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Car-Freshner Corporation v. D & J Distributing and Manufacturing, Inc.

United States District Court, S.D. New York

May 26, 2015

CAR-FRESHNER CORPORATION and JULIUS SMANN LTD., Plaintiffs,
v.
D & J DISTRIBUTING AND MANUFACTURING, INC. d/b/a EXOTICA FRESHNERS CO., Defendant.

MEMORANDUM AND ORDER

P. KEVIN CASTEL, District Judge.

Plaintiffs Car-Freshner Corporation ("Car-Freshner") and Julius Sämann Ltd. ("JSL") move for summary judgment dismissing the counterclaims of defendant D&J Distributing and Manufacturing, Inc. ("D&J"). Car-Freshner and D&J both manufacture and sell tree-shaped disposable air fresheners that are commonly used in automobiles. The parties' respective claims and counterclaims assert trademark infringement and dilution under the Lanham Act and New York law.

The Court concludes that none of the elements of trade dress asserted by D&J in its counterclaims are protectable, because they are functional, lacking in distinctiveness, or abandoned. Accordingly, the plaintiffs' motion is granted.

BACKGROUND

Car-Freshner and its predecessors manufacture and market automobile air fresheners and other products under the brand name "Little Trees." (Pls.' 56.1 ¶ 1.) Its air fresheners are shaped like pine trees, and a pine tree logo serves as the brand's trademark. (Pls.' 56.1 ¶ 2.) JSL is the owner of the trademark, and Car-Freshner is the exclusive licensee of the trademark for air fresheners in the United States. (Pls.' 56.1 ¶ 1.) Since at least the mid-1970s, Car-Freshner has associated the Little Trees brand with a trade dress consisting of "a bright yellow background with a rendition of the [pine tree logo] in green against that yellow background." (Pls.' 56.1 ¶¶ 4, 6.)

D&J was founded in approximately 1986, and began selling paper air fresheners during the early 1990s. (Pls.' 56.1 ¶¶ 16, 18.) Its air fresheners are shaped like palm trees and are marketed under the brand name "Exotica." As relevant here, they are displayed for purchase in one of the following ways: (1) in a box intended to be placed on a shelf or countertop ("Counter Box") containing a number of individually packaged air fresheners; (2) on "strip displays, " which are long vertical cardboard strips on which two columns of air fresheners are displayed; and (3) on "wide display boards, " on which 60 air fresheners can be displayed. (Pls.' 56.1 ¶¶ 20, 30.)

The plaintiffs commenced this action, alleging that D&J purposefully copied the Little Trees trade dress on its own products, and bringing claims under the Lanham Act and New York law. (Dkt. No. 1.) D&J answered and brought four counterclaims (Dkt. No. 9), which it later amended. (Dkt. No. 21.) D&J asserts that Car-Freshner's products and packaging infringe D&J's trade dress, specifically, elements of the strip displays, counter boxes, and wide display boards, as well as the color of the "header card" to which individually packaged air fresheners are attached and in front of which they are displayed. (Pls.' 56.1 ¶ 30.)

The Court previously dismissed D&J's counterclaim under New York General Business Law § 349, but allowed the three remaining counterclaims to proceed. 2014 WL 3900564 (S.D.N.Y. Aug. 8, 2014); (Dkt. No. 35). The plaintiffs now move for summary judgment on those counterclaims. (Dkt. No. 52.)

LEGAL STANDARD

Summary judgment "shall" be granted "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Rule 56(a), Fed.R.Civ.P. A fact is material if it "might affect the outcome of the suit under the governing law...." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). On a motion for summary judgment, the court must "construe the facts in the light most favorable to the non-moving party and... resolve all ambiguities and draw all reasonable inferences against the movant." Delaney v. Bank of Am. Corp., 766 F.3d 163, 167 (2d Cir. 2014). It is the initial burden of the movant to come forward with evidence on each material element of his claim or defense, demonstrating that he is entitled to relief. The evidence on each material element must be sufficient to entitle the movant to relief in its favor as a matter of law. Vt. Teddy Bear Co. v. 1-800 Beargram Co., 373 F.3d 241, 244 (2d Cir. 2004). If the moving party meets its burden, "the nonmoving party must come forward with admissible evidence sufficient to raise a genuine issue of fact for trial in order to avoid summary judgment." Jaramillo v. Weyerhaeuser Co., 536 F.3d 140, 145 (2d Cir. 2008).

DISCUSSION

D&J's counterclaims are predicated on the alleged infringement of the following trade dresses (Pls.' 56.1 ¶ 30):

• Two-column strip display: D&J claims that Car-Freshner's use of a twocolumn strip display infringes the trade dress of D&J's similar twocolumn strip display. D&J asserts two different versions of its strip display: in the first, the air fresheners are stapled to the strip, and in the second, they hang from hooks attached to the strip. (J. Elassir Dep. 241:8-243:6.)
• Counter Box: D&J claims that Car-Freshner's Counter Box infringes D&J's own 24-count Counter Box. (Id. 243:7-10.)
• Wide display board: D&J claims that Car-Freshner's wide display board infringes D&J's own 60-count wide ...

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