The Odd Case of Pinetree v. Corndog

If the owner and the exclusive licensee of the "world famous" pine-tree-shaped and -scented car air freshener have their way, no one will be able to make fun of their ubiquitous tree.

In a March 7 cease-and-desist letter to Dale Detwiler, owner of Austin-based Corndog Cards & Novelties, a lawyer for the New York-based company Car-Freshner Corp., which has manufactured the so-called "Little Trees" since 1952, claims that Detwiler has infringed upon their trademarked tree by producing a glow-in-the-dark, scratch-and-sniff holiday greeting card that bears a likeness of their tree. And that's a problem, Car-Freshner attorney Alpa V. Patel wrote in his letter, because the "use of the Tree design on the note cards is likely to cause consumers to believe that the note cards originate with or are licensed, sponsored or approved" by Car-Freshner and/or the Bermuda-based Little Tree trademark owner, Julius Sämann Ltd. The two companies would "like to resolve the matter amicably and quickly," wrote Patel, but to do so would require Detwiler to provide details on how many cards were produced, how many were sold, and how many are still on hand.

To Detwiler's Austin attorney Justin Welch, Patel's letter was clearly a threatening prelude to a lawsuit – a suit that he says Patel's company would be hard-pressed to win. According to Welch, Detwiler's glowing, scented card is nothing more than a parody of the Little Tree air freshener and is, therefore, protected speech under the First Amendment. "Parody is a defense to trademark infringement; it's a matter of free speech," he said. In order to raise the defense, he said, "you have to admit to using the trademark, but also [show] that you are making fun of it." And that is exactly what Detwiler did, Welch said. Detwiler's tree is meant to evoke the trademarked tree, but the box that the cards come in "unequivocally disassociates itself" from the original trademark by poking fun at the pine-scented freshener. "The differences between these unusual cards and an actual car air freshener are: 1) our cards glow in the dark and 2) give off a weird, sticky pine smell only when you scratch and sniff them, instead of all the damn time, until you get carsick and throw up," reads the box.

On March 28, Welch fired off a response to Car-Freshner Corp., citing the relevant trademark parody case law and requesting that Patel respond by April 8 with a mea culpa, acknowledging that Detwiler's "production and sale of the cards does not infringe their trademarks," he wrote. That same day, Welch filed suit in Travis Co. district court, seeking declaratory relief for Detwiler and Corndog Cards, by way of a ruling that Corndog has not infringed on the Little Tree trademark. Apparently Welch's letter didn't go over so well at Car-Freshner, and on April 8 they fired back a "nasty letter," Welch said, "arguing with me that [Detwiler's card] is not a parody." Additionally, he said the company did an end run around Detwiler's pending state claim by filing a federal lawsuit against Detwiler and Corndog in New York.

Interestingly, with the filing of the federal suit, Detwiler and his little greeting card company can now count themselves among the many defendants against whom Car-Freshner has filed a federal trademark infringement lawsuit. Since 2002, Car-Freshner has filed at least four such suits, and eight or so others over the last decade. "They make a business out of this," Welch said. Car-Freshner and Sämann have had varying success with their suits – they won against Big Lots!, which was selling a straight knock-off pine-scented tree-shaped freshener, but lost against Johnson & Johnson, which had apparently offended Car-Freshner and Sämann by marketing a tree-shaped plug-in home air freshener, Welch said. Despite the wealth of trademark actions, Welch said he has not found another case where Car-Freshner and Sämann have filed suit against someone for parodying the tree.

Still, Car-Freshner upped the ante with the federal suit against Detwiler by naming Philadelphia-based Urban Outfitters, which carried the offending Corndog card, as a co-defendant "contributor" to the alleged infringement. The question, Welch said, will be whether Detwiler bears any responsibility to indemnify the retailer. (Apparently this is the second run-in the retailer has had with Car-Freshner; in 1994, they got on the company's bad side by selling pine-tree-shaped season's greetings gift tags, Welch said.) Nonetheless, Welch said he is optimistic that the suit will be disposed of before it ever gets to federal court. Since Detwiler filed his state action first, the feds are likely to put the Car-Freshner suit on hold – and if Detwiler prevails, it would likely be difficult for the Little Tree makers to prevail in federal court.