Tootsie Roll v. Footzyrolls

By Maria Cheung

Reviewed by Jennifer Williams

The Chicago based candy giant Tootsie Roll Industries (“Tootsie”) is suing Rollashoe, a small footwear company that makes rollable ballet slippers, for trademark infringement. According to the lawsuit filed in federal court in Illinois, Rollashoe whose shoes are marketed under the name Footzyrolls, is infringing on the brand name of Tootsie Roll.

 

Tootsie, which made $521 million in sales last year, is arguing that Footzyrolls will confuse and deceive consumers and that the “willful, malicious and fraudulent” behavior of Rollashoe will dilute or tarnish the Tootsie Roll brand. Footzyrolls have been around since 2009, when Rollashoe registered the mark with the Patent and Trademark Office. At that time, Tootsie tried to block that registration but failed. Tootsie further alleges that the Footzyrolls name constitutes “copying” and “counterfeiting” of the Tootsie Roll trademark. The candy company is seeking damages and an order blocking Rollashoe’s use of the Footzyrolls name. Lawyers for Tootsie and company officials have yet to officially comment on the matter.

“This lawsuit is completely frivolous and has no merit,” Rollashoe owners Sarah Caplan, 28, and Jenifer Caplan, 34, said in a statement. “This is just another example of Tootsie Roll trying to bully a minority-owned women’s small business.” The Caplan sisters founded Rollashoe and said that the idea for the shoes came not from the famous candy but was initially thought of by Sarah, whose love for high heels always hurt her feet. “All through college I would carry a large bag with me with an extra pair of comfy shoes to change into when my feet started to burn at the end of the night,” Sarah said. “My friends would make fun of me all the time.” But then, she wondered why no one had thought about making shoes that could conveniently fit into a small handbag. And with that the Footzyrolls were born in 2009. Within a year, Footzyrolls would become a million-dollar brand, even featured in Oprah’s magazine. The shoes are now sold in stores like Bloomingdales and Fred Segal.

Over the past year and a half, the Caplans have spent thousands of dollars in legal fees although their business has grown and is expected to make $3 million in sales next year. “With all that money, we could have hired more people,” Sarah said. She added that that the conflict has been a “huge impediment” to securing lucrative licensing deals for Footzyrolls.

“Look, every company has the right to protect their trademark,” said John Driscoll, attorney for the Caplans. However, Driscoll noted that the lawsuit could hurt his client’s business. “Tootsie Roll is flexing its muscle. This case could now proceed for another year. It will cost the Caplans a lot of money. It could kill their business,” he said.

Trademark law was originally created to avoid consumer confusion over branding, thus protecting consumers from deceit and harm not only from fake goods but from deceptive companies. However, I think lawsuits such as this one simply abuse trademark law. I find it difficult to understand why Tootsie feels threatened by the shoe brand. While the names do sound similar, I do not think a person shopping for these shoes will stop and wonder if the shoes are related to the candy maker. Tootsie does license its trademark for clothing, socks and accessories, but Footzyrolls are not being marketed to fans or consumers of the candy. Footzyrolls are simply conveniently packed ballet slippers that are rolled so that women can easily transport them in their handbags and slip them on when their feet hurt from high heeled shoes. As for tarnishing the brand, I wonder whether a shoe company could really have the impact of tarnishing a candy brand, especially one as famous and well known as the Tootsie Roll. An attorney quoted in a Reuters article about the case seems to think Tootsie may have a valid dilution claim as 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 [Trademark Dilution Revision Act of 2006].” Only time will tell whether Tootsie can effectively prove that these shoes marketed to busy modern women actually infringe on its iconic candy mark.

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