Car-Freshner sues Texas company

CNY Business Journal (1996+), Apr 29, 2005 by Dickinson, Casey J

SYRACUSE - Car-Freshner Corp. has filed suit against an Austin, Texas-based novelty company claiming infringement upon its famous pine-tree trademark. Watertown-based Car Freshner and Julius Samann LTD filed suit against Dale Detwiler-d/b/a Corndog Cards & Novelties April 8 in the Northern District of New York courthouse in Syracuse. European immigrant Samann founded Car Freshner in Watertown in 1952. Julius Samann LTD is incorporated in Bermuda.

The complaint charges that Corndog marketed a "scratch and sniff' Christmas card featuring a Car-Freshner "little tree" air freshener. The cards were sold though the Web site of the Urban Outfitters clothing chain.

The four-count complaint accuses Detwiler of federal trademark infringement, federal false declaration of origin, common-law trademark infringement, and common-law unfair competition. CarFreshner asks the court to grant an injunction against Detwiler, triple damages and profits, punitive damages, destruction of the cards, and attorney's fees.

Detwiler's attorney says his client's cards are legally protected as a parody of the famous air fresheners.

"In sum, it is our position that Car-Freshner's suit is nothing more than a shakedown," says Justin M. Welch, an attorney with Blazier, Christensen, Bigelow & Virr, P.C. in Austin.

The back of Corndog's packaging describes the difference between a little tree and the greeting card.

"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 car sick and throw up.

Detwiler filed his own suit in Texas state court on March 28 asking a judge to declare Corndog's cards as a protected parody of CarFreshner's trademark.

He says Car-Freshner's filing suit in New York is in "bad faith" and "contrary to established law" since the matter was already before the Texas courts.

Car-Freshner sent Detwiler a "cease and desist" letter in March when it learned of Corndog's holiday cards. In the letter, Alpa V. Patel, CarFreshner's legal director, offered to license Corndog the little-tree design. Samann has licensed the use of its little trees trademark on several products, including greeting cards. The parties have exchanged several letters over the past two months.

The federal case is pending before U.S. District Judge Thomas McAvoy. The judge has heard several previous cases involving CarFreshner Corp.

Car-Freshner and Samann LTD declined to discuss the case through their attorney Roberta S. Bren. The Alexandria, Va.-based law firm of Oblon, Spivak, McClelland, Maier & Neustadt, P.C. handles CarFreshner's trademark litigation. The firm successfully pursued a trademark infiringement case against Big Lots Stores last year. Nancy Pontius of Mackenzie Hughes, LLP serves as local counsel for CarFreshner and Samann LTD.

Car-Freshner's ubiquitous "little-trees" air fresheners have become a part of American culture over the past half century.

"Plaintiffs have created the most recognized and respected brand of air fresheners in the world," says the federal complaint.

The scent-laden cardboard has earned placements in movies such as "Se7en" and the 1984 cult-film "Repo Man." Repo Man makes a running joke of featuring the air fresheners in every vehicle, including a police motorcycle.

"Find one in every car, you'll see," one Repo Man character instructs star Emilio Estevez.

Car-Freshner founder Samann also registered trademarks for Silly String and Money House Blessing air freshener.