Orange County - Tootsie Roll Industries, makers of the Tootsie Roll candy have recently filed suit in a federal district court in Illinois alleging that footwear company Rollashoes committed trademark infringement when it marketed a line of shoes called, "Footzyrolls." Tootsie Roll alleges in its complaint several causes of action ncluding trademark infringement, trademark dilution, and unfair competition.
Tootsie Roll claims that Rollashoes' ove to name the slippers "Footzyrolls" was "willful, malicious, and fraudulent." Tootsie Roll also claimed that the name will confuse consumers into believing that the shoe maker is somehow associate with Tootsie Roll.
Trademark infringement occurs when someone other than the holder of a valid trademark uses a trademark that is confusingly similar to the valid trademark. One of the Sleekcraft factors for determining trademark infringement is the similarity of the goods at issue. The products being compared in this case are footwear and candy. Footzyrolls by Rollashoes are roll up slipper shoes marketed to women and designed to be carried in handbags and purses. Rollashoes advertises that the shoes are completely roll-able and foldable.
Tootsie Roll, on the other hand, manufactures candy products. Rollashoes claims that the difference in goods is clear and that its product does not cross paths in the market with the Tootsie Roll. Sarah Caplan, co-founder of Rollashoes, noted that, "By the way, you can't eat our shoes." However, the similarity of goods is not dispositive and is merely one of several factors considered.
Tootsie Roll also included a claim for trademark dilution. Trademark dilution occurs when a trademark similar to a famous trademark is used on a non-competing class of goods in a way that lessens the impact of the original trademark. Tootsie Roll has claimed that use of the Footzyrolls brand name, a similar sounding trademark to Tootsie Roll, amounts to trademark dilution. In order to prevail on the dilution issue, Tootsie Roll must prove that its trademark is famous and that the Footzyrolls trademark has an impact on the Tootsie Roll trademark.