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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

TOOTSIE ROLL INDUSTRIES, LLC

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.

COMPLAINT AND JURY DEMAND

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

Gecko Media LLC, SnarfDogz Clothing Co.

THE PARTIES

1. Plaintiff, Tootsie Roll Industries, LLC, is a limited liability company with

a principal place of business at 7401 South Cicero Avenue, Chicago, Illinois 60629.

2. On information and belief, Defendant, James Mac Donald (“Mac

Donald”) is an individual with an address at 83 Sandcastle Drive, Ormond Beach, Florida

32176, who operates more than one website, including at least the sites at snarfdog.com

and juicygecko.com.

JURISDICTION AND VENUE

3. This action alleges trademark infringement, false designation of origin,

and dilution under the Lanham Act, 15 U.S.C. § 1051, et seq., and trademark

infringement, false designation of origin, trademark dilution, and unfair competition

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under state law. This Court has jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338, and

1367.

4. Snarfdog.com and juicygecko.com, on information and belief, operated by

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.

Accordingly, personal jurisdiction over Mac Donald in this District is proper.

PLAINTIFF AND ITS RIGHTS IN THE TOOTSIE MARKS

5. Tootsie is a well known and famous producer of quality candy items,

which have been sold all over the world.

6. Tootsie’s predecessor in interest first used the TOOTSIE trademark in

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

predecessors and licensees.

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.

8. Among other United States trademark registrations, Tootsie is the owner

of the following United States registrations, which are for the marks indicated, for the

goods indicated, and which issued on the dates indicated:

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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;

Stationery box sets,


stickers, notebooks,
diaries, pencils,
erasers, non-
graduated rulers,
address books, self
adhesive paper, gift
tags, greeting cards,
folders, blank
journals, pens,
scented markers, and
scratch and sniff
stickers;

Picture frames, non-


metal and non-
leather key chains;

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

1449095 ice cream 1987-07-21

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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

1988251 TOOTSIE ROLL house mark for 1996-07-23


candy
1369332 TOOTSIE ROLL candy 1985-11-05
1490388 candy 1988-05-31

(lined for colors orange and


brown ( hereinafter, “Tootsie
Stripes”))
1434879 candy 1987-03-31

1080381 TOOTSIE plastic containers for 1977-12-27


candy
2536259 TOOTSIE candy 2002-02-05
75218 chocolate candy 1909-09-14

2147822 SUGAR DADDY candy 1998-03-31


544252 candy suckers 1951-06-26

2970076 SUGAR DADDY Cosmetics, skin 2005-07-19


soap, non-medicated
lip balm, lip gloss,
body lotion
3153940 candy 2006-10-10

(Hereinafter “Owl”)

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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

goods can be found a tootsieshop.com.

10. Tootsie’s registration nos. : 1635634; 1529906; 963446; 1302714;

1988251; 1369332; 1490388; 1434879; 1080381; 2536259; and 2147822 are

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,

including candy and clothing items.

13. In addition, in view of long-standing use, substantial sales, wide-spread

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

distinctive, being associated exclusively with goods provided by or authorized by

Tootsie.

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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

use of the marks in association with candy and clothing items.

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.

17. Each of the Tootsie Marks is a distinctive, famous trademark owned by

and associated with Tootsie.

18. Each of the Tootsie Marks was adopted, used and established as a

trademark by Tootsie or Tootsie’s predecessors prior to any use by Mac Donald.

19. Each of the Tootsie marks became famous prior to the commencement of

Mac Donald’s infringement.

DEFENDANT’S INFRINGEMENT

20. On information and belief, Mac Donald is an internet retailer, having

Internet websites at least at the following addresses: snarfdog.com and juicygecko.com.

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,

POPS, the Tootsie Stripes, Owl and HOW MANY LICKS.

22. On information and belief, Mac Donald began selling products to

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customers in commerce in or around 2005, and began selling the accused products in

commerce at some point thereafter.

23. Exhibits A through P, attached hereto, are printouts from Mac Donald’s

websites, juicygecko.com and snarfdog.com, showing representative infringing goods.

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

under the Lanham Act.

25. On information and belief, in or around 2007, Mac Donald sold products

bearing some of the Tootsie Marks through eBay.

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

infringement by letter to SnarfDogz from Tootsie’s counsel.

29. In September 2007, Mac Donald agreed to discontinue his infringement,

and he did remove his items from eBay.

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.

31. Mac Donald has registered snarfdog.com through an anonymous domain

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

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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

exceptional under the Lanham Act.

COUNT I
(Trademark Infringement and Counterfeiting
Under 15 U.S.C. § 1114 and Common Law)

33. The allegations of the paragraphs above are incorporated by reference.

34. Tootsie is the owner of each of the Tootsie Marks at common law.

35. In addition to Tootsie’s rights at common law, Tootsie is the owner of

U.S. Trademark Registration Nos. 3026576, 1635634, 1529906, 1449095, 963446,

1302714, 1988251, 1369332, 1490388, 1434879, 1080381, 2536259, 75218, 2147822,

544252, 2970076, 3153940.

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

that is likely to cause confusion, mistake or to deceive as to origin, sponsorship or

affiliation of Mac Donald’s goods, thereby infringing Tootsies’ registered rights under

the Lanham Act and infringing Tootsie’s rights under common law.

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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.

38. Mac Donald’s infringing actions have damaged Tootsie in an amount to be

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

goods including clothing.

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

is entitled, at its election, to all relief authorized under 15 U.S.C. § 1117(c).

COUNT II
(False Designation and Unfair Competition Under 15 U.S.C. § 1125(a))

44. The allegations of the paragraphs above are incorporated by reference.

45. Each of the Tootsie Marks and the family of Tootsie Marks are well-

known and distinctive marks, associated with Tootsie.

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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

similar marks, colorable imitations of the Tootsie Marks, or counterfeits in commerce on

goods that are unauthorized by Tootsie, and such use is likely to cause confusion, to

cause mistake or to deceive as to the affiliation, connection, association of Mac Donald

with Tootsie or as to the origin, sponsorship of approval of Mac Donald’s goods by

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

false designation of origin and unfair competition pursuant to 15 U.S.C. § 1125(a).

49. Tootsie has been damaged by Mac Donald’s actions in an amount to be

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))

52. The allegations of the paragraphs above are incorporated by reference.

53. Each of the Tootsie Marks is distinctive and became famous long prior to

Mac Donald’s use of the Tootsie Marks or replicas thereof.

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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

by tarnishment of each of the Tootsie Marks.

55. Tootsie has been damaged by Mac Donald’s dilution in an amount to be

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

unless Mac Donald’s dilution is enjoined by this Court.

COUNT IV
(State Dilution, Mass. Gen. Laws. Ch. 110H)

58. The allegations of the paragraphs above are incorporated by reference.

59. By his above-described conduct, Mac Donald has engaged in trademark

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

violation of Massachusetts General Laws Chapter 110H, § 13.

60. Tootsie has been damaged by that conduct in an amount to be determined

at trial, and is further entitled to injunctive relief.

COUNT V
(Common Law Unfair Competition)

61. The allegations of the paragraphs above are incorporated by reference.

62. By his above-described conduct, Mac Donald has engaged in unfair

competition under the common law of Massachusetts.

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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

For the above reasons, Tootsie requests that this Court:

A. Preliminarily and permanently enjoin Mac Donald, and any entities,

websites, or stores operated, owned or controlled by Mac Donald or a successor to Mac

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

15 U.S.C. § 1117(a), or otherwise.

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C. Enter judgment that Mac Donald’s trademark infringement, false

designation of origin, dilution and unfair competition have been knowing and willful and

that this case is exceptional.

D. Order that all goods featuring infringing or diluting marks 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

limitation, all screens and presses, be destroyed pursuant to 15 U.S.C. § 1118, or

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,

pursuant to 15 U.S.C. § 1117, the Florida Fictitious name Act, or otherwise.

G. Award Tootsie treble damages pursuant to 15 U.S.C. § 1117(b), or

otherwise.

H. Award statutory damages under 15 U.S.C. § 1117(c), if elected by Tootsie

during the course of the litigation.

I. Award Tootsie such further relief as this Court may determine appropriate.

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JURY DEMAND

Tootsie demands a trial by jury.

TOOTSIE ROLL INDUSTRIES, LLC.


By its attorneys,

/s/ David Wolf


Dated: December 1, 2008 David Wolf (BBO # 532160)
dwolf@wolfgreenfield.com
Douglas R. Wolf (BBO # 560116)
drw@wolfgreenfield.com
Laura Topper (BBO # 652364)
ltopper@wolfgreenfield.com
WOLF, GREENFIELD & SACKS, P.C.
600 Atlantic Avenue
Boston, Massachusetts 02210
Tel: 617.646.8000
Fax: 617.646.8646

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