Articles / Car-Freshner Corporation v. S.C. Johnson & Son

Home | Site Index | Disclaimer | Email Me!

Source:
http://www.ladas.com/BULLETINS/1996/0896Bulletin/US5.0896.html

United States - Descriptive Uses of Trademarks Are Protected Under the Fair Use Doctrine
In Car-Freshner Corporation v. S.C. Johnson & Son, Inc., the Court of Appeals for the Second Circuit held that, under the fair use doctrine, the acquisition of trademark rights in words or images does not prevent others from using those same words or images as long as such use is descriptive and in good faith.
Plaintiff Car-Freshner sells scented cardboard air fresheners for cars in the shape of pine trees and has established trademark rights in, among other things, the shape of its product. Defendant S.C. Johnson also sells air fresheners. S.C. Johnson's air freshener is a plastic device containing a cartridge of scented gel that releases fragrance into the air when the device is plugged into an electrical outlet. Car-Freshner commenced this lawsuit against S.C. Johnson when it discovered that S.C. Johnson was selling, during the Christmas holiday season, a plug in air freshener in the shape of a pine tree. Car-Freshner claimed, among other things, that S.C. Johnson's use of a pine tree shape infringed its trademark rights in the pine tree shape of its cardboard air fresheners. S.C. Johnson moved for summary judgment on the grounds of fair use and no likelihood of confusion.
The district court rejected S.C. Johnson's claim of fair use on the ground that the fair use defense applies only to marks that are descriptive, and not when, as was the case here, the mark is suggestive. The district court, nonetheless, granted summary judgment to S.C. Johnson on the ground that the two air freshener products were not confusingly similar. Car Freshner appealed the award of summary judgment for S.C. Johnson, and S.C. Johnson cross appealed with respect to the district court's ruling on the issue of fair use.
The Second Circuit affirmed the district court's grant of summary judgment, but on the ground of fair use. The court held that the trademark fair use doctrine permits others to use protected trademarks to describe characteristics of their goods as long as the use is descriptive and not trademark use. In this case, S.C. Johnson's use was descriptive, since it described the scent of the air freshener and referred to the season during which this particular air freshener was sold, i.e., the Christmas season. In holding that S.C. Johnson's use was permissible, the Second Circuit rejected the notion that fair use could be used as a defense only against a mark that is classified as descriptive, explaining that the key is not whether the word or image is classified as descriptive, but whether the defendant's use of the protected word or image is descriptive.