Little Tree Air Freshener Company Sues Non-Profit For Making Tree Shaped Ornaments
from the who-owns-the-trees dept
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:
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.
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:
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Filed Under: car freshener, functional design, little tree, patents, trademark
Companies: car-freshener, sun cedar
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"They're able and willing to fight back, run away!"
Not likely, I imagine once they come to fully realize that the mark isn't backing down, and in fact stands to deal some real damage to them in court if the case continues they'll quickly present a 'settlement offer'(complete with NDA of course) of some sort to drop the case as quickly as possible.
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Huh?
Uh what? The products appear very much identical to me here. It is the logos on the package which are severely simpler versions.
So arguably, the actual tree shape they purportedly trademarked is still very much in use. Just not as a trademarked logo but as a (long-expired) patented design.
This is going to be fun.
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Re: Huh?
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In civil asset forfeiture cases, possessions are prosecuted for presumed participation in crimes, so suing a forest for patent infringement and backpay (firewood, maple syrup and whatever other illicit profits have been made by the forest) seems perfectly reasonable.
U.S. patents take going nuts to an entirely new level, and trees should have to prove that their nuts don't infringe.
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It would be mildly ironic if they lost the trademark on that, given that there is no recorded instance of anyone ever using a Little Tree® (or Magic Tree® as they are known here in the UK) in the advertised fashion.
Instead, they are immediately removed completely from the packaging, and tied to the rear view mirror where they remain in perpetuity, often being joined by several more.
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So I cut a little hole in the plastic package and tossed it under the driver's seat. For weeks afterwards, a few people who came into the car asked me what I was doing because the interior smelled of flowers.
And, yeah, I've seen some cars with more than a dozen of them tied to the mirror. It's like advertising that you never clean the car.
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Re: It would be mildly ironic...
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Completely crazy. I can give another great example: a tree.
I'm pretty sure mother nature should go after these asshats for using it's design. Can't PETA represent mother nature and sue?
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So it's a super famous mark that everyone knows, but you think it's a slam dunk that a very similar product presents no likelihood of confusion? This post borders on Tim-level amateurness, Mike. If you guys are going to reach legal conclusions, rather than just report on cases, you really need to up your IP game.
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Yes. This is exactly what he is claiming. However, the only amateurish claims being made are in your response.
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The entire point in the filing is that while the products are tree shaped and are for the purpose of improving the odor of the air, that's pretty much where the similarity stops.
Plus, you missed out the entire next bit, which is that the tree shape was functionally patented, making it ineligible for trade mark registration. And the "competing" product isn't even designed to function in the same way.
Plus, as the defense pointed out, calling product confusion here would be like having product confusion between a Nissan Sentra and a Porsche because all Porsches have the shape of a car and act as a vehicle. Nevermind the fact that the overall shape is patented, that they aren't sold in the same places, and that the Porsche is 10x the price. Nope, because of the ubiquitousness of the Sentra, everyone's going to think Nissan is actually selling the Porsche, and so they will lose sales because people will buy a Porsche base on Nissan's reputation.
Does that clear it all up?
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https://en.wikipedia.org/wiki/The_Man_Who_Sued_God
its time the various churches get involved and sue the air freshener outfit, or at least get the trademark kicked...
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For once, a non-cringeworthy Kansas story
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Re: For once, a non-cringeworthy Kansas story
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Prior Art
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You keep on using this phrase. I do not think you know what it means.
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Symmetry
Just thought I'd point that out since they're *sooo* similar you can tell (*grins*)
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Bias??
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Re: Bias??
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This whole thing just smacks of the magic tree people being scared that consumers may Eshew their cheap noxious-smelling cardboard crap and spend a little more to have an actually nice-smelling air freshener that benefits a very good cause. By its very name, the cardboard trees are for *cars* and although nothing is stopping someone from hanging one of Shine's trees in their car or, for that matter- a magic tree in their closet or bathroom, I've certainly never seen it done. Seems like a waste to put one of the cedar trees in the car where the smell will dissipate so much quicker. Also- it's made me grateful that I never removed two of the cedar trees that I received from that very successful Kickstarter last year from their cellophane packages because they might well be collecter's items. I hope not though.
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