Familiar Tree Prevails in Car-Scent Trademark Suit By Andy Newman
“But on cross-examination, a lawyer for Car-Freshner, Jonathan Z. King, caught Mr. Elassir in an inconsistency.He recounted a deposition in which Mr. Elassir said he changed the freshener header card to more closely resemble his company’s canned fresheners, which are a bigger seller. Then he showed a photo showing that the color schemes were actually different.“Your canned products, which you say were the inspiration for your paper products, they don’t look anything like them, do they?”“No,” Mr. Elassir eventually conceded. A few minutes later, Mr. King ran through the similarities between Exotica’s packaging and Little Trees’ and asked Mr. Elassir, “Is your testimony under oath that that’s all just a coincidence?”
Little Trees, the giant in the forest of tree-shaped automotive air fresheners, trounced a small rival in a trademark suit in federal court in Manhattan on Thursday.
A jury found that the other company, Exotica Fresheners Company, had infringed on Little Trees’ trademark with the look of its product. In addition to changing its packaging, Exotica will have to pay the Car-Freshner Corporation, maker of Little Trees, $52,000.
Car-Freshner sued Exotica after Exotica changed the card at the top of its packaging, known as a header card, to include a green tree logo, upward-slanting text and a yellow background, all of which had been used by Little Trees for decades.
The case turned on whether some consumers were likely to be confused by the overall look of the product, known as its “trade dress.”
Car-Freshner acknowledged that there were differences between the brands. Exotica’s actual freshener is shaped like a palm tree that would be hard to mistake for Little Trees’ iconic pine. But its lawyers contended that the packaging was similar enough that some buyers might mistakenly think that Exotica was somehow related.
Exotica has also tended to copy the colors that Car-Freshner used for its various fragrances — blue trees for “New Car” and pink for “Morning Fresh,” among others.
Exotica, which has yielded to Car-Freshner in a string of similar cases over the years, tried to parry Car-Freshner’s claims, arguing that the same colors are used with the same fragrances industrywide.
“It is known in the market that you use orange for coconut flavor,” the president of Exotica’s parent company, John Elassir, testified on Wednesday. (No one uses white, he explained, because the chemical used in the fragrance would stain the freshener’s cardboard and make it look “dirty.”)
Mr. Elassir said that at one point, when he made his “New Car” freshener purple instead of blue, a friend in the business told him, “You’ve got to go with the market, you’ve got to go with blue.”
Mr. Elassir also said that Exotica had used yellow in its package design on and off for years and that Car-Freshner had not complained before.
But on cross-examination, a lawyer for Car-Freshner, Jonathan Z. King, caught Mr. Elassir in an inconsistency.
He recounted a deposition in which Mr. Elassir said he changed the freshener header card to more closely resemble his company’s canned fresheners, which are a bigger seller. Then he showed a photo showing that the color schemes were actually different.
“Your canned products, which you say were the inspiration for your paper products, they don’t look anything like them, do they?”
“No,” Mr. Elassir eventually conceded.
A few minutes later, Mr. King ran through the similarities between Exotica’s packaging and Little Trees’ and asked Mr. Elassir, “Is your testimony under oath that that’s all just a coincidence?”
“Yes,” Mr. Elassir replied.
Exotica’s lawyer, David Antonucci, said that the jury “considered the products and simply considered some of them to be too close.” Car-Freshner’s legal team declined to comment.
The verdict’s impact on the competitive balance in the hanging cardboard car air freshener market is likely to be minimal.
Exotica sells only about $110,000 worth of tree-shaped air fresheners a year in the United States. (Most of its business is overseas.) Little Trees claims total sales of $100 million a year, mostly in the United States, where it dominates the market.
But Mr. King told jurors that the disparity in size was exactly what made Little Trees a tempting target for companies looking to take advantage of the product’s familiarity.
He noted that Little Trees had been depicted in more than a thousand movies and TV shows. That total includes a scene in the 1984 cult hit “Repo Man” that seems to sum up Little Trees’s place in American culture.
A seasoned professional, having just returned with a repossessed car, pulls a Little Tree out of it and hands it to Emilio Estevez’s rookie repo man with these words of wisdom:
“Find one in every car. You’ll see.”
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