Court Not Charmed by Tootsie Roll’s Copying of Dum Dums’ Packaging

(March 17, 2019) Dum Dums spent $220,000 and 20 months to redesign its packaging in 2011, resulting in an increase in its share of the lollipop market. Its rival Charms Mini Pops took only five months and ignored its usual third-party consultant to come up with a package using elements of the Dum Dums’ package, resulting in a preliminary injunction against the redesigned bags.

A U.S. District Court judge in Ohio found that Charms, owned by Tootsie Roll Industries, LLC, “without market research and with full knowledge of the appearance of the Dum Dums bag, [] chose a package with elements that were nearly identical to that of the Dum Dum bag. . . Because Tootsie performed no market research to advise the rebranding strategy and recognized the similarity between the two packages when targeting Dum Dums’ market share, I conclude there is sufficient circumstantial evidence to find Tootsie acted with the intent to copy.”

Dum Dums, owned by Spangler Candy Company, sells lollipops in a red bag with its name in white letters, a display window, and a violator yellow oval with blue numerals. The redesigned Charms bag also is red with a display window and a similarviolator. None of the design elements were found to be functional by the court.

The court said Tootsie knew about the Dum Dums bag design when it designed the new Charms bag and then “emulated the Dum Dums trade dress with the intent of diverting business from Dum Dums through the similar design.”

The court acknowledged the Dum Dums trade dress “is not strong and there is no evidence of actual confusion. But the two companies used the same marketing channels to sell the product. While the Charms Mini Pops trade dress is distinguishable when seen alone, Tootsie intends the product to be sold side-by-side on the shelf with Dum Dums, which would increase the likelihood of confusion due to the low degree of purchaser care. This intent along with other evidence also supports a conclusion that Tootsie acted with the intent to deceive” and suggested that the “red Charms Mini Pops packaging is confusingly similar to the Dum Dums trade dress.”

Tootsie argued that it had invested $1 million in the package redesign and launch and that it would have to invest more money for a second redesign. But the court found that Tootsie already has an alternative bag for Wal-Mart one of its three nationwide distributors. To allow Tootsie to continue to use the redesigned bag would result in a loss of goodwill and reputation for Dum Dums, so the court granted the injunction.

Spangler Candy Company v. Tootsie Roll Industries, LLC, U.S. District Court, N. Dist. of Ohio, No. 18-cv-1146, issued March 13, 2019.