A judge in the Sixth Circuit Court of Appeals in Toledo, Ohio, last week agreed to a preliminary injunction on behalf of Spangler Candy Company.
In May 2018, the Ohio-based confectioner alleged that Tootsie Roll redesigned the packaging for its Charms Mini Pops to emulate Dum Dums. Spangler also claimed that Tootsie copied the yellow pallet boxes, cut out to display lollipops in retail stores, but the judge focused on the product packaging itself.
The dominant issue seems to be the red bag holding lollipops of both brands. Charms hit the shelves in a red bag ‘confusingly similar’ to Dum Dums outer packaging in July 2017. The judge concluded that Tootsie ‘acted with the intent to deceive’ because these two brands typically sit next to each other on the shelf.
Good packaging design is 'time-consuming and expensive,' said Spangler CEO Kirk Vashaw in a release, adding,"We believe in fair competition, but intentionally confusing consumers is not aligned with our family company values."
A spokesperson for the company could not comment as the case is ongoing.
Spangler spent $220,000 over the course of 20 months ‘refreshing’ its iconic Dum Dums packaging. It launched the new design in 2011.
Five years later, Tootsie unveiled its Mini Charms Pops in apparently a similar red bag. The court ruling explained that, at the time, Charms held less than a half-percent of the lollipop market. Tootsie thus developed a ‘price and value competition strategy’ to compete directly with Dum Dums in 2016, followed by a new design the next year.
Tootsie hired a third party to explore new designs but ultimately denied all of them, the court said: “Instead, with knowledge of Dum Dums trade dress and using no market research, Tootsie completely redesigned the package in only five months.”
Spangler sent a cease-and-desist letter last spring but Tootsie rejected it, leading the former to file suit in May.
The approved injunction means the judge believed that Spangler ‘is likely to succeed on the merits’ of the argument and would otherwise suffer ‘irreparable harm’ without temporary reprieve.
Tootsie does not dispute its knowledge of Spangler’s trademark, the filing added: “Tootsie not only recognized the similarity in the violators’ color scheme and proceeded to use the design anyway, but also acted with the intent that the two bags sit side-by-side in the market place.”