion and brand dilution.[3]
TJU in response argued that Trader Joe’s assertion of trademark violations “constituted retaliation against its unionization efforts.”[4] The district court dismissed the case, holding there was no plausible likelihood of confusion between the TJU’s merchandise and Trader Joe’s products[5] and finding TJU’s use “nominative fair use.”[6] The district court also ruled the Norris-LaGuardia Act (“NLGA”) prevented any injunctions in disputes “involving or growing out of a labor dispute.”[7]
Trader Joe’s appealed and emerged victorious. On September 8, 2025, the 9th Circuit reversed, finding that (i) Trader Joe’s plausibly alleged likelihood of confusion under the Sleekcraft factors;[8] (ii) the district court erred in dismissing the dilution claim under the nominative fair use doctrine;[9] and (iii) the district court prematurely ruled that the NLGA barred injunctive relief in this case and required remand.[10]
Trader Joe’s highlights a growing tension between trademark protection and labor union organizing efforts. This case squarely presents the question: can unions fairly use an employer’s logo in their organizing efforts without infringing on trademark rights, and, if so, when and how?
9TH Circuit Analysis.
The 9th Circuit reviewed the district court’s dismissal de novo,[11] and reviewed Trader Joe’s trademark infringement claim by analyzing the likelihood of confusion with TJU’s use of their mark, the nominative use defense, and the effect the NLGA has on injunctive relief during union-employer labor disputes.
- Likelihood of Confusion and Sleekcraft Factors Analysis.
The 9th Circuit uses eight factors, as established in AMF, Inc. v. Sleekcraft Boats, to evaluate whether consumer confusion between goods is likely: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines.[12]
In Trader Joe’s, the 9th Circuit found that factors 1-3 favored Trader Joe’s and 4-8 were neutral:[13]
- ✅ Trader Joe’s mark was strong.
- ✅ The products sold by Trader Joe’s and TJU were clearly related, identical in use and function, and targeted the same class of consumers – the general public.
- ✅ Trader Joe’s and TJU’s marks were strikingly similar enough to establish a plausible likelihood of confusion.
- ⚠️ TJU markets + sells its products online, while Trader Joe’s markets products online but sells its products only in stores. Under an initial interest theory, consumers searching for “Trader Joe’s tote bags” online could be diverted to TJU’s website.
- ⚠️ TJU sells moderately priced goods and Trader Joe’s sells “affordable” products. It was unclear at the pleading stage what level of care consumers would exercise when purchasing products.
- ⚠️ Trader Joe’s failed to plausibly allege actual confusion between its products and TJU’s products.
- ⚠️ Trader Joe’s failed to plausibly allege TJU’s intent to deceive.
- ⚠️ Trader Joe’s failed to plausibly allege either party’s plans to expand their products into new markets.
The court found that the strength of Trader Joe’s mark, the relatedness of the goods, and the similarity of the marks all favored Trader Joe’s.[14] Additionally, because some of the factors favored Trader Joe’s while the remaining factors were neutral, the 9th Circuit reversed the district court’s dismissal of Trader Joe’s trademark infringement claim and remanded to determine if consumers would likely be confused as to the origin of TJU’s products.[15]
2. Nominative Fair Use as a Defense to Confusion.
The goals of trademark include the prevention of confusion in the marketplace as to the source of certain goods and services and the protection of a trademark owner’s goodwill and reputation.[16] In certain situations, however, someone other than the trademark owner may use the mark if the use is deemed “fair use.”[17] There are two types of fair use in cases of alleged trademark infringement: (1) descriptive fair use and (2) nominative fair use. Descriptive fair use allows the use of another’s trademark to describe the user’s products or services, rather than as a trademark to indicate its source.[18] This usually is implicated where the trademark concerned has a descriptive meaning in addition to its secondary meaning as a trademark and brand identifier.[19] For example, using the words “sweet-tart” in advertising to describe the flavor of cranberry juice was permissible despite the existence of the SWEETARTS trademark for candy.[20]
On the other hand, nominative fair use applies when a defendant uses a trademark to describe the plaintiff’s products or services, rather than its own.[21] Under a nominative fair use analysis, a court analyzes “where a defendant has used the plaintiff’s mark to describe the plaintiff’s product, even if the defendant’s ultimate goal is to describe his own product.”[22] But nominative fair use is not without its limits. As first expressly articulated by Judge Kozinski in the 9th Circuit’s 1992 decision in New Kids on the Block v. News America Publishing, nominative use is permissible so long as: (1) the product or service in question is not readily identifiable without use of the trademark; (2) only so much of the mark as is reasonably necessary to identify the product or service is used; and (3) use of the mark does not suggest sponsorship or endorsement by the trademark owner.”[23]
Why do we have the doctrine of nominative fair use? The rationale behind nominative fair use is a practical one; it is difficult in certain instances to refer to the good without using the name of the good itself.[24] For example, using a “Barbie doll” in certain photographic depictions sold commercially[25] and using the name of the boy band “New Kids On The Block” to conduct polls[26] are illustrations of permissible nominative fair use, so long as consumers are not misled into thinking the trademark owner endorsed the use. These examples illustrate non-confusing referential use, the reason nominative fair use can allow one’s use of another’s trademark. But in the spirit of fair use, users referencing another’s trademark should take care to ensure that honest commercial practices are employed, avoiding suggestion of association or endorsement with the trademark owner that could depreciate the value of the goodwill in the mark.
It is important to note that likelihood of confusion is not necessarily dispositive of fair use claim.[27] And in some courts, in this instance the Ninth Circuit, the nominative fair use defense offers an alternative framework to the multifactor confusion test under which to permit such use anyway.
So how does nominative fair use apply to the union context? Courts have recognized the importance of a union’s interest in using employer names and branding elements “to instill a measure of collective identity . . . .”[28] And so long as a union’s use of a trademark is clearly referential and not competitive, courts may allow the nominative fair use of the mark to establish the connection between a union and the employer. But the 9th Circuit chose not to apply a nominative fair use analysis because TJU did not assert a nominative fair use defense in the district court.[29] Nominative fair use defenses are not granted where nominative fair use defenses are not raised. The 9th Circuit ruled that the district court erred in dismissing Trader Joe’s dilution claim by invoking nominative fair use on its own and thus improper.[30]
The unresolved question remains: when does a union’s use of an employer’s branding cross the line from fair identification into infringement? Will nominative fair use save the day for the Union? If the district court addresses that issue upon remand, the answer to these questions will help draw that line for how nominative fair use will operate in the labor context in the future.
3. Norris-LaGuardia Act.
The purpose of the NLGA was to restrict federal district court judges from issuing injunctions “in cases involving or growing out of labor disputes.”[31] The district court ruled that they lacked jurisdiction to issue Trader Joe’s injunctive relief against TJU due to the restrictions defined in the NLGA, an act passed by Congress “to eliminate . . . the frequently misused labor injunction.”[32] The 9th Circuit disagreed and remanded for further consideration, stating that the record was insufficient to actually determine if the “employer-employee relationship [is] the matrix of the controversy.”[33]
The NLGA restricts federal courts from issuing injunctions in labor disputes,[34] but its reach into trademark disputes is yet to be defined. The judicial dissonance between the courts’ interpretations of the NLGA may set a precedent for similar cases in the future: any dispute between employer and union may bar any injunctive relief of any kind so long as the labor dispute is ongoing and unresolved. The 9th Circuit’s caution in making such a determination without a sufficiently developed record reflects judicial caution about overextending the NLGA into intellectual property disputes. The implications of establishing a precedent of this kind highlights the tensions between trademark claims and union activity.
Similar Recent Cases Involving Employer-Union Trademark Disputes.
Starbucks v. Workers United
In November 2023, Starbucks brought an action against Workers United, a union representing Starbucks employees, for trademark infringement and brand dilution due to Workers United’s unauthorized use of its name and similar logos copying the famous Starbucks logo.[35] Starbucks claims that Workers United’s communication on X, formerly known as Twitter, caused consumer confusion when the union posted “Solidarity with Palestine” while using the Starbucks mark. Starbucks received hundreds of complaints from consumers who confused the union campaign’s Palestinian solidarity tweet with the company itself,[36] concluding that the similarities in the logos evidenced actual confusion in the marketplace and reputational harm.[37]
As of February 2025, Starbucks and Workers United dropped their respective suits and are working out details in mediation.
Medieval Times v. Medieval Times Performers United
Medieval Times in 2023 brought suit against Medieval Times Performers United (“MTPU”), a union made up of Medieval Times performers, alleging that the elements featured in MTPU’s logo (i.e., castle, swords, old script style text) and the use of “Medieval Times” in its name, all resemble elements of Medieval Times’s branding.[38] According to Medieval Times, relief was required because consumers are likely to be confused into thinking that it endorses, sponsors or is affiliated with MTPU.”[39] The district court ultimately dismissed the case, finding that there is no plausible likelihood of confusion because “neither a side-by-side comparison nor the overall impression is confusingly similar.”[40] Unlike the 9th Circuit’s approach in Trader Joe’s, the district court in Medieval Times showed greater deference to union expression and reflects the varying judicial tolerance for employer mark use in the labor union context.
Analyzed together, a pattern emerges: companies are invoking trademark law to chill certain union activity, and the dissonance among the courts in their interpretation of the various governing statutes suggests they are struggling to balance federal trademark protection with union rights.
Implications: What does this mean moving forward?
Trader Joe’s highlights that striking a balance between trademark protection and union rights is delicate business. In the eyes of employers, the outcome of this case may signal that trademark suits against unions can survive so long as confusion is plausible. For unions, the court will likely advise against using employer marks in commerce.
An important takeaway from Trader Joe’s includes the evolving landscape of nominative fair use. As discussed above, nominative fair use protects a trademark owner’s mark through acceptable third-party uses. But through the lens of labor unions, the protection of that use becomes less clear. Unions often utilize an employer’s name as an identity tool to signal their relationship to the employer, but Trader Joe’s shows us that unions using an employer’s name to sell competing merchandise crosses the line. Future courts will likely need to devise tests to determine if certain products sold in commerce by a union fall under fair use or infringement when those products involve an employer’s federally registered trademark. The outcome in Trader Joe’s on remand could shape how courts navigate the intersection of trademark and labor law, writing the playbook on how brands and unions can coexist without confusing consumers.
Conclusion.
The legal battle in Trader Joe’s sheds light on the delicate balance of trademark law and labor rights, and how those rights continue to collide. The outcome in Trader Joe’s on remand may have lasting effects on how companies and unions navigate the complexities of trademark rights and union efforts.
Fair use should allow unions the ability to reference their employer in their organizing efforts. However, when those efforts extend into commercial territory, particularly when that commerce involves the sale of goods bearing the employer’s protected trademark, the line between fair use and infringement begins to grow more brittle. Trader Joe’s highlights this potential breaking point and will likely influence how future courts interpret nominative fair use in the union context.
Employers should resist threatening legal action against unions to suppress their activity because weaponizing trademark law in the way shown in Trader Joe’s risks undermining good faith efforts by unions to represent employees effectively. When trademark law is used as a tool of retaliation, its enforcement can chill union activity and weaken the employer’s credibility in the courts and in the eyes of the public. On the other side of the coin, unions should ensure that their branding avoids confusing similarities in the eyes of the consuming public because keeping the distinction clear between union identity and employer branding will help shield unions from potential infringement claims. This distinction becomes necessary when determining if a union’s use of an employer’s trademark is solely referential and noncommercial, the foundation upon which fair use rests.
Upon remand, Trader Joe’s will determine just how far the doctrine of nominative fair use stretches into the labor union protections, potentially setting a precedent for trademark and labor conflicts to come.
[1] See Trader Joe’s Co. v. Trader Joe’s United, 150 F.4th 1040, 1046 (9th Cir. 2025).
[2] Id. at 1047.
[3] Id. at 1046-47.
[4] Id. at 1046.
[5] See Trader Joe’s Co. v. Trader Joe’s United, 2024 U.S. Dist. LEXIS 15511, 19-20 (C.D. Cal. 2024).
[6] Id. at 21.
[7] Id. at 9.
[8] Trader Joe’s, 150 F.4th at 1045.
[9] Id.
[10] Id. at 1055.
[11] Id. at 1048 (reiterating that in reviewing Rule 12(b)(6) motions for dismissal, circuit courts “consider only the complaint, materials incorporated into the complaint by reference, and matters of which the court may take judicial notice.”).
[12] Id. at 1048-49.
[13] Id. at 1054.
[14] Id.
[15] Id.
[16] See Rebecca Tushnet, Registering Disagreement: Registration in Modern American Trademark Law, 130 Harv. L. Rev. 867, 874 (2017) (citing 3 J. Thomas McCarthy, McCarthy On Trademarks And Unfair Competition § 19:1.75 (4th ed. 2013), https://harvardlawreview.org/wp-content/uploads/2017/01/867-941-Online-updated.pdf.
[17] 15 U.S.C. § 1115(b)(4) (2000).
[18] Fact Sheet: Protecting a Trademark, Int’l Trademark Ass’n, https://www.inta.org/fact-sheets/fair-use-of-trademarks-intended-for-a-non-legal-audience/ (last visited Nov. 9, 2025).
[19] Id.
[20] See Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 925 F. Supp. 2d 1067 (9th Cir. 2012) (quoting Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055, 1059 (7th Cir. 1995) (describing cranberry juice as “sweet-tart” in advertising was deemed descriptive fair use because it accurately described the product’s characteristics).
[21] See New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 308 (9th Cir. 1992).
[22] Carl Regelmann, Trademark Nominative Fair Use: The Relevance of the “New Kids on the Block Factors” after the Supreme Court KP Permanent Make-Up v. Lasting Impression Decision, 16 DePaul-LCA J. Art & Ent. L. & Pol’y 1, 5-6 (2005), https://files.core.ac.uk/download/pdf/232975284.pdf.
[23] Id.
[24] See Playboy Enters. v. Welles, 279 F.3d 796, 803 (9th Cir. 2002).
[25] See Mattel Inc. v. Walking Mt. Prods., 353 F.3d 792 (9th Cir. 2003) (holding that defendant’s use of a Barbie doll qualifies as fair use because “is highly unlikely that any reasonable consumer would have believed that Mattel sponsored or was affiliated with [defendant’s] work).
[26] See New Kids on the Block, 971 F.2d at 309 (determining that newspapers’ references to the band name were only used to the extent necessary to identify the band as the subject of the polls).
[27] Michael B. Weitman, Fair Use in Trademark in the Post-KP Permanent World: How Incorporating Principles from Copyright Law Will Lead to Less Confusion in Trademark Law, 71 Brook. L. Rev. 1665, 1666 (2006); See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) (holding that a fair use defense can succeed when some consumer confusion exists). See also Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211 (3d Cir. 2005) (discussing the role of nominative fair use after KP Permanent).
[28] What Not to Do: Get Distracted by Union Use of Company Trademarks, Management Report for Nonunion Organizations, Volume 47: 2-8 (2024), https://onlinelibrary.wiley.com/doi/epdf/10.1002/mare.31080.
[29] Trader Joe’s, 150 F.4th at 1054.
[30] Id. at 1055.
[31] Charles O. Gregory, Government by Injunction Again, 14 U. Chi. L. Rev. 363 (1947), https://chicagounbound.uchicago.edu/uclrev/vol14/iss3/6.
[32] A. B. R., Labor Law – Norris-LaGuardia Act – Application to Anti-Trust Prosecution of Labor Union, 3 La. L. Rev. 646, 647 (1941), https://digitalcommons.law.lsu.edu/lalrev/vol3/iss3/12.
[33] Trader Joe’s, 150 F.4th at 1055 (quoting Jacksonville Bulk Terminals v. Int’l Longshoremen’s Ass’n, 457 U.S. 702, 712-13 (1982)).
[34] Gregory, supra note 30, at 363.
[35] Complaint at 3, Starbucks Corp. v. Workers United, No. 3:23-cv-00068 (S.D. Iowa Nov. 10, 2023).
[36] Id. at 20-21.
[37] Id. at 21.
[38] Medieval Times U.S.A., Inc. v. Medieval Times Performers United, 695 F. Supp. 3d 593, 597 (D.N.J. 2023).
[39] Could Forming A Union Spark A Trademark Battle?, Gottlieb, Rackman & Reisman, P.C., (2023) https://grr.com/publications/could-forming-a-union-spark-a-trademark-battle (last visited Nov. 9, 2025).
[40] Medieval Times, 695 F. Supp. 3d at 601.