As a twentysomething female who likes to dress for success but not suffer without end in the unrelenting DC humidity, flat, practical shoes can offer a sweet reprieve from uncomfortable heels. Rollashoe’s premier product, the Footzy Roll, a ballet-style, compactible slipper can be stored easily for the girl on the go. They’re great to casually slip on after a night out on the town or for happy hour after a day in the office. They’re also edible. Just kidding.
Tootsie Roll seeks to block Rollashoe’s trademark for “Footzy Rolls” in the US Patent and Trademark Office, as Reuters reported last fall. Tootsie, which, as reported in the Chicago Tribune, earned $521 million in 2010, filed suit against Rollashoe, LLC in federal court in Chicago, claiming that Footzy Roll will confuse and deceive consumers and dilute Tootsie’s trademarks.
As reported by Reuters, the sisters Jenifer and Sarah Caplan incorporated Rollashoe in 2009 and released Footzy Rolls later that year. Tootsie Roll’s suit seeks damages, an order to block Rollashoe’s use of “Footzy Rolls” and destruction of any material bearing the Footzy Rolls logo.
Tootsie claims that both companies reach a similar class of consumers who will likely confuse the products and associate one with the other. One might wonder how Tootsie could succeed with a trademark case dependent on market confusion, where the products are so clearly different and their markets so clearly distinct.
Or are they? Let’s take a look at this:
I’m 23, female, quasi-professional and on a diet. Frankly, outside of Halloween, I can’t think of a single moment that I’ve considered the “Tootsie Roll” (aside from those really awesome Owl commercials that may still air on, I don’t know, Cartoon Network?). Wait, I fibbed, as apparently (albeit sarcastically) so did BrandGeek, TechDirt and Find Law Blog. I, too, assumed that the candy maker was also a shoe maker.
Tootsie argues in its court filings that 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.” Turns out (who knew?) that “Tootsie Roll” actually is used on clothing, including licensed footwear and accessories. Reuters reports that “Tootsie Roll socks are available for sale on websites including Amazon.com and Tootsieshop.com.”
The “who knew?” part of the above is clearly the crux of the defense for the Caplan sisters, at least with respect to the market confusion aspect of trademark infringement. But even with a successful defense on trademark infringement, Tootsie’s case seems more strongly grounded in trademark dilution rather than direct infringement.
As I sit in a small, local independently-owned, very hipster café in DC mostly surrounded by peers, a young girl using a sippy-cup suggests that she and her family go find cupcakes. I think that this girl probably sees a lot more of the Tootsie Roll brand than I do. That is, unless of course she’s not yet old enough to drag her mom down the candy aisle, she’s never watched any television and she’s never been to a birthday party.
A parody argument might help the sisters, if that were indeed what was going on here. In other words, if Rollashoe were pushing out a gag gift, say for example the Tootsie “Roll” (if you know what I mean). That would essentially be a fair use argument analogous to the similar use of copyrights for parody, or a non-“trademark use” of the Tootsie Roll trademark. (Andrew Mirsky has a nice discussion of this same subject here.) But that’s not what’s going on here, which leads us back to dilution. The Find law blog, here, notes that trademark dilution has the potential to stand up in Tootsie’s favor. Trademark dilution is kind of like this: I’ve got this great idea for a product named X but it kind of/sort of maybe sounds, looks, or somehow invokes ideas related to Y so it will make people think Y but in my head it’s just such a fitting name! So Y the issue?
Well, here’s why: Bit Law notes that trademark dilution does not require that the products involved in a dispute be related to each other. Even more broadly, trademark dilution does not require any of the same showings as trademark infringement, most importantly not requiring a showing of marketplace confusion. What dilution does require is a showing of … dilution. Or in other words: Diluting “the distinctive quality of that mark, either through “blurring” or “tarnishment” of that mark.” Harvard’s Berkman Center for Internet and Society cites the examples of Kodak brand bicycles or Xerox brand cigarettes:
Although neither example is likely to cause confusion among consumers, each dilutes the distinctive quality of the mark. Tarnishment occurs when the mark is cast in an unflattering light, typically through its association with inferior or unseemly products or services. So, for example, in a recent case, ToysRUs successfully brought a tarnishment claim against adultsrus.com, a pornographic web-site. Toys “R” Us v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal. Oct. 29, 1996).
Here, in our Tootsie Footzy case, a name that sounds like an established (or “famous”, in trademark parlance) other product dilutes that other product’s distinctiveness. History and revenue are both indicative of Tootsie Roll’s upper hand in the fame department. So by default, Tootsie Roll is protected because the distinctiveness of its brand is on the line.
Reuters reports that the girls expect to make about $3 million this year, much of which may go to fighting this case. The blogging (informal) consensus is that Tootsie’s continued pursuit of these proceedings has been unnecessary and perhaps abusive. The sentiment does not necessarily draw from knowledgeable trademark law but from apparent sympathy with the Caplan sisters and their clever little business. And really, who knew? Who really knew that Tootsie Roll made shoes? Isn’t that really the problem here?
Andrew Mirsky, an attorney and principal of Mirsky & Company, PLLC, contributed to this post.
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