Little Trees, Big Win
CAR-FRESHNER Corporation, maker of the well-known tree-shaped air freshener, secured a major victory in its effort to stop a nationwide retailer from continuing to infringe upon the company's tree-design trademark. The retailer, Big Lots Stores, Inc., agreed to a Consent Judgment after a long legal battle with CAR-FRESHNER Corporation.
CAR-FRESHNER Corporation was represented in the litigation by the firm of Oblon, Spivak, McClelland, Maier, & Neustadt, P.C., with Nancy Pontius of Mackenzie Hughes LLP, as local counsel. Before CAR-FRESHNER Corporation's partial summary judgment motion regarding infringement was granted, it looked like trial was inevitable. The parties settled their differences less than two weeks before the scheduled trial.
On April 23, 2004, Judge McAvoy, of the U.S. District Court for the Northern District of New York, ruled in a Memorandum-Decision and Order that Big Lots Stores, Inc. infringed CAR-FRESHNER Corporation's federally registered tree-shaped air freshener. Big Lots Stores, Inc. attempted to limit its liability by asking the Court to dismiss the punitive damages and exceptional case claims on summary judgment. However, Judge McAvoy held that a jury could conclude that Big Lots Stores, Inc. acted willfully and denied Big Lots Stores, Inc.'s motion.
Prior to the decision on summary judgment, Big Lots Stores, Inc. voluntarily discontinued selling the infringing items. However, Big Lots Stores, Inc. refused to acknowledge the infringement and pay damages. In addition, CAR-FRESHNER Corporation insisted on penalties that would encourage Big Lots to make sure that infringing product does not find its way into BIG LOTS stores again.
Pursuant to the Consent Judgment, Big Lots Stores, Inc. is required to pay over a quarter million dollars and is enjoined from future sales of air fresheners that infringe the famous LITTLE TREES air fresheners, including any colorable imitations or silhouettes that imitate the tree shape. In the event that there are future infringements, Big Lots Stores, Inc. has agreed to take immediate action to remove the infringing product from their stores and to pay penalties to CAR-FRESHNER Corporation.
This is not the first time that CAR-FRESHNER Corporation has had to institute a lawsuit against an infringer. The company is diligent in protecting the reputation of its LITTLE TREES air fresheners. According to Jody R.A. LaLone, President of CAR-FRESHNER Corporation, "knock-offs deceive and rip-off our customers as well as our company's trademark rights." CAR-FRESHNER receives letters from customers applauding the LITTLE TREE product and the fact that it is American made. LaLone adds that "We are not going to let someone take away jobs or ruin our hard-earned reputation."
The famous LITTLE TREES air fresheners are featured in films, television shows, commercials, theater productions, and an array of other media. "You can't buy or steal the incredible reputation that the LITTLE TREES air fresheners have earned since 1952 but that doesn't stop foreign and domestic companies from trying to imitate the famous tree-shaped air freshener," states Roberta S. Bren, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., counsel for CAR-FRESHNER Corporation.
As long as the LITTLE TREE air fresheners retain their enviable reputation, there is little doubt that there will be more infringers. "It looks like a quick way to make a buck, until the infringer finds itself on the wrong end of a lawsuit," explains Jonathan Hudis, also of Oblon, Spivak, co-counsel for CAR-FRESHNER Corporation. Bren adds, "although it is our preference to resolve these matters amicably, we will bring lawsuits if it is necessary to protect our client's marks."
CAR-FRESHNER Corporation was represented in the lawsuit by Roberta S. Bren, Jonathan Hudis, and Jason Cody of Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
Please click on the PDF link above for the full text decision (CAR-FRESHNER Corporation and Julius Sämann Ltd., v. Big Lots Stores, Inc. and Midwestern Home Products, Inc.)
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