Stink over air freshener trademark. CAR-FRESHNER v. AMERICAN COVERS

When a company uses a symbol to distinguish its products from other products in the marketplace, that symbol can be considered a trademark. In the United States using a trademark automatically grants the trademark user some exclusive rights to the trademark. The trademark rights associated with a symbol can be further strengthened by registering the symbol with the United States Patent and Trademark Office, but registration is not required. Trademark law in the United States grants a trademark user the right to exclude other people from using the trademark on similar products. When someone other than the trademark user sells products that bear the trademark, that is considered trademark infringement. Trademark infringement is the unauthorized use of a trademark on products in a manner that is likely to cause confusion, deception, or mistake about the source of the products. A trademark user can stop trademark infringement by filing a lawsuit.

When a trademark is copied and placed on products, it is relatively easy to prove that consumers were confused by the counterfeit trademark. When the trademark is not copied exactly, that makes it more difficult to prove that consumers were confused about the source of a product.

When presented with a trademark infringement case a court will apply the Polaroid factors. These factors are derived from a Court of Appeals for the Second Circuit decision, so courts in other circuits can have slightly different factors, but most courts follow a similar model. The Polaroid factors look at: 1. Strength of the senior user’s mark, 2. Similarity of the marks, 3. Similarity of the products or services, 4. Likelihood that the senior user will sell the same products as the Junior user, 5. The junior user’s intent in adopting the mark, 6. Evidence of actual confusion, 7. Sophistication of the buyers, 8. Quality of the junior user’s products or services, and 9. related products and services.

Properly applying the Polaroid factors to a case can be confusing therefore it is useful to study case law to see how the courts have applied the law to different sets of facts.

CAR-FRESHNER CORP., V. AMERICAN COVERS, LLC, 19-2750 (2nd Cir. 2020) is a case that demonstrates that the Polaroid factors need to be weighed as a whole and no single factor is dispositive.

The focus of this case is trademarks related to automotive air fresheners, products that emit a pleasant scent in automobiles. Plaintiff markets their automotive air fresheners product lines under the brand name “Little Trees.” A secondary trademark is used to differentiate between the different scents of the “Little Trees” product line. Plaintiff has been using the “Little Trees” trademark since 1956 and a scent trademarked as “Black Ice” since 2004. An example of Plaintiff’s product is reproduced above on the left. The net sales of the “Black Ice” product is tens of millions of dollars.

Defendant’s product line is marketed under the brand name “Refresh Your Car!,” which has had more than $50 million in total sales annually since 2015. Two of Defendant’s scents are called Ice Storm and Midnight Black. Defendant created a product with two scents that could be adjusted and put the scent names next to each other, as show on the right in the image above. Plaintiff felt that having a product branded as Midnight Black / Ice Storm was too close to its Black Ice trademark and sued for trademark infringement.

In 2019, the District Court granted Defendant’s motion for summary judgment because it found that Plaintiff failed to present sufficient evidence to allow a reasonable juror to conclude there was a likelihood of confusion as to
source or sponsorship of the products. Plaintiff appealed to the Court of Appeals for the Second Circuit.

The Second Circuit reviewed each of the Polaroid factors de novo and concluded that summary judgement was not appropriate. The strength of the “Black Ice” trademark, the similarities of the trademarks, the direct competition between the products and the Defendants bad faith in choosing its trademark were all factors that should be weighed against the lack of actual consumer confusion. The Second Circuit concluded that Defendant failed to establish as a
matter of law that there is no likelihood of confusion between the ”Black Ice” and “Midnight Black Ice Storm”.

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