419 F.Supp.3d 407
N.D.N.Y.2019Background
- Plaintiffs Car-Freshner Corp. and Julius Samann, Ltd. sell Little Trees air fresheners, including scents named “Black Ice” and “Bayside Breeze.”
- Defendants American Covers (Handstands) and Energizer sold Refresh Your Car! products named “Midnight Black/Ice Storm” (dual scent) and “Boardwalk Breeze,” introduced in late 2016/early 2017. Plaintiffs sued for trademark infringement and dilution.
- Defendants discontinued the challenged products and replaced one dual-scent product with a similar product that used a different name; parties dispute exact timing and any post-notice sales.
- Evidence: (1) registrations for Plaintiffs’ scent names (two incontestable registrations for Black Ice), (2) internal Defendants’ emails suggesting intent to get “as close to the Black Ice name as we can,” (3) mixed record on actual consumer confusion (one Amazon comment) and competing expert survey evidence, and (4) differences in packaging and prominent house marks (Little Trees vs. Refresh Your Car!).
- Procedural posture: Defendants moved for summary judgment; Court applied Polaroid multi-factor test for likelihood of confusion and statutory tests for federal and New York dilution.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement — likelihood of consumer confusion | Plaintiffs: scent names and some packaging elements are similar and Defendants intended to mimic Plaintiffs, producing a risk of consumer confusion | Defendants: overall commercial impression differs (different house marks, colors, package shapes, product forms); therefore no likelihood of confusion as a matter of law | Held for Defendants — no likelihood of confusion; differences in presentation and prominent house marks dispel confusion; summary judgment granted on infringement |
| Federal trademark dilution (15 U.S.C. §1125(c)) — fame requirement | Plaintiffs: strong sales and cultural appearances (esp. Black Ice) show fame and distinctiveness | Defendants: marks are not widely recognized by the general consuming public; sales and niche recognition insufficient for ‘fame’ | Held for Defendants — marks not “famous” under statute; summary judgment granted on federal dilution |
| New York trademark dilution (N.Y. Gen. Bus. Law §360‑i) | Plaintiffs: state dilution protects distinctive marks even without nationwide fame; similarity suffices for dilution | Defendants: marks are not substantially similar; other Polaroid factors weigh against dilution | Held for Defendants — marks not substantially similar; state dilution claim fails; summary judgment granted |
| State unfair competition | Plaintiffs: misappropriation and likelihood of confusion supports unfair competition | Defendants: underlying trademark/dilution claims fail, so unfair competition fails | Held for Defendants — unfair competition claim dismissed consistent with resolution of trademark claims |
Key Cases Cited
- Savin Corp. v. Savin Group, 391 F.3d 439 (2d Cir. 2004) (two‑part test: protectability and likelihood of confusion)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (multi‑factor likelihood‑of‑confusion test)
- Nabisco v. Warner‑Lambert Co., 220 F.3d 43 (2d Cir. 2000) (commercial presentation and house mark effect can dispel confusion)
- Streetwise Maps v. VanDam, Inc., 159 F.3d 739 (2d Cir. 1998) (third‑party use can weaken mark strength)
- Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010) (definition and analysis of dilution by blurring)
- Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) (discussion of fame and distinctiveness in dilution context)