IP Law Daily Summary judgment that ‘Black Ice’ for car freshener scent was not infringed by ‘Midnight Black Ice’ reversed
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Thursday, November 19, 2020

Summary judgment that ‘Black Ice’ for car freshener scent was not infringed by ‘Midnight Black Ice’ reversed

By Cheryl Beise, J.D.

The record, however, supported that "Bayside Breeze" mark was not infringed by "Boardwalk Breeze" as a matter of law.

In a trademark infringement suit between competing sellers of automotive air freshener products, a federal district court erred in finding on summary judgment that "Little Trees" brand products with a scent called "Black Ice" was not likely to be confused as a matter of law with a competitor’s use of "Midnight Black Ice Storm" as the name of a scent on its "Refresh Your Car!" brand fresheners, the U.S. Court of Appeals in New York City has ruled. However, the district court correctly found that the defendant’s "Boardwalk Breeze" mark was not likely to be confused with the plaintiff’s "Bayside Breeze" mark given that the asserted mark was weak and the common word "breeze" and use of a similar sailboat image was offset by other differences in the parties’ packaging. The appeals court reversed the district court’s grant of summary judgment to American Covers, LLC on Car-Freshner Corporation’s claims for trademark infringement and unfair competition under the Lanham Act and on its state law unfair competition and dilution claim. The district court’s judgment was affirmed in all other respects (Car-Freshner Corp. v. American Covers, LLC, November 19, 2020, Newman, J.).

Car-Freshner Corporation and Julius Samann Ltd. (collectively "CFC") manufacture automotive air fresheners. CFC has sold air fresheners under the brand name "Little Trees" since 1952. In 2004, CFC began selling Little Trees air freshener products with a scent called "Black Ice" and in 2013, CFC began selling Little Trees products with a scent called "Bayside Breeze." CFC primarily sells directly to retailers and distributors and not to consumers.

American Covers, LLC d/b/a Handstands ("Handstands") and Energizer Holdings, Inc., and Energizer Brands, LLC ("Energizer’) also sell automotive air freshener products to retailers and distributors. Energizer’s product line is marketed under the brand name "Refresh Your Car!" Shortly after Energizer acquired this brand name and product line from Handstands in 2016, it began selling two new "Refresh Your Car!" products with a single scent—one called "Midnight Black" and another called "Boardwalk Breeze"—and a new "Refresh Your Car!" product with two scents—one called "Midnight Black" and another called "Ice Storm," labeled with the words "Midnight Black Ice Storm."

In February 2017, CFC filed suit against Handstands and Energizer in federal district court in Manhattan, asserting claims for trademark infringement, false designation of origin, and unfair competition claims under the Lanham Act, and state law claims for dilution and unfair competition. CFC alleged that its Little Trees products with the "Black Ice" and "Bayside Breeze" scents were infringed and diluted by Energizer’s dual scent products with the words "Midnight Black Ice Storm" on the packaging and its single scent "Boardwalk Breeze" products. Energizer phased out the accused products stopped selling them as of June 30, 2017. Instead, Energizer began selling the same dual-scented product with the name to "Lightning Bolt" and the name of the other scent retained as "Ice Storm." In August 2019, the district court granted summary judgment to the defendants on all claims. CFC appealed.

Likelihood of confusion. The Second Circuit first considered whether Energizer was entitled to summary judgment on CFC’s claim that Energizer’s use of the marks "Midnight Black Ice Storm" and "Boardwalk Breeze" "was likely to cause confusion," 15 U.S.C. § 1114(1)(a), as to the origin or sponsorship of its goods. The appeals court de novo evaluated the Polaroid likelihood of confusion factors.

Strength of CFC’s marks. The appeals court considered "Black Ice" to be inherently distinctive for automotive air fresheners. With respect to commercial strength, sales of "Black Ice" products totaled in the tens of millions of dollars between 2013 and 2018. The record contained considerable evidence of widespread recognition of the "Black Ice" mark (in its paper hanging tree form) in unsolicited news and social media coverage and in popular culture. The Second Circuit found "Black Ice," as applied to automotive air fresheners, to be strong, much farther along the continuum of strength than the district court’s description as only "moderate."

As to "Bayside Breeze," the appeals court agreed with the district court that the mark was "weaker in terms of its strength than the ‘Black Ice’" mark. The record disclosed that the word "Breeze" appeared in the names of several of Energizer’s air freshener scents, such as "Cool Breeze," "Summer Breeze," "Laguna Breeze," "Tropical Breeze," and "Aruba Blue Breeze." The mark "Breeze" also appeared in 30 third-party registrations, including "Beach Breeze," "Coastal Breeze," and "Pure Ocean Breeze," and in the names of 47 other products in use.

Similarity of marks. The district court considered both of CFC’s marks to be dissimilar from Energizer’s marks. Although acknowledging the identity of some of the words in the parties’ marks, the district court concluded that the differences in packaging, especially the prominence of the parties’ brand names, dispelled likelihood of confusion.

The Second Circuit disagreed with the district court’s conclusion regarding CFC’s "Black Ice" mark. CFC’s mark appeared entirely in Energizer’s "Midnight Black Ice Storm" mark. While Energizer placed the first two words of its mark above the last two on some products, the appeals court observed that the phrase "black ice" was well known and consumer’s eye would easily move from "Black" to "Ice." The court acknowledged that the parties’ products used different packaging, but it could find "no decision where differences in packaging dispelled the similarity of a mark that used two identical words, neither of which is descriptive of the products on which they appear, and the defendant put them, in sequence, in a mark placed on competitive products." The court saw "no reason to encourage such a practice." The court determined that the similarity of marks factor weighed significantly in favor of CFC with respect to its "Black Ice" mark.

As for CFC’s "Bayside Breeze" mark, only the word "Breeze" appeared in Energizer’s mark. On the other hand, Energizer’s packaging of the "Boardwalk Breeze" products was similar to the packaging of the "Bayside Breeze" products in that both showed a sloop sailboat featuring a mainsail with a broad dark blue stripe at the bottom. It was worth noting that sailboat images are not uncommon for products with the word "breeze" in their marks. In other respects, however, the packaging of "Bayside Breeze" and "Boardwalk Breeze" products, was different given the prominent display of the parties’ brand names "Little Trees" and "Refresh your car!" The slight similarity arising from the common use of the word "breeze" and the sailboat was offset by the differences. This factor weighed moderately in favor of Energizer, in the court’s view.

Proximity of goods. Both parties’ products directly competed with each other and were often displayed side-by-side by retailers such as Target, Walmart, Pep Boys, Dollar General, AutoZone, and various supermarkets. This factor clearly weighed in favor of CFC.

Actual confusion. The district court found that there was no triable issue of fact concerning actual confusion as to either mark. CFC offered no survey evidence and produced on only one customer even arguably confused, as evidenced by an inquiry posted on Amazon.com. The appeals court agreed that the actual confusion factor favored Energizer.

Bad faith. The district court concluded that this factor "supported" a finding of bad faith because internal emails written by staff members of Handstands showed efforts to "use names that at least echoed" those of CFC’s scents. This was an understatement, according to the Second Circuit. For example, Handstands’ employees, who were instructed that the new "Refresh" fragrances would include "a Black Ice variant," decided to "have some fun" and "get as close to the Black Ice name as we can."

With respect to selection of the name "Boardwalk Breeze," a Handstands manager wrote that the "intent has always been to draw close to [CFC’s] Bayside Breeze in fragrance and concept." "[I]n light of compelling evidence that Handstands sought to approximate CFC’s marks in order to gain a competitive advantage through consumer confusion, this factor weighs heavily in favor of CFC," the Second Circuit said.

Remaining factors. The Second Circuit did not disturb the district court’s finding that the remaining two factors—the likelihood of product expansion and the quality of the allegedly infringing products—favored neither party and thus were neutral.

Purchaser sophistication. As to sophistication of the relevant consumer group, the district court noted that the products were modestly priced and sold in general merchandise stores. The appeals court agreed that this factor slightly favored CFC.

Weighing the factors. Considering all the relevant factors, the Second Circuit concluded that the factors weighed in favor of no likelihood of confusion as a matter of law with regard to CFC’s "Bayside Breeze" mark. The district court’s summary judgment in favor of Energizer on CFC’s claims for trademark infringement, false designation of origin and unfair competition as to the Bayside Breeze mark was affirmed.

However, the evidence did not support a finding of summary judgment of no likelihood of confusion with regard to CFC’s "Black Ice" mark. The court reversed the grant of summary judgment for Energizer on CFC’s federal trademark infringement, false designation of origin, and unfair competition claims and its state law unfair competition claim with respect to the "Black Ice" mark.

Dilution. The Second Circuit found no reason to disturb the district court’s grant of summary judgment for Energizer on CFC’s federal trademark dilution claims with respect to both marks. CFC failed to offer evidence that either of its marks was famous.

A finding of dilution under New York law does not require fame but does require that the marks be "very" or "substantially" similar. Because the "Bayside Breeze" and "Boardwalk Breeze" marks were only moderately similar, the court affirmed the grant of summary judgment of no dilution as to the "Bayside Breeze" mark. However, because "Black Ice" and "Midnight Black Ice Storm" possessed a high degree of similarity, the appeals court reversed the grant of summary judgment as to the state law dilution claim with respect to the "Black Ice" mark.

The case is No. 19-2750.

Attorneys: Louis Orbach and Liza R. Magley (Schoeneck & King, PLLC) for Car-Freshner Corporation and Julius Samann Ltd. William H. Brewster (Kilpatrick Townsend & Stockton LLP) for American Covers, LLC d/b/a Handstands, Energizer Holdings, Inc., and Energizer Brands, LLC.

Companies: Car-Freshner Corporation; Julius Samann Ltd.; American Covers, LLC d/b/a Handstands; Energizer Holdings, Inc.; Energizer Brands, LLC

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