## Facts

- Car-Freshner Corporation sold automotive air fresheners for many years in a pine-tree shape, typically as flat, scented cardboard hung by a string from a rear-view mirror.
- Car-Freshner claimed trademark rights in (1) the pine-tree shape of its air fresheners and (2) the “Little Tree” mark used on some products.
- S.C. Johnson & Son, Inc. sold air fresheners under the Glade mark, including Plug-Ins products designed to be plugged into electrical outlets with a plastic casing and replaceable fragrance cartridge.
- During the Christmas season, Johnson marketed a pine-tree-shaped plug-in air freshener called “Holiday Pine Potpourri.”
- Car-Freshner sued, alleging federal trademark infringement and false designation of origin under the Lanham Act, related state-law infringement and unfair competition, and dilution under New York law.
- Johnson denied likely confusion and asserted a Lanham Act fair use defense, arguing the pine-tree shape was used descriptively to convey pine scent and holiday associations, not as a source identifier.
- The district court entered judgment for Johnson on all claims; Car-Freshner appealed and Johnson cross-appealed.

## Issues

1. Whether Johnson’s pine-tree-shaped plug-in air freshener infringed Car-Freshner’s asserted rights in the pine-tree shape and “Little Tree” mark under federal and state trademark and unfair competition law.
2. Whether Johnson established the Lanham Act fair use defense by showing its use of the pine-tree shape was descriptive, in good faith, and “otherwise than as a mark.”
3. Whether Johnson’s descriptive use nonetheless constituted dilution under N.Y. Gen. Bus. Law § 368-d.

## Decision

- The Second Circuit affirmed judgment for Johnson.
- The court assumed, without deciding, that Car-Freshner had valid trademark rights in the pine-tree shape and “Little Tree” mark, but held those rights did not bar Johnson’s descriptive use.
- Johnson’s use of the pine-tree shape qualified as descriptive fair use and therefore did not establish infringement or false designation of origin.
- The court found no actionable likelihood of consumer confusion given the descriptive meaning of the tree image, product differences (hang-cardboard vs. plug-in device), and Johnson’s prominent Glade and Plug-Ins branding.
- Car-Freshner’s New York dilution claim failed because Johnson’s use was descriptive rather than source-identifying and there was no showing of blurring or tarnishment.

## Legal Principles

- Trademark law does not give a mark owner exclusive control over language, imagery, or configurations that competitors reasonably need to describe their products.
- The Lanham Act fair use defense protects good-faith, descriptive use “otherwise than as a mark,” and can apply to images and product configurations, not only words.
- Even where a plaintiff claims rights in a product shape, infringement still requires likely confusion; prominent use of the defendant’s own marks and context indicating descriptiveness can defeat confusion.
- New York dilution requires blurring or tarnishment of a mark’s source-identifying capacity; descriptive, non-source-identifying use does not establish dilution absent such harm.

## Conclusion

The Second Circuit held that a pine-tree configuration, though claimed as a trademark by Car-Freshner, could be used by a competitor to describe pine scent and holiday themes when used in good faith and not as a source identifier, defeating both infringement and dilution theories.


Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267 (2d Cir. 1995)