Little Tree Air Freshener Company Sues Non-Profit For Making Tree Shaped Ornaments

from the who-owns-the-trees dept

Tue, Aug 23rd 2016 10:30pm — Mike Masnick

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:

So, yeah.

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...

CFC-v-Sun-Answer-and-Counterclaim (PDF)CFC-v-Sun-Answer-and-Counterclaim (Text)

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Filed Under: car freshener, functional design, little tree, patents, trademark
Companies: car-freshener, sun cedar

31 Comments

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That One Guy (profile), 23 Aug 2016 @ 8:52pm

"They're able and willing to fight back, run away!"
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...

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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David, 24 Aug 2016 @ 12:50am

Huh?
You write

But that the products it's offering, which it claims show the use in commerce, are not of the silhouette, but quite different:

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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Anonymous Coward, 24 Aug 2016 @ 12:55am

But if trademark and IP law wasn't enforced who would ever plant trees or demand for air that smells a little less horrible?
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Anonymous Howard II, 24 Aug 2016 @ 3:17am

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:

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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David, 24 Aug 2016 @ 4:05am

Re:
Trees tend to spread themselves. Probably infringing patents in the course of that.

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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Anonymous Coward, 24 Aug 2016 @ 4:39am

I had planned on a tree based display this winter, now my dreams have been thrashed by the Grinch that makes stupid air fresheners. Thanks Grinch
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Paul Renault (profile), 24 Aug 2016 @ 4:52am

Re:
Heh. One of the few times I have purchased one of those Little Tree®s, I read the package instructions, as I'm wont to do. "Interesting," I thought to myself, "everyone I've seen with these is using them wrong".

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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Michael, 24 Aug 2016 @ 5:03am

it's ridiculous to argue that any tree shaped thing that smells nice infringes

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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Anonymous Coward, 24 Aug 2016 @ 5:20am

Re:
Naw, but they might well go after christmas tree vendors. After all, they're selling things that - save for the fact that they're greatly expanded and three dimensional - look very much like the air freshener product...
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Anonymous Coward, 24 Aug 2016 @ 5:27am

You know those stupid and annoying "tree shaped" car air fresheners you see every damn where? Of course you do. . . . Frankly, it seems the case should be won solely on the lack of any likelihood of confusion.

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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anonymouse, 24 Aug 2016 @ 5:45am

Just remebered this vaguely entertaining movie...
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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David, 24 Aug 2016 @ 5:54am

Re:
If God had wanted to get into design patents, he would have made up his mind about snowflakes. I mean, no two are alike.
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JB, 24 Aug 2016 @ 6:18am

For once, a non-cringeworthy Kansas story
Kudos to these guys; looks like I'll be running to Lawrence for my tree-shaped-smelly-thing needs. I wish the rest of my state would buy a clue from this "liberal" town about providing support to those in need.
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Tin-Foil-Hat, 24 Aug 2016 @ 7:03am

Prior Art
I'm just sorry trees can't sue. This is definitely prior art.
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Anonymous Coward, 24 Aug 2016 @ 7:31am

Re:
"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?"

Yes. This is exactly what he is claiming. However, the only amateurish claims being made are in your response.
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Anonymous Coward, 24 Aug 2016 @ 8:12am

Re:
Actually I've used it exactly as it's supposed to be used. Looked stupid as hell, and so I never bought any more.
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crade (profile), 24 Aug 2016 @ 8:12am

"This is privately owned property"

You keep on using this phrase. I do not think you know what it means.
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Anonymous Coward, 24 Aug 2016 @ 8:24am

Symmetry
Perhaps it's just me, but one look symmetrical and the other does not.

Just thought I'd point that out since they're *sooo* similar you can tell (*grins*)
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Anonymous Coward, 24 Aug 2016 @ 8:54am

Re:
Well let's see here... Mike presented the evidence behind his conclusion. Where's yours?

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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Anonymous Coward, 24 Aug 2016 @ 8:57am

Re:
Well, he clearly can't choose the answer in front of him.
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James Burkhardt (profile), 24 Aug 2016 @ 10:16am

Re: Huh?
An identifying Mark is very specific. Changes in such factors as the colors used is enough to be a different mark. Now they are similar, and a court might agree that they are close enough to retain the mark, but by a strict legal reading, the radical changes in coloration combined witht he fact that no 2 color schemes are the same from what i can tell, suggests that this is not an identifying mark.
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Anonymous Coward, 24 Aug 2016 @ 10:55am

Re: Re:
Technically, there are no two tree shaped air fresheners alike.
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Ryunosuke (profile), 24 Aug 2016 @ 1:02pm

still smells a little off to me....
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David, 24 Aug 2016 @ 1:47pm

Re: For once, a non-cringeworthy Kansas story
Is that tree-shaped-smelly-thing an air freshener or are you just happy to see me?
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Anonymous Coward, 24 Aug 2016 @ 10:19pm

Re: It would be mildly ironic...
However the thing is actually used, what matters is how the inventors of the "tree" design intended it to be used.
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Anonymous Howard II, 25 Aug 2016 @ 2:53am

Re: Re: It would be mildly ironic...
Oh, I know that. I was just saying...
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Anonymous Coward, 25 Aug 2016 @ 8:45pm

Re:
Coming from the same guy who believed "THANKYOU" could be trademarked, you're not in much position to complain about amateurness.
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Erica, 26 Aug 2016 @ 11:00am

Bias??
Your article is so one-sided it's hilarious. This company thrives in my hometown and their legal team is really good at their job. So they're protecting their trademark i.e. their job what's the issue?
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Anonymous Coward, 26 Aug 2016 @ 2:36pm

Re: Bias??
Amen!!
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Sarah, 17 Sep 2016 @ 3:56pm

The sun-cedar tree is much pointier and there is also an up-turn to the points. I think they should re-design it, making it an even more organic tree-shape with a longer, narrower trunk and eliminate the trapezoidal base, making it curve out to more of a flanged base or maybe a couple of bumps at the base to indicate exposed roots- anything to make it look like what it actually smells like. What's next- is Lane going to go after Shine because his company's products smell like their cedar chests?! SMDH!!
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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Elena, 21 Jul 2020 @ 8:33am

you know they bully companies that have any tree shape logo. Any type at all. Even for things that don't go in the car.
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