You know those stupid and annoying "tree shaped" car air fresheners you see every damn where? Of course you do. The company behind those "Little Trees" is called Car-Freshner Corporation, and it’s notoriously overprotective of whatever trademark it thinks it has. Way back in 2009, we wrote about the company and an absolutely ridiculous ad it had taken out in Photoshop User Magazine:
At the time, we noted how odd it was to take out a full page ad warning people against supposed trademark infringement, and over-claiming its own rights at the same time (e.g., "no matter how you use it."). So it comes as little surprise that Car-Freshener corporation is a bit of a trademark bully in court. Though, perhaps it’s met its match — and it may result in it losing some trademarks.
Trademark lawyer Marty Schwimmer, who runs the excellent Trademark Blog, is representing a non-profit organization, Sun Cedar, that has been sued by Car-Freshener for daring to create tree-shaped blocks of wood (cedar!) that smell good. The answers and counterclaims from Sun Cedar is worth the read in full, but we’ll hit a few high points here. Sun Cedar is not just a non-profit, but an organization that tries to train and to employ "at risk" individuals, including those who are homeless, ex-felons and substance abusers to help them get back on their feet. The organization creates objects out of wood, including tree shaped ornaments. It even ran a very successful Kickstarter project last year.
So, yeah, both organizations make tree shaped objects that smell nice. But that’s about the extent of it. To argue that only the Little Trees trademark extends that far is a huge reach. In comparing the two, Sun Cedar’s response points out that the only real similarities are the idea of a pine tree — and that’s not protectable.
Sun Cedar does not use any distinctive element that Plaintiffs could arguably claim as a mark (such as the saturated green field or block base in its Tree Design). It is questionable whether Plaintiffs can assert rights in either a blank silhouette of a tree or a blank configuration of a pine tree, because Plaintiffs (1) chose the pine tree outline for functional reasons (to the point of patenting the shape); and (2) have abandoned the blank silhouette registrations, as they do not use blank silhouettes as trademarks in commerce. Finally, Sun Cedar’s $10, thick, wooden ornaments are sold on its website, through Kickstarter, and in “green” retail stores, as opposed to in the gas stations and car washes that sell Plaintiffs’ approximately $1.00 cardboard-thin cellulose car fresheners. The two products never have and never will be offered for sale side by side in any retail setting.
Now, if you follow the law around trademarks and patents there are a couple of eyebrow raising statements in that paragraph above, beyond just the "hey, our trees are nothing like your trees and there’s no chance of confusion." That’s the standard "no likelihood of confusion" defense to trademark claims. And it’s a good one here, because, really, those are pretty different. And it’s ridiculous to argue that any tree shaped thing that smells nice infringes — especially since there are lots of other such products:
But, as mentioned above, there are other serious problems here called out in the response and counterclaims that could mean that Car-Freshener is going to lose some of the trademark protections it likes to claim it has. First up: the patent issue. What’s that got to do with anything? Well, you see Car-Freshener apparently also got itself a patent on its design, patent 3,065,915, granted back in November of 1962. As you’re probably aware, that patent is now long expired. But what does that have to do with the trademark? Well, the patent — which is technically on the system for removing the car freshener from the packaging over a period of time to release the smell, claims that the tree-shaped design is actually functional to make all this work:
Upon information and belief, this diagram illustrates the system claimed by the ’915 Patent. Specifically, the diagram consists of seven images, each showing the body of the air freshener in different stages of removal from the cellophane package over a seven week period. A notch is cut in the center of the cellophane. The first week, the packaging is pulled down to the first branch and only the top of the tree is exposed. The second week, the packaging is pulled down to the second branch, exposing more of the tree, and the cellophane is tucked under the corresponding branches. This continues until the seventh week, when the tree is removed completely from the packaging.
This matters to trademark law because you can’t trademark functional design. That’s what patent law is for. So Sun Cedar is arguing that the entire trademark here is invalid because it tried to trademark a functional design, and the fact that it’s functional is proven by Car-Freshener’s own patent. That’s a neat legal judo move.
In short, upon information and belief, the shape of the Tree Design is essential to the use or purpose of the article for which it is registered, namely air fresheners. As such, the Tree Design is functional and is not entitled to registration, pursuant to Section 14(3) of the Lanham Act, 15 U.S.C. § 1064(3).
The filing also argues that the rectangular block base of Little Trees fresheners is also functional since it’s used to display names or the type of scent or other information.
The other interesting argument is that Car-Freshener actually abandoned the actual design in the trademarks that it holds on Little Trees. It gives a few examples of this, but we’ll show one here to demonstrate. In arguing that Car-Freshener has abandoned trademarks like US Reg. No 1,781,016, the filing points out that the actual trademark is for a silhouette of the tree shape:
But that the products it’s offering, which it claims show the use in commerce, are not of the silhouette, but quite different:
I will admit that this part — claiming abandonment — feels like more of a stretch to me. Frankly, it seems the case should be won solely on the lack of any likelihood of confusion. But the patent argument saying that the tree-shaped design is functional and therefore cannot be covered by trademark sure is a fun one. It will be interesting to see how this goes in court — and whether or not Car-Freshener’s trademark bullying over its Little Trees products results in the company actually losing some or all of its trademarks…
via Techdirt. http://bit.ly/2bANg1P