Case Study: Little Trees and Their Shape Trademarks

Yesterday someone asked me a question about whether or not she could make air fresheners in the shape of a pine tree. The answer is no, because another company has a registered trademark for the shape of a pine tree for air fresheners. Let’s have a look here at their trademark registrations for air fresheners in the shape of a tree.

Because of their trademarks, no other company can manufacture air fresheners in the shape of a tree — even a Christmas tree. Their shape trademark effectively gives them a monopoly on creating air fresheners shaped like a pine tree — and it doesn’t matter if the air fresheners are decorated to look like Christmas trees or not. If an air freshener is manufactured in the shape of a tree, and the manufacturer doesn’t have a license from the owner of the Little Trees shape trademark, then it’s a trademark infringement.

Could one make an air freshener with another “tree” shape, like a palm tree or a deciduous tree? Perhaps. The trademark owner in this case, however, is quite aggressive about policing their trademarks, and might demand that anyone making any sort of “tree” air fresheners cease and desist from doing so. While that position may not hold up in a court of law, it’s hardly worth the time, money, and mental anguish to litigate the issue, so if the owners of the LITTLE TREES shape trademark sent such a letter, it’s likely that the offending party would comply rather than spend the next two years fighting about it in court.

The trademark owner in this case might argue that because the Little Trees shape trademark is so famous and has been used for such a long time — since 1952 — that the trademark gets protection from “dilution,” that is, using a mark on a similar product that, while the trademark is not exactly the same, because it’s also a tree, it would tend to lead the consumer into believing that the tree-shaped air freshener came from Little Trees. I think that this is a pretty solid argument to make, and one that might very well prevail in court.

Transcript:

Today, I’m going to do a case study about Little Trees air fresheners and their trademark for the shape of a pine tree for air fresheners. I’m Angela Langlotz trademark and copyright attorney. I’m going to spend the next four minutes talking about shape trademarks. So someone asked me yesterday if she could make a an air freshener that was in the shape of a pine tree. And I said, well, no little tree air fresheners, actually, or the company that makes Little Trees air fresheners actually has a registered trademark for the shape of a pine tree for air fresheners.

And she said, well, what if my air freshener looks like a Christmas tree? And I said, well, it doesn’t really matter how you decorate it. What we’re talking about is the shape of a pine tree used for air fresheners. And because of the Little Trees’ ownership of a trademark for the air fresheners, the shape of a pine tree for air fresheners, it is not allowed to make a pine tree shaped air freshener, even if you decorate it differently.

The fact that you have it in a pine tree shape is a no go. So I wanted to look at the different trademarks that Little Trees has registered for the shape of a pine tree in use with air fresheners. So let’s switch me over here and we’re going to have a look at them. So how do I know which ones are the design marks, the shape marks, the non the the marks that don’t have words in them? Well, because they don’t have a word listing.

Right. So I know that these are design marks. Not all of these are the trees. They have shapes registered for other air fresheners as well. But most of these are for the tree shaped air fresheners. So let’s have a look at this one. OK, that’s shaped like a horn of plenty. That’s not one that I want to look at.

So not that one. There were a couple others. I think now these all look like like Indian chief heads, probably politically incorrect these days. But here is the oldest one, the oldest design mark for the tree shaped air freshener. You can see it’s the goods and services are called out are air fresheners. And the date of first use is listed as 1952. So they have been using this for a very long time. So of course they have long-standing trademark rights.

This was registered in 1993 we can see right here. So they’ve owned this trademark registration for a long, long time. But you can see so they have their tree air freshener shape called out here and they have a couple others too.

So this one is just the outline of the air freshener. I’m not really sure why they have so many trademarks filed on this or why they sought to register the outline as well as the filled in version. That doesn’t make a whole lot of sense to me as a practitioner, but maybe they just wanted to be really sure this is the same shape. But it’s actually for different different goods. This is for cleaning products and for stain removers, for automotive and home surfaces.

So maybe it’s an automobile related stain remover, like maybe you get stains on your cars or something. And see here they also have the Little Trees word mark registered as a trademark as well. But today, of course, we’re just looking at the shapes now. Here’s the shape. But it’s showing this cutout here for some other material that’s kind of interesting. And is this for air fresheners? This is for travel bags, shirts, sweatshirts, t shirts and caps.

So maybe when it’s been canceled, too, so we won’t even worry about that.

No, part of it’s only part of it’s been canceled. Sorry. So cancelled is stuffed toy animals, so they no longer have it for stuffed animals. But maybe there’s kind of a cult following for the little tree air freshener and that’s why they have this registration for t shirts. So again, here’s another one for air fresheners. As I said earlier, I don’t understand why they’re doing the outline. They have the outline multiple times. I’m not sure what that’s really about.

But then here they also have a registration for pens and luggage tags and for shirts and hats. So that’s kind of interesting. I was like these trademark case studies because I learn a lot about the scope of other people’s trademarks. OK, so here’s another one. Same shape. But this one is for air fragrances preparation, so maybe like sprays that you spray around, right? So it’s an air freshener.

But anyway, this is kind of an interesting case study because it shows you how they have expanded their brand over time and also how they actually registered the shape of the air freshener and how they’re how they’re using it on their other goods. I’m Angela Langlotz. If you have trademark law questions, drop them in the comments below. I’ll answer them on a future live video. You can find me on Facebook at Facebook, dot com forward slash trademark doctor online at trademarkdoctor.net.

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