Nov 21 (Reuters) - The maker of Tootsie Roll candy is suing
a small shoe company over its Footzyrolls brand of shoes that
roll up into compact bundles.
In a lawsuit filed last week in Illinois federal court,
Chicago-based Tootsie Roll Industries accused Rollashoe of
intentionally preying on its famous trademark used for
lollipops and chewy candies since 1908.
Footzyrolls "so resembles each of the Tootsie Roll Marks in
sound, commercial impression and appearance that when used in
association with footwear, it is likely to cause confusion, to
cause mistake or deceive," Tootsie Roll said in its
The candy giant said both companies were targeting a
similar class of consumers likely to assume the rollable
slippers are affiliated with Tootsie Roll. The candy company
licenses the use of its "Tootsie Roll" trademark for clothing,
footwear and accessories. Tootsie Roll socks are available for
sale on websites including Amazon.com and Tootsieshop.com.
The complaint described Rollashoe's branding as "willful,
malicious and fraudulent."
Tootsie Roll first attempted to block Rollashoe's
registration of Footzyrolls in the Patent and Trademark Office
over a year ago, said Rollashoe's lawyer, Michael Bernstein of
The Bernstein Law Firm in Miami.
"They were not getting any traction," he said, so Tootsie
Roll decided to start over in federal court. He said Tootsie
Roll had no evidence that any customers were confusing
Footzyrolls with the candy brand.
Sisters Jenifer and Sarah Caplan started Rollashoe in early
2009 after conceiving the idea for a collapsible women's shoe
small enough to fit into a purse and provide relief from high
heels. In addition to Footzyrolls, they applied to register the
Footzyfolds trademark for foldable shoes as well as
"All our products have names associated with Footzy, the
next part describes what it is," said Jenifer Caplan. She said
Tootsie Roll has tried to block Rollashoe from registering all
Footzy variations in the Patent and Trademark Office. "Whatever
we apply for now, Tootsie Roll opposes us," she said.
Tootsie Roll's lawyer, John Riccione, did not immediately
respond to a request for comment.
The suit accuses Rollashoe of trademark infringement and
diluting or blurring Tootsie Roll's brand name.
David Donahue, a trademark lawyer at Fross Zelnick Lehrman
& Zissu not involved in the litigation, said Tootsie Roll may
have difficulty proving likelihood of confusion, given the
companies' different target markets. Footzyrolls are being
marketed to women who want an extra pair of shoes on the go,
not fans of Tootsie Rolls, he said. In addition, the shoe brand
bears little resemblance to the candy brand in terms of font
and packaging design.
The more plausible claim, Donahue said, is dilution, given
the longstanding use and renown of the Tootsie Roll trademark.
The 7th Circuit, which hears appeals from district courts in
Illinois, has not yet ruled on the issue of dilution since the
Trademark Dilution Revision Act was passed in 2006. But the 2nd
and 9th Circuits have held that the trademarks don't have to be
almost identical or substantially similar to win a dilution
claim under the act.
Tootsie Roll is seeking damages and an order blocking
Rollashoe's use of the Footzyrolls name.
The case is Tootsie Roll Industries LLC v. Rollashoe LLC,
U.S. District Court, Northern District of Illinois, No.
For Tootsie Roll Industries: John Riccione of Aronberg
Goldgehn Davis & Garmisa.
For Rollashoe: Michael Bernstein of The Bernstein Law
(Reporting by Terry Baynes)
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