Car-Scent Rivals Fight in Trademark Suit

In the legal battle of the hanging automotive air fresheners, all that is little are the trees.

At one table in a federal courtroom in Lower Manhattan on Monday sat representatives of the Car-Freshner Corporation of Watertown, N.Y., makers of a product familiar to anyone who has ever ridden in a cab or wanted their car to smell like one.

It is called Little Trees. The company’s logo is a mighty pine. Car-Freshner asserts in court papers that the look of its products is associated by the general public “with the concepts of freshness, cleanliness and pleasing scents.”

At the other table were arrayed the legal forces of Exotica Fresheners Company of Holland, Ohio, maker of a competing product that hangs from considerably fewer rearview mirrors.

Exotica’s symbol is a palm tree, with a broad trunk and laden with coconuts.

Car-Freshner sells Little Trees in a cellophane package topped with a yellow card emblazoned with a green tree logo and the product name written in an upward-slanting direction. Its fragrance varieties include “Morning Fresh,” which is a pink tree; “New Car,” which is blue; and a vanilla tree with an American flag pattern on it.

Exotica also sells its tree-shaped fresheners in a cellophane package topped with a yellow card emblazoned with a green tree logo and the product name written in an upward-slanting direction. Its fragrance varieties also include “Morning Fresh,” which is a pink tree; “New Car,” which is blue; and, yes, a vanilla tree with an American flag pattern on it.

Therein lies the trademark-infringement case brought by Car-Freshner. It alleges that Exotica’s products are “likely to cause confusion, mistake or deception as to the source” of the product, and to “falsely mislead consumers into believing” that the products are “affiliated or connected with or are approved by” Car-Freshner.

For they are not. Not at all.

A lawyer for Car-Freshner, Jonathan Z. King, told the eight jurors in his opening statement: “Those similarities are no accident. They’re a matter of design.”

He also suggested that Exotica’s fresheners were inferior and that their presence weakened Car-Freshner’s brand.

A lawyer for Exotica, David Antonucci, told the jurors that while there might be resemblances, they were superficial, and that Car-Freshner had no proof that any consumers had been deceived.

“I submit to you that they have no evidence at all as to quality or confusion whatsoever,” he said.

The companies have a history of legal entanglement. In 1995, Car-Freshner writes in court papers, Exotica agreed to stop selling “Royal Pine” and “Vanillaroma” fresheners after Car-Freshner pointed out that it had trademarked those names.

In 2011, Car-Freshner writes, it successfully took Exotica to court over its “Black Ice” and “Icey Black” varieties, which seemed to have been inspired by Car-Freshner’s “Black Ice” — “the first masculine-scented fragrance in the marketplace,” Mr. King added.

It was in 2013, Mr. King said, that Car-Freshner noted that Exotica revised its design to incorporate the upward-slanting text and the tree logo. The design of Car-Freshner’s yellow calling card has been essentially unchanged since the 1970s, he said, and Exotica had appropriated “the thing that makes the product stand out.”

Little Trees were born in 1952 when Julius Samann, a chemist who had studied the dissemination of Alpine tree aromas in Canadian forests, was approached by a milkman who complained about the odor of spilled, spoiled milk in his truck. Mr. Samann gave him a piece of cardboard soaked with oil of balsam.

Since then, Car-Freshner has grown to have over 400 employees and annual domestic sales of 200 million Little Trees (including, perhaps confusingly, a pine tree that smells like coconut).

Car-Freshner, in addition to seeking an order that Exotica stop using a design that infringes on their trademark, seeks an unspecified amount of money. The trial is expected to take four days.

For all the similarities, an intellectual property professor at New York University’s law school, Christopher Sprigman, said Car-Freshner seemed to have a tough case.

They will have to show, he said, “that people will confuse the very different shape of the defendant’s air fresheners and treat them as if they came from the same source.” “I’m pretty skeptical of this claim,” he added.

Mr. Antonucci, with Exotica, made a similar point. He noted that consumers were not looking only at the yellow card but also at the whole product.

“Maybe maple versus oak, since I’m not a horticulturalist, that I could understand,” he said. “Pine versus palm? Please. The Pepsi swoosh versus the Coke swoosh? I think we can see the difference.”

SOURCE:http://www.nytimes.com/2015/11/17/nyregion/car-scent-rivals-fight-in-trademark-suit.html