Last month we covered the Car-Freshener Corporation’s trademark infringement lawsuit against Exotica Fresheners Company.
Car-Freshener Corp claimed that Exotica designed their products to look like Car-Freshener’s products, that consumers would be confused and tricked into purchasing Exotica’s products rather than Car-Freshener’s products, and further, that because Exotica’s products were an inferior, additional damage to Car-Freshener was being caused.
This case came down to a debate over “Trade Dress” and ultimately the jury found in favor of the plaintiff, Car-Freshener.
Trade dress, a subset of trademark law, contemplates the design of a product including its packaging. And much like other forms of trademarks, it can be protected under federal law. However, it must still serve as a source identifier. That is, it must allow the consuming public to see the trade dress (the packaging) and identify what company is producing and selling that good. Therefore, it must be either inherently distinctive or it must acquire secondary meaning (see this post for more).
One exception to protecting trade dress, however, is that you cannot protect functional aspects of packaging using trade dress. Functionality can only be protected under other forms of intellectual property, namely patent law.
While Car-Freshener Corp. made the arguments outlined above, the defendant, Exotica, claimed that its palm tree was sufficiently different from the pine tree used by Car-Freshener Corp. and that they used similar colors for the same scents because they were the industry standard. Exotica also claimed that they have used yellow packaging off and on for years without complaint from Car-Freshener Corp. In the end, Exotica claimed that it was just a coincidence that the products looked similar.
The Jury Verdict
The jury, weighing whether Exotica’s products were so similar to Car-Freshener Corp’s as to cause consumer confusion, found in favor of the plaintiff, Car-Freshener Corp. They also awarded over $50,000 in damages to Car-Freshener Corp.
This is not overly surprising given the numerous similarities between the two products. They were both trees of about the same size. They used similar colors for the different fragrancies. And they were sold in clear packaging with a yellow cardboard top containing red and green elements.
Unless they appeal, Exotica will be required to change their packaging to avoid future infringement. Of course, you likely won’t see much of a change on your local store shelf because Exotica is actually a fairly small company. In fact, while Car-Freshener’s sales exceed $100 Million per year, Exotica’s sales are only about $100,000 per year.
Of course, that doesn’t mean Exotica wasn’t worth suing. To the contrary, Car-Freshener can use this case to protect their brand and also to scare off other infringers and would-be infringers.
Questions about your trademark rights?
If you want to protect your trademark, contact us! We help startups and small business file trademark applications with the USPTO all the time.
Image: Court Case
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.