Professional Documents
Culture Documents
Plaintiff,
v.
JAMES MAC DONALD D/B/A SNARF DOG Civil Action No. _________
T-SHIRT CO., JUICY GECKO MEDIA LLC,
AND SNARFDOGZ CLOTHING CO.
Defendants.
Tootsie Roll Industries, LLC (“Tootsie”) brings this civil action against James
Mac Donald, on information and belief d/b/a at least as Snarf Dog T-Shirt Co., Juicy
THE PARTIES
a principal place of business at 7401 South Cicero Avenue, Chicago, Illinois 60629.
32176, who operates more than one website, including at least the sites at snarfdog.com
and juicygecko.com.
and dilution under the Lanham Act, 15 U.S.C. § 1051, et seq., and trademark
1529572.1
under state law. This Court has jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338, and
1367.
Mac Donald, advertise infringing products for purchase on interactive retail websites that
can be reached from Massachusetts. Goods from snarfdog.com were actually shipped to
Massachusetts. The snarfdog.com website also claims that its goods are provided to
national chains including Lord & Taylor, which has locations in Massachusetts.
commerce in 1908. Since then, Tootsie has been used continuously in the United States,
and has also been used in numerous other countries around the world, by Tootsie or its
7. After adopting the TOOTSIE mark, Tootsie and its predecessors continued
to adopt new and related marks for its goods, as well as to expand its use of the marks to
items other than candy, including, among other goods, clothing items.
of the following United States registrations, which are for the marks indicated, for the
1528635.1 -2-
REG. NO. MARK GOODS REG. DATE
3026576 TOOTSIE ROLL POP Cosmetics, non- 2005-12-13
medicated lip balm,
lip gloss, skin soap,
bath foam, nail
polish, and body
lotion;
Jewelry, watches,
bracelets, necklaces
and rings;
Underwear, bras,
camisoles, pants,
shirts, sweatshirts,
jerseys, headbands,
stockings, socks,
footwear, shorts,
belts, pajamas.
1635634 TOOTSIE ROLL POPS lollipops 1991-02-19
1529906 candy, namely, 1989-03-14
lollipops
1528635.1 -3-
REG. NO. MARK GOODS REG. DATE
963446 TOOTSIE ROLL toy banks 1973-07-10
1302714 Dress Shirts, Tank 1984-10-30
Tops, Sweatshirts,
Shorts, Sweaters
(Hereinafter “Owl”)
1528635.1 -4-
9. Tootsie, and/or its predecessors, have used each of the marks identified in
above-described registrations continuously since they were adopted on the goods recited
in the registration and have also used the marks on other goods (either directly or through
a licensee), including goods for which no registration was obtained, such as clothing
items, accessories, stationary, cosmetics and other novelty items. Examples of these
incontestable.
11. In addition, Tootsie and its predecessors have also used for many years the
mark HOW MANY LICKS in association with candy and other goods, such as clothing
items.
12. In view of Tootsie and its predecessors’ substantial and continuous use of
HOW MANY LICKS and each of the marks shown in paragraphs 8 and 9 (collectively
“Tootsie Marks”) for both the registered goods and other goods, including clothing items,
Tootsie has common law rights in each of the Tootsie Marks for a variety of goods,
marketing and promotional efforts and the variety of goods sold under the marks, each of
the Tootsie Marks, as well as the Tootsie family of marks, has become famous and is
Tootsie.
1528635.1 -5-
14. Sales of goods under the Tootsie Marks have been extensive and
continuous, having hundreds of millions of dollars in sales in 2007 alone, and amounting
to many millions, if not billions since the adoption of the TOOTSIE mark in 1908.
15. Tootsie, its predecessors and its licensees have collectively spent many
millions of dollars advertising and promoting goods under the Tootsie Marks, including
16. Each of the Tootsie Marks is widely recognized by the general consuming
public in the United States (and throughout the world) as a designation of the source of
Tootsie’s goods.
18. Each of the Tootsie Marks was adopted, used and established as a
19. Each of the Tootsie marks became famous prior to the commencement of
DEFENDANT’S INFRINGEMENT
21. Mac Donald sells in commerce t-shirts and baby onesies that recreate the
Tootsie Marks, including, the words and stylizations of SUGAR DADDY, TOOTSIE,
TOOTSIE ROLL, TOOTSIE ROLL POP, TOOTSIE ROLL POPS, TOOTSIE POPS,
1528635.1 -6-
customers in commerce in or around 2005, and began selling the accused products in
23. Exhibits A through P, attached hereto, are printouts from Mac Donald’s
24. In view of Tootsie Roll’s registrations, Mac Donald’s products not only
infringe Tootsie’s registered and common law rights, but they also amount to counterfeits
25. On information and belief, in or around 2007, Mac Donald sold products
26. On information and belief, Mac Donald also ships products bearing copies
of the Tootsie Marks to retail stores, both traditional and internet, for resale.
27. Mac Donald and any entities operated by him are not, and have never
been, licensed to use any Tootsie Marks, including those discussed above.
28. In September 2007, Mac Donald was put on actual notice of its
30. Despite appearing to agree to discontinue the use of the Tootsie Marks,
Mac Donald continues to sell infringing goods via at least the snarfdog.com and
juicygecko.com websites.
registration service, and, on information and belief, has taken steps to conceal his identity
and/or physical address for service of process, including: frequently changing his eBay
1528635.1 -7-
screen name; utilizing multiple addresses; utilizing multiple domain names; including on
his websites various entities names (e.g., Snarf Dog T-Shirts, Juicy Gecko Media LLC),
none of which appear in any secretary of state as registered business entities; and utilizing
a Seattle, WA telephone number despite listing his location as either Miami or Daytona.
32. Mac Donald’s above-described actions have been a willful attempt to trade
off the good will of Tootsie and to confuse customers into believing that Mac Donald’s
goods are authorized by or licensed by Tootsie, and such actions have been taken with
full knowledge of Tootsie’s rights in the Tootsie Marks. Accordingly, this case is
COUNT I
(Trademark Infringement and Counterfeiting
Under 15 U.S.C. § 1114 and Common Law)
34. Tootsie is the owner of each of the Tootsie Marks at common law.
36. Mac Donald has sold and is selling goods which use reproductions,
colorable imitations and/or counterfeits of one or more of the Tootsie Marks in a manner
affiliation of Mac Donald’s goods, thereby infringing Tootsies’ registered rights under
the Lanham Act and infringing Tootsie’s rights under common law.
1528635.1 -8-
37. Mac Donald’s actions have been with full knowledge of Tootsie’s rights
and constitute a willful attempt to trade off the good will of the Tootsie Marks and cause
consumer confusion.
determined at trial.
39. Mac Donald’s infringing actions will continue unless enjoined by this
Court.
40. Tootsie has no adequate remedy at law, and will suffer irreparable harm to
its business, reputation and goodwill unless Mac Donald’s unlawful conduct is enjoined
by this Court.
41. In addition, Tootsie’s Registration Nos. 3026576 and 1302714 are for
42. Mac Donald uses exact replicas of these registered marks on clothing, and
as such, Mac Donald’s use is the use of a counterfeit as defined under 15 U.S.C. §
1116(d).
43. Tootsie has been damaged by the use of such counterfeits, and accordingly
COUNT II
(False Designation and Unfair Competition Under 15 U.S.C. § 1125(a))
45. Each of the Tootsie Marks and the family of Tootsie Marks are well-
1528635.1 -9-
46. Through Tootsie and its predecessors’ extensive efforts, each of the
Tootsie Marks have come to enjoy a substantial reputation of high quality associated with
Tootsie.
47. Mac Donald has used, and continues to use, Tootsie Marks, substantially
goods that are unauthorized by Tootsie, and such use is likely to cause confusion, to
Tootsie.
48. Mac Donald’s actions, including the sale and advertising of goods bearing
one or more of the Tootsie Marks, and the goods identified in Exhibits A – P, constitute
determined at trial.
50. Mac Donald’s unlawful actions will continue unless enjoined by this
Court.
51. Tootsie has no adequate remedy at law and will suffer irreparable harm
unless Mac Donald’s false designation of origin and unfair competition is enjoined by
this Court.
COUNT III
(Federal Dilution, 15 U.S.C. § 1125(c))
53. Each of the Tootsie Marks is distinctive and became famous long prior to
1528635.1 - 10 -
54. Mac Donald’s use of the Tootsie Marks or marks substantially similar
thereto as described in this Complaint is likely to cause dilution by blurring and dilution
determined at trial.
56. Mac Donald’s unlawful actions will continue unless enjoined by this
Court.
57. Tootsie has no adequate remedy at law and will suffer irreparable harm
COUNT IV
(State Dilution, Mass. Gen. Laws. Ch. 110H)
dilution and caused an injury and likely injury to Tootsie’s business reputation, as well as
created a likelihood of dilution of the distinctive quality of the Tootsie Marks, all in
COUNT V
(Common Law Unfair Competition)
1528635.1 - 11 -
63. Tootsie has been damaged by Mac Donald’s conduct in an amount to be
determined at trial.
64. Mac Donald’s infringing actions will continue unless enjoined by this
Court.
65. Tootsie has no adequate remedy at law, and will suffer irreparable harm to
its business, reputation and goodwill unless Mac Donald’s unlawful conduct is enjoined.
RELIEF REQUESTED
Donald from further infringement, false designation of origin, unfair competition, and
unfair trade practices, with respect to any Tootsie marks, including, without limitation, an
order enjoining the use of the Tootsie Marks and any substantially similar marks,
including, without limitation, use of the words, in any format and in association with any
design elements, TOOTSIE ROLL POP, TOOTSIE ROLL POPS, POPS, TOOTSIE
ROLL, TOOTSIE, and SUGAR DADDY, as well as the Tootsie Stripes and Owl
designs.
B. Direct Mac Donald to pay to Tootsie its actual damages, any profits
realized by Mac Donald (including all of Mac Donald’s business entities and websites),
and Tootsie’s attorneys fees and costs of this action, including to require Mac Donald to
provide an accounting of its profits and to pay pre and post-judgment interest, pursuant to
1528635.1 - 12 -
C. Enter judgment that Mac Donald’s trademark infringement, false
designation of origin, dilution and unfair competition have been knowing and willful and
counterfeits, including, without limitation, all goods of the type appearing in Exhibits A-
P to this Complaint, and all equipment for making such goods, including, without
otherwise, and that Mac Donald provide a declaration under penalty of perjury to this
Court and Tootsie describing the means of destruction and attesting that such destruction
is complete.
E. Order that Mac Donald post his true name and address on any and all
websites that he, or any entity or person controlled by him operates, and, should Mac
Donald utilize a fictitious entity name, order that he register that name in accordance with
the Fictitious Name Act of Florida, or with the laws of the state in which Mac Donald
then resides.
F. Award Tootsie its attorney fees and costs in prosecuting this action,
otherwise.
I. Award Tootsie such further relief as this Court may determine appropriate.
1528635.1 - 13 -
JURY DEMAND
1528635.1 - 14 -