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Confusing a Shoe with a Candy?

It seems a bit of a stretch, but the maker of the Tootsie Roll candy is suing the maker of the Footzyroll woman’s shoe because, as the ABA Journal reports, the candy maker believes there may be confusion about whether the two products are in fact affiliated. Really? Are these two products likely to confuse consumers?

The test for infringement of federally registered marks is “likelihood of confusion.” See M2 Software, Inc. v Madacy Entertainment (9th Cir 2005) 421 F3d 1073, 1080.

Actual confusion is the best evidence of a likelihood of confusion (Union Carbide Corp. v Ever-Ready, Inc. (7th Cir 1976) 531 F2d 366, 383), but the absence of actual confusion doesn’t mean it’s game over. When there’s no actual confusion, the court considers the following factors to determine whether there is a likelihood of confusion (AMF, Inc. v Sleekcraft Boats (9th Cir 1979) 599 F2d 341, 348):

  • The strength of the mark;
  • The proximity of the goods in question;
  • The similarity of the marks;
  • Any evidence of actual confusion;
  • The marketing channels used;
  • The types of goods at issue;
  • The degree of care likely to be exercised by the purchaser;
  • The defendant’s intent in selecting the mark; and
  • The likelihood of expansion of the product lines.

But even this test has been held inapplicable when the goods involved are not “related.” A district court in Network Network v CBS, Inc. (CD Cal 2000) 54 USPQ2d 1150 wrote that it had “no need to conduct” the Sleekcraft analysis when the goods at issue “could not possibly be associated by a rational buying public.” So, are a Tootsie Roll and a soft women’s shoe that can be rolled up and put into her purse “related”? 

Under any test for the likelihood of confusion, Tootsie Roll may end up on the short end of the little brown, sweet stick. As trademark lawyer David Donahue of Fross Zelnick Lehrman & Zissuis told the ABA Journal, the candy maker is “more likely to succeed in its claim of brand dilution than likelihood of confusion, since the product and packaging are different.”

What do you think? Will the Tootsie Roll makers reap sweet success with this lawsuit?

For everything you need to know about trademark infringement issues, turn to CEB’s California Business Litigation, chap 6. On trademark issues arising in cyberspace, check out CEB’s Internet Law and Practice in California, chap 3. For a basic primer on trademark law, CEB has the program Basics of Trademark Law, available On Demand.

© The Regents of the University of California, 2012. Unauthorized use and/or duplication of this material without express and written permission from this blog’s author and/or owner is strictly prohibited.

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