Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 1 of 27   IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF NEW YORK CAR-FRESHNER CORPORATION and Civil Action No. 7:15-CV-1463 [TJM/TWD] JULIUS SÄMANN LTD., Hon. Judge Therese Wiley Dancks Plaintiffs, v. SUN CEDAR, INC., JURY DEMANDED Defendant. DEFENDANT’S ANSWER AND COUNTERCLAIMS Defendant Sun Cedar, Inc. (hereinafter “Defendant” or “Sun Cedar”), by and through its undersigned counsel, as and for its Answer to Plaintiffs Car-Freshner Corporation and Julius Sӓmaan Ltd.’s (hereinafter “Plaintiffs” or “Car-Freshner”) Complaint, responds and states as follows: PRELIMINARY STATEMENT Plaintiffs’ claims that not-for-profit Sun Cedar’s cedar tree shaped ornaments infringe Plaintiffs’ so-called “Tree Design”1 marks fail for several reasons. Sun Cedar’s social mission of training and employing the at-risk population, including the homeless, substance-abusers and former felons, is its essential promotional message:                                                              1 This term is used as Plaintiffs use it in their Complaint. {08174/609373-000/01551906.2} 1 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 2 of 27   Sun Cedar uses an iconic cedar tree outline to describe the cedar wood and the cedar scent of its ornaments. The only point of similarity between Sun Cedar’s cedar tree outline and Plaintiffs’ pine tree and block base outline is the unprotectable outline of tree branches. Sun Cedar does not use any distinctive element that Plaintiffs could arguably claim as a mark (such as the saturated green field or block base in its Tree Design). It is questionable whether Plaintiffs can assert rights in either a blank silhouette of a tree or a blank configuration of a pine tree, because Plaintiffs (1) chose the pine tree outline for functional reasons (to the point of {08174/609373-000/01551906.2} 2 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 3 of 27   patenting the shape); and (2) have abandoned the blank silhouette registrations, as they do not use blank silhouettes as trademarks in commerce. Finally, Sun Cedar’s $10, thick, wooden ornaments are sold on its website, through Kickstarter, and in “green” retail stores, as opposed to in the gas stations and car washes that sell Plaintiffs’ approximately $1.00 cardboard-thin cellulose car fresheners. The two products never have and never will be offered for sale side by side in any retail setting.   Taking into account Plaintiffs’ distinctive yellow and red header card, the price differential, differing channels of trade, and the very different manner of emphasis in the promotional “look,” it is virtually impossible that customers of either brand would confuse the two products. Defendant Sun Cedar, Inc. Sun Cedar is a not-for-profit based in Lawrence, Kansas, founded by Shine Adams in 2014 to provide employment for the “at-risk” population he encountered, and social services at {08174/609373-000/01551906.2} 3 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 4 of 27   the Lawrence Community Shelter. Mr. Adams, a trained carpenter, built guitars as a sideline and had access to cedar wood scraps. He developed, assisted by several clients of the shelter, a variety of designs carved out of cedar wood. He eventually settled on a cedar tree design because it described the cedar wood, referred to the name of the company, and because, in comparison to many of the other designs, could be cut out of wood by an untrained employee using a scroll saw (no two ornaments are the same). Sun Cedar’s tree, shown on top of Plaintiffs’ product, is pictured above between sets of “cedar tree” icons available as free Clip Art to illustrate the archetypal rendering of cedar trees. The trunk of Sun Cedar’s tree is realistic and does not share Plaintiffs’ rectangular block base. The “Sun” signature appears on all tree ornaments. Sun Cedar began offering cedar wood ornaments in October 2014. Many of its tree ornaments were provided as “prizes” for donations. It added cedar coat hangers, potpourris and shoe boxes in June 2015, promoting cedar wood’s moth-proofing properties. {08174/609373-000/01551906.2} 4 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 5 of 27   Sun Cedar’s mission to train and employ is the pervasive theme of its promotional activity. Photos from its website and social media depict its employees creating its products: Sun Cedar’s trees are promoted as Christmas tree ornaments and artistic ornaments. The trees are often used as decorative bases on which further ornamental designs are added:         When Plaintiffs protested Sun Cedar’s sale of its ornaments, Sun Cedar attempted to accommodate Plaintiffs by deleting any reference to cars in promotional materials and foregoing any future sales in the automotive channel used by Plaintiffs. When Plaintiffs protested Sun Cedar’s use of representations of its designs in social media profile pictures, Sun Cedar removed such usages. {08174/609373-000/01551906.2} 5 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 6 of 27   Consumers of air fresheners are accustomed to seeing shapes used to describe specific scents. For example, pictured below is a display of air fresheners in the shape of cherries, strawberry, hibiscus, tropical flowers and “fresh blooms.” Additionally, despite Plaintiffs’ claims of exclusivity to depictions of trees in the scented product field, the consuming public is regularly exposed to depictions of tree shapes to describe tree-scented products: {08174/609373-000/01551906.2} 6 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 7 of 27   It is fair to say that apart from scented products, consumers are inured to encountering treeshapes to signify products made of wood. Unable to allege any actual confusion or facts that suggest confusion, Plaintiffs rely on baseless accusations that Sun Cedar attempts to deceive the consumer into believing that Sun Cedar’s products originate from or are endorsed by Plaintiffs. ANSWER 1. Defendant admits the allegations contained in Paragraph 1 of the Complaint to the extent that this is a lawsuit for alleged trademark infringement, false designation of origin, trademark dilution, and unfair competition. Plaintiffs seek relief under the Lanham Act, 15 {08174/609373-000/01551906.2} 7 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 8 of 27   U.S.C. § 1051 et seq., New York General Business Law, and New York State common law. Defendant denies the allegations to the extent they imply or suggest any liability. 2. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in the first sentence of Paragraph 2 of the Complaint, and therefore denies the same. Defendant denies the allegations contained in the second sentence of Paragraph 2 of the Complaint. It specifically denies that it has adopted any tree design as a trademark. Defendant denies the allegations contained in the third sentence of Paragraph 2 of the Complaint. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in the fourth sentence of Paragraph 2 of the Complaint, and therefore denies the same. Defendant denies all remaining allegations. PARTIES 3. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 3 of the Complaint, and therefore denies the same. 4. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 4 of the Complaint, and therefore denies the same. 5. Defendant admits the allegations contained in Paragraph 5 of the Complaint. JURISDICTION AND VENUE 6. Paragraph 6 of the Complaint contains legal conclusions to which no response is required, but to the extent a response is required, Defendant admits that this Court has subject matter jurisdiction. 7. Paragraph 7 of the Complaint contains legal conclusions to which no response is required, but to the extent a response is required, Defendant denies that venue is proper in this district. {08174/609373-000/01551906.2} 8 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 9 of 27   PLAINTIFFS’ BUSINESS AND TRADEMARKS 8. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 8 of the Complaint, and therefore denies the same. 9. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 9 of the Complaint, and therefore denies the same. 10. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 10 of the Complaint, and therefore denies the same. 11. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 11 of the Complaint, and therefore denies the same. 12. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 12 of the Complaint, and therefore denies the same. 13. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 13 of the Complaint, and therefore denies the same. 14. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 14 of the Complaint, and therefore denies the same. 15. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 15 of the Complaint, and therefore denies the same. {08174/609373-000/01551906.2} 9 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 10 of 27   16. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 16 of the Complaint, and therefore denies the same. 17. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 17 of the Complaint, and therefore denies the same. 18. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 18 of the Complaint, and therefore denies the same. 19. Defendant denies that it has committed any infringing or diluting acts. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations contained in Paragraph 19 of the Complaint, and therefore denies the same. 20. Defendant denies the allegations contained in Paragraph 20 of the Complaint. 21. Defendant admits that Julius Sämaan Ltd. is the record owner of the registrations contained in Paragraph 21 of the Complaint. Defendant denies the remaining allegations contained in Paragraph 21 of the Complaint, and notes that the Tree Design registrations are not enforceable for the reasons discussed below. 22. Defendant denies that the registration numbers contained in Paragraph 22 of the Complaint are incontestable, because registrations are always vulnerable to attack on grounds of functionality and abandonment, as is the case here. 23. Paragraph 23 of the Complaint contains legal conclusions to which no response is required. 24. Defendant denies the allegations contained in Paragraph 24 of the Complaint. {08174/609373-000/01551906.2} 10 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 11 of 27   25. Defendant denies the allegations contained in Paragraph 25 of the Complaint. DEFENDANT’S ACTIVITIES 26. Defendant admits that it manufactures, markets, promotes, advertises, distributes and sells cedar tree ornaments, such as the ones depicted in Paragraph 26 of the Complaint. Defendant denies the remaining allegations contained in Paragraph 26 of the Complaint. 27. Defendant denies that its cedar tree ornaments are “[i]nfringing.” Defendant admits the remaining allegations in Paragraph 27 of the Complaint. 28. Defendant denies that its cedar tree ornaments are “[i]nfringing.” Defendant admits that its cedar tree ornaments have been referred to as “air fresheners” and “hanging tree air fresheners,” and denies the remaining allegations contained in Paragraph 28 of the Complaint. 29. Defendant admits that it sells t-shirts, such as the one depicted in Paragraph 29 of the Complaint. Most t-shirts have been distributed as “prizes” for donations. Defendant denies the remaining allegations contained in Paragraph 29 of the Complaint. 30. Defendant denies the allegations contained in Paragraph 30 of the Complaint. 31. Defendant admits that it promotes its cedar tree ornaments and other products via its website and through social media. Defendant denies the remaining allegations contained in Paragraph 31 of the Complaint. 32. Defendant admits that the images contained in Paragraph 32 of the Complaint depict previous versions of its social media profiles, but denies that the images are an accurate representation of its current social media profiles. Defendant denies the remaining allegations contained in Paragraph 32 of the Complaint. {08174/609373-000/01551906.2} 11 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 12 of 27   33. Defendant admits that the illustration is an accurate depiction of a prior version of Defendant’s home page. Defendant denies the remaining allegations contained in Paragraph 33 of the Complaint. 34. Defendant denies the allegations in Paragraph 34 of the Complaint to the extent that the photograph referred to has been cropped by Plaintiffs so as to remove Mr. Adams from the photograph. 35. Defendant denies the allegations contained in Paragraph 35 of the Complaint. 36. Defendant admits that the image contained in Paragraph 36 of the Complaint reflects a portion of its social media profile as it existed at the time of the Complaint. Defendant denies the remaining allegations in Paragraph 36 of the Complaint. 37. Defendant denies the allegations contained in Paragraph 37 of the Complaint. 38. Defendant admits that it has, in the past, posted images of its cedar tree ornaments hanging in a vehicle. Defendant denies the remaining allegations contained in Paragraph 38 of the Complaint and notes that it no longer displays images of vehicles at this time nor does it promote automotive usages of its product. 39. Defendant denies the allegations contained in Paragraph 39 of the Complaint as Plaintiffs have not accurately reproduced the referred to literature. 40. Defendant denies that its cedar tree ornaments or other products are “[i]nfringing.” Defendant admits the remaining allegations contained in Paragraph 40 of the Complaint. 41. Defendant denies the allegations contained in Paragraph 41 of the Complaint. 42. Defendant denies the allegations contained in Paragraph 42 of the Complaint. 43. Defendant denies the allegations contained in Paragraph 43 of the Complaint. {08174/609373-000/01551906.2} 12 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 13 of 27   44. Defendant denies the allegations contained in Paragraph 44 of the Complaint. 45. Defendant denies the allegations contained in Paragraph 45 of the Complaint. 46. Defendant denies the allegations contained in Paragraph 46 of the Complaint. 47. Defendant denies the allegations contained in Paragraph 47 of the Complaint. 48. Defendant denies the allegations contained in Paragraph 48 of the Complaint, but admits that Plaintiffs have had prior correspondence with Defendant asserting Plaintiffs’ alleged rights. Defendant denies the remaining allegations contained in Paragraph 48 of the Complaint. It emphatically denies the allegation that it willfully disregarded Plaintiffs’ rights as Sun Cedar retained counsel specifically to respond to Plaintiffs’ asserted claims. 49. Defendant denies that its cedar tree ornaments or other products are “[i]nfringing.” Defendant admits the remaining allegations contained in Paragraph 49 of the Complaint. 50. Defendant admits that it offers its products in the state of New York. Defendant denies the remaining allegations contained in Paragraph 50 of the Complaint. 51. Defendant denies that its cedar tree ornaments or other products are “[i]nfringing.” Defendant admits the remaining allegations contained in Paragraph 51 of the Complaint. 52. Defendant denies the allegations contained in Paragraph 52 of the Complaint. COUNT I INFRINGEMENT OF A REGISTERED TRADEMARK (FEDERAL) 53. Defendant repeats and incorporates herein by reference each and every response contained in Paragraphs 1 through 52, as though fully set forth herein. 54. Defendant denies the allegations contained in Paragraph 54 of the Complaint. 55. Defendant denies the allegations contained in Paragraph 55 of the Complaint. {08174/609373-000/01551906.2} 13 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 14 of 27   56. Defendant denies the allegations contained in Paragraph 56 of the Complaint. 57. Defendant denies the allegations contained in Paragraph 57 of the Complaint. COUNT II TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION (FEDERAL) 58. Defendant repeats and incorporates herein by reference each and every response contained in Paragraphs 1 through 57, as though fully set forth herein. 59. Defendant denies the allegations contained in Paragraph 59 of the Complaint. 60. Defendant denies the allegations contained in Paragraph 60 of the Complaint. 61. Defendant denies the allegations contained in Paragraph 61 of the Complaint. 62. Defendant denies the allegations contained in Paragraph 62 of the Complaint. COUNT III TRADEMARK DILUTION (FEDERAL) 63. Defendant repeats and incorporates herein by reference each and every response contained in Paragraphs 1 through 62, as though fully set forth herein. 64. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in the first sentence of Paragraph 64 of the Complaint, and therefore denies the same. 65. Defendant denies the allegations contained in Paragraph 65 of the Complaint. 66. Defendant denies the allegations contained in Paragraph 66 of the Complaint. 67. Defendant denies the allegations contained in Paragraph 67 of the Complaint. 68. Defendant denies the allegations contained in Paragraph 68 of the Complaint. COUNT IV NEW YORK STATE DILUTION 69. Defendant repeats and incorporates herein by reference each and every response contained in Paragraphs 1 through 68, as though fully set forth herein. {08174/609373-000/01551906.2} 14 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 15 of 27   70. Defendant lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in the first sentence of Paragraph 70 of the Complaint, and therefore denies the same. 71. Defendant denies the allegations contained in Paragraph 71 of the Complaint. 72. Defendant denies the allegations contained in Paragraph 72 of the Complaint. 73. Defendant denies the allegations contained in Paragraph 73 of the Complaint. COUNT V UNFAIR COMPETITION (COMMON LAW) 74. Defendant repeats and incorporates herein by reference each and every response contained in Paragraphs 1 through 73, as though fully set forth herein. 75. Defendant denies the allegations contained in Paragraph 75 of the Complaint. 76. Defendant denies the allegations contained in Paragraph 76 of the Complaint. 77. Defendant denies the allegations contained in Paragraph 77 of the Complaint. ANSWER TO PRAYER FOR RELIEF Defendant denies that Plaintiffs are entitled to the judgment and relief prayed for in their Prayer for Relief. GENERAL DENIAL Defendant denies each and every factual allegation in the Complaint that is not specifically admitted or otherwise addressed in the preceding Paragraphs and demands strict proof thereof. AFFIRMATIVE DEFENSES As and for its Affirmative Defenses, Defendant hereby alleges as follows: First Affirmative Defense Plaintiffs’ claims, in whole or in part, fail to state a claim for which relief may be granted. {08174/609373-000/01551906.2} 15 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 16 of 27   Second Affirmative Defense Plaintiffs’ requested relief is barred, in whole or in part, by fair use. Third Affirmative Defense Plaintiffs’ requested relief is barred, in whole or in part, by the First Amendment. Fourth Affirmative Defense Plaintiffs’ claims, in whole or in part, are barred by the doctrines of laches, estoppel, acquiescence, and/or waiver. Fifth Affirmative Defense Plaintiffs’ claims, in whole or in part, are barred because, on information and belief, Plaintiffs have abandoned their rights in one or more marks through non-use. Sixth Affirmative Defense Plaintiffs’ claims, in whole or in part, are barred because one or more of Plaintiffs’ marks are invalid as aesthetically functional. Seventh Affirmative Defense Plaintiffs’ claims, in whole or in part, are barred because one or more of Plaintiffs’ marks are invalid as functional. Eighth Affirmative Defense Defendant Sun Cedar hereby gives notice that it intends to rely on such other and further defenses as may become available or apparent during discovery in this case, and it hereby reserves the right to amend its Answer to assert any such defenses. {08174/609373-000/01551906.2} 16 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 17 of 27   COUNTERCLAIM FOR CANCELLATION OF REG. NO. 1,781,016 (Abandonment) 1. Defendant believes that it will be damaged by the continued registration of U.S. Reg. No. 1,781,016 (the “‘016 Reg.”) and hereby, as its counterclaim, petitions to cancel the same pursuant to Section 14 of the Lanham Act. 2. Because Plaintiffs base their Complaint in part on the ‘016 Reg., Sun Cedar is being harmed by the continuing registration of the design mark under the ‘016 Reg. 3. The ‘016 Reg. has the following drawing: 4. The ‘016 Reg. describes the mark as “a configuration of the goods with which it is 5. The most recent specimen filed by Plaintiffs includes the following images: used.” . {08174/609373-000/01551906.2} 17 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 18 of 27   6. Any depiction of any mark in Paragraph 5 above has a different commercial impression from the drawing in the ‘016 Reg. 7. Upon information and belief, Plaintiffs use no marks that have the same commercial impression as the drawing in the ‘016 Reg. 8. Plaintiffs have abandoned the mark covered by the ‘016 Reg. COUNTERCLAIM FOR CANCELLATION OF REG NO. 1,791,233 (Abandonment) 9. Defendant incorporates by reference the allegations of Paragraphs 1-8. 10. Defendant believes that it will be damaged by the continued registration of U.S. Reg. No. 1,791,233 (the “‘233 Reg.”) and hereby, as its counterclaim, petitions to cancel the same pursuant to Section 14 of the Lanham Act. 11. Because Plaintiffs base their Complaint in part on the ‘233 Reg., Sun Cedar is being harmed by the continuing registration of the design mark under the ‘233 Reg. 12. The ‘233 Reg. has the following drawing: 13. The ‘233 Reg. describes the mark as “a configuration of the good with which it is used.” {08174/609373-000/01551906.2} 18 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 19 of 27   14. The most recent specimen filed by Plaintiffs includes the following images: . 15. Any depiction of any mark in Paragraph 14 above has a different commercial impression from the drawing in the ‘233 Reg. 16. Upon information and belief, Plaintiffs use no marks that have the same commercial impression as the drawing in the ‘233 Reg. 17. Plaintiffs have abandoned the mark covered by the ‘233 Reg. COUNTERCLAIM FOR CANCELLATION OF REG. NO. 1,726,888 (Abandonment) 18. Defendant incorporates by reference the allegations of Paragraphs 1-17. 19. Defendant believes that it will be damaged by the continued registration of U.S. Reg. No. 1,726,888 (the “‘888 Reg.”) and hereby, as its counterclaim, petitions to cancel the same pursuant to Section 14 of the Lanham Act. 20. Because Plaintiffs base their Complaint in part on the ‘888 Reg., Sun Cedar is being harmed by the continuing registration of the design mark under the ‘888 Reg. {08174/609373-000/01551906.2} 19 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 20 of 27   21. The ‘888 Reg. has the following drawing: 22. The USPTO TESS and TSDR databases and the registration certificate do not appear to show a description for the mark covered by the ‘888 Reg. 23. The most recent specimen filed by Plaintiffs includes the following image: 24. Any depiction of any mark in Paragraph 23 above has a different commercial impression from the drawing in the ‘888 Reg. 25. Upon information and belief, Plaintiffs use no marks that have the same commercial impression as the drawing in the ‘888 Reg. 26. Plaintiffs have abandoned the mark covered by the ‘888 Reg. COUNTERCLAIM FOR CANCELLATION OF REG. NO. 4,592,854 (Abandonment) 27. Defendant incorporates by reference the allegations of Paragraphs 1-26. {08174/609373-000/01551906.2} 20 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 21 of 27   28. Defendant believes that it will be damaged by the continued registration of U.S. Reg. No. 4,592,854 (the “‘854 Reg.”) and hereby, as its counterclaim, petitions to cancel the same pursuant to Section 14 of the Lanham Act. 29. Because Plaintiffs base their Complaint in part on the ‘854 Reg., Sun Cedar is being harmed by the continuing registration of the design mark under the ‘854 Reg. 30. The ‘854 Reg. has the following drawing: 31. The ‘854 Reg. describes the mark as the silhouette of a tree design. 32. The most recent specimen filed by Plaintiffs includes the following images: . 33. Any depiction of any mark in Paragraph 32 above has a different commercial impression from the drawing in the ‘854 Reg. 34. Upon information and belief, Plaintiffs use no marks that have the same commercial impression as the drawing in the ‘854 Reg. 35. Plaintiffs have abandoned the mark covered by the ‘854 Reg. CANCELLATION OF REG. NOS. 719,498; 1,781,016; 1,791,233; 1,726,888; 2,741,364; 4,096,100 and 4,592,854 ON THE GROUND OF FUNCTIONALITY 36. Defendant incorporates by reference the allegations of Paragraphs 1-35. {08174/609373-000/01551906.2} 21 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 22 of 27   37. The conical shape of Plaintiffs’ tree design, the placement of the branches, and rectangular block base all serve functions essential to the use and display of the product, namely: (1) the conical shape and branches allow for gradual dispersal of the fragrance in the freshener product, according to a sequential diagram printed on the back of the package, and (2) the rectangular block base allows for efficient display on Plaintiffs’ “strip display,” a device used at retail stores to display a variety of scented fresheners in a space-efficient manner. 38. Julius Sämann is the owner of record of the now expired United States Patent No. 3,065,915 (the “’915 Patent,” attached as Exhibit A) entitled “Container For Volatile Substances.” The subject of the ’915 Patent is a system for incrementally removing a treeshaped air freshener from the packaging over time such that the rate of the scent released is controlled. Specifically, the ’915 Patent claims packaging comprising, among other things, the following: (1) a flat absorbent body with a point at the top and an outline which flares outward toward the bottom; and (2) a system of markings on the body of the air freshener that can align with indicia on the envelope to permit incremental adjustment as the body is progressively moved out of the top of the envelope and exposed to the atmosphere, allowing the scent to be released. 39. Drawings for the ’915 Patent include: {08174/609373-000/01551906.2} 22 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 23 of 27   40. The ’915 Patent was filed on January 8, 1959, issued on November 27, 1962, and has been expired for over 30 years. 41. Upon information and belief, Plaintiffs’ claimed Tree Design marks resemble the drawing and description in the ’915 Patent in that both are conical in shape, featuring tree branches with rounded edges, resembling a pine tree, and having a block base. 42. Plaintiffs’ product features the following diagram on the back of its packaging: 43. Upon information and belief, this diagram illustrates the system claimed by the ’915 Patent. Specifically, the diagram consists of seven images, each showing the body of the air freshener in different stages of removal from the cellophane package over a seven week period. A notch is cut in the center of the cellophane. The first week, the packaging is pulled down to the first branch and only the top of the tree is exposed. The second week, the packaging is pulled down to the second branch, exposing more of the tree, and the cellophane is tucked {08174/609373-000/01551906.2} 23 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 24 of 27   under the corresponding branches. This continues until the seventh week, when the tree is removed completely from the packaging. 44. Third party media, such as Cars.com and a certified Toyota dealership, have cited to the diagram and reported successfully utilizing the conical tree shape so as to employ the seven week system, thus proving the functional nature of the tree shape. See Exhs. B and C attached hereto. 45. In short, upon information and belief, the shape of the Tree Design is essential to the use or purpose of the article for which it is registered, namely air fresheners. As such, the Tree Design is functional and is not entitled to registration, pursuant to Section 14(3) of the Lanham Act, 15 U.S.C. § 1064(3). 46. The block base of the Tree Design is functional as well. Upon information and belief, Plaintiffs promote their products using a strip display as depicted below: 47. As previously discussed in cases involving Plaintiffs, strip displays allow for “the maximum number of products in an efficient small size.” Car-Freshner Corp. v. D & J {08174/609373-000/01551906.2} 24 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 25 of 27   Distributing and Mfg., Inc., No. 14-CV-391 PKC, 2015 WL 3385683, at *6 (S.D.N.Y. May 26, 2015) (internal quotations omitted). 48. The block base allows for the efficient display of scent names in a strip display: 49. In summary, upon information and belief, the shape of the Tree Design is essential to uses or purposes of the article for which it is registered, namely air fresheners. As such, the Tree Design is functional and is not entitled to registration, pursuant to Section 14(3) of the Lanham Act, 15 U.S.C. § 1064(3). DECLARATORY JUDGMENT THAT THERE ARE NO ENFORCEABLE RIGHTS IN PLAINTIFFS’ TREE DESIGN 50. Defendant incorporates by reference the allegations of Paragraphs 1-49. 51. Plaintiffs do not have any enforceable right in the Tree Design, by statute or at common law. 52. Plaintiffs’ Tree Design is unenforceable for one or more of the following reasons: descriptiveness, functionality, or abandonment. {08174/609373-000/01551906.2} 25 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 26 of 27   53. Accordingly, Plaintiffs are not entitled to any rights in the registrations identified in the Complaint or any other rights at common law in the Tree Design. RELIEF REQUESTED WHEREFORE, Defendant prays for the following relief: A. Dismissal of the Complaint with prejudice; B. An award to Defendant of its costs in this action including its reasonable attorneys’ fees; and C. Such other and further relief as the Court may deem just and proper. Dated: August 19, 2016 White Plains, NY Respectfully submitted,   _____________________________ Martin B. Schwimmer LEASON ELLIS LLP One Barker Avenue, Fifth Floor White Plains, New York 10601 Phone: (914) 288-0022 Facsimile: (914) 288-0023 Email: schwimmer@leasonellis.com Attorney for Defendant   {08174/609373-000/01551906.2}   26 Case 7:15-cv-01463-TJM-TWD Document 42 Filed 08/19/16 Page 27 of 27   CERTIFICATE OF SERVICE I hereby certify that a true copy of Defendant’s Answer and Counterclaims was served upon the attorney of record for each other party by CM/ECF and first class mail on August 19, 2016 at the below addresses: Eric J. Shimanoff Cowan, Liebowitz & Latman, P.C. 114 West 47th Street, 21st Floor New York, NY 10036-1525 Email: ejs@cll.com Ashley D. Hayes Hancock, Estabrook Law Firm 100 Madison Street, Suite 1500 Syracuse, NY 13202 Email: ahayes@hancocklaw.com   _____________________________ Martin B. Schwimmer LEASON ELLIS LLP One Barker Avenue, Fifth Floor White Plains, New York 10601 Phone: (914) 288-0022 Facsimile: (914) 288-0023 Email: schwimmer@leasonellis.com Attorney for Defendant {08174/609373-000/01551906.2} 27 Case Document 42-1 Filed 08/19/16 Page 1 of 4 EXHIBIT A Case Document 42-1 Filed 08/19/16 Page 2 of 4 Nov. .27, 1962 J. 3,065,915 CONTAINER FOR VOLATILE SUBSTANCES Filed Jan. 8, 1959 7? 77 6 I II I LLU llIl I I A I I >55; I I I I k, _5't ul ?7 r? I Week . . i (If! (#570 weIf) ?23?al E3: 1' 1? IuJeckl 72% .3511] I . weekl 72-x191:9?. :2 70 seen?.3! 5-9): Q??ozf neg/5'. Case Document 42-1 Filed 08/19/16 Page 3 of 4 3,055,915 Patented Nov. 27, 1962 United States Patent Of?ce 1 - . 3,065,915 CONTAINER FOR SUBSTANCES Julius Samann, Alpenstrasse 11, Zug, Switzerland Filed Jan. 8, 1959, Ser. No. 785,724 '1 Claim. (Cl. 239?35) "This invention relates to improvements in envelopes or pouches for pawns members impregnated with volatile substances by means of which ?the volatilizatiou of such sub-stances can be retarded or controlled. Certain substances, such as odorsdestroying, air-per- fuming, or insectedestroying substances, are generally quite- volatile and porous members impregnated with the same have heretofore been enclosed in impervious envee lopes ?ornpouches from which Such members may be partial~ l?y withdraWn to avoid excessive volatiliZation, as shown in ?myPate'ut No. 2,757,957 of Angust 7, 1956. In such articles the extent to which the impregnated members 10 15 should be ?withdrawn from the pouches Was not indicated, -- and frequently purchasers of these articles did not realize that the rate of volatilization could be controlled by with- drawing the impregnated member only partially from the pouch, and such purchasers frequently removed the porous members entirely from the pouches with the result that the volatilization was too rapid and produced an excess-iVely' heavy and consequently unpleasant 'odor?. It is therefore one of the objects of this invention to provide an envelope or package for porous, impregnated members of this kind which may be opened at one end to permit withdrawal of said porous member, and which is provided with graduations on the. package or envelope positioned to cooperate with an indicator on the porous member so that the user of the device may readily see to-what extent the member should ?be withdrawn from the pouch. Pin the accompanying drawings: . FIG. 1 is a face View of a container or pouch embody- ing this invention and having contained therein a porous member impregnated with a volatile substance; FIG. 2 is a similar view thereof showing the porous member partly removed from the container; FIG. 3 .is- a sectional elevatirjn thereof on line FIG. 2; . FIG. 4 is a sectional plan view of a pouch or container of modi?ed construction; FIG. 5 is a sectional elevation similar to FIG. 3 but showing a pouch of another modi?ed construction. The envelope or pouch 5 may be of any suitable im? pervious material in which a porous member or device 6' may be contained. This porous member which may, for example, be made of absorbent material such as employed . in blotting or ?lter paper, and contains or is impregnated with a volatile substance, and when the pouch containing the member is sealed, none or verylittle of the volatile material will escape frOm the pouch. The pouch is formed to be opened at one side, for example, in the upper side or end 7 in the construction illustrated, and the porous mem- ber is preferably provided with a string or cord 8 by means of which it may be suspended. This member may be partly withdrawn so that the upper portion thereof projects through the top of the container or pouch to any desired extent. The pouch may initially be opened at its upper end only to a slight extent so that Only a small por- tion of the porous member extends out of the pouch. In such cases the volatilization of the substances with which the member is impregnated will take place slowly, main- ly from the portion of the member which extends beyond the open end of the pouch. - - The front panel or face of the pouch may be provided with printing on either the inner or outer face thereof, or rendered at least partly opaque, but is provided with a 20 25 30 2 clear, transparent portion orwindow 10 through which a part of the porous and impregnated member 6 is visible, and in order to guide the user to the extent to which the member 6 should be removed from the pouch, graduan tions are provided on the front face of the pouch adjacent to the window 10. These graduations, for example, may represent intervals of time during which different portions of the member may be exposed to the atmosphere. For e'Xam?ple, for the ?rst week a small part of the upper por-' tion of the member can be withdrawn from the pouch, and then for the seCond week the member is further with?? drawn, the graduatiOns in that case being spaced apart to indicate weeks. Cooperating with these graduations is an indicator on the percus member 6. This indicator may be of any desired type, such for example as 'a word of the printed matter on the p'orousmember, a part of this member or an arrow 12 shown by way of example in FIG. 1, on the lower portion of the member, in position to be clearly seen thrOu?gh the window 10. When the indicator or arrow 12 is opp?Osite the ?rst graduation marked ?lst week,? the upper end" of the porous member will eXtend only, to a slight extent beyond the upper end of the pouch. These gr?a?duations are spaced apart in such a manner as'to produce a substantially Uniform amount of of the material with which the porous member 13 1m-? pregnate'd'. For example, duIing the initial position of the member, only a small portion of the upper end of the same isexpose'd to the atmosphere. As the porous mem- . her 6 gradually loses its Strength, relatively larger parts . of this member may be exposed to the atmosphere by 35 moving. the porous member so that the indicator 12' is opposite the graduation marked ?2nd week.? In the? particular construction illustrated, the porous member is in the form of a tree and this generally com- cal "Shape serves two purposes. In the ?rst place, when the volatile material is of the maximum strength, only a 40 50 60 65 70 small part of the apex of the tree or conical member is exposed and gradually larger areas of the tree are ex- posed to the atmosphere while smaller portions of the volatile material are left in the pouch. Another purpose of the conical shape is that as the opening in the upper end 7 of the pouch is gradually increased in size, the conical shape limits the extent to which the member may be drawn out of the pouch and holds the pouch in place on the porous member. When the strength of the vola- tile material has greatly diminished, the pouch can be entirely removed from the porous member which may then be used Without the pouch until it has lost its ef- fectiveness. The usual printed matter on the pouch may be on the inner surface of the front panel of the pouch, as shown at 14 in FIGthe exterior surface of the pouch. The printed matter preferably covers a large enough area of the front panel so that the clear space or window 10, which is free of printing, will be conspicuous and readily noticed by contrast. In the event that the pouch is printed on the inner face and the volatile substance in the pouch has a detri- mental effect on the printing on the inner face of the pouch or .on a card, such di?iculty can be overcome by providing a pouch or envelope with a double front wall as shown in FIG. 4. In this case the inner pouch 22 is transparent and would serve only to con?ne the volatile material, and the printed matter would be on the double front wall 26 having a window 24 through which the porous member 20 and the indicator thereon would be visible. In using this construction the porous member 20 would be withdrawn to the extent indicated by the graduations on the outer wall of the double-walled pouch. In this construction the transparent ?lm extends also Case Document 42-1 Filed 08/19/16 Page 4 of 4 3,065,915 3 around the back face of the pouch and is overlapped to form a heat or adhesive seal. In FIG. 5 Ihave shown a modi?ed form of my invention in which a pouch 30 is made entirely of trans- parent material and a layer or card 31 of paper or other material is arranged at the front face of the pouch, this layer or card being provided with a window and having the graduations printed thereon adjacent to the window, so that they could be seen through a transparent part of the pouch. This card is preferably of a size approxi- mately equal to the interior of the pouch so that when the sealed portions of the upper end of the pouch are opened, the remaining unopened portions will keep the card within the pouch while the porous member is with- drawn. A card or paper of this kind may be used in place of printing in the construction shown in FIG. 4, by inserting the card between the inner and outer front panels of the double walled pouch. The operation of the article shown in FIGS. 4 and 5 is of course identical with that shown in FIGS. 1-3. If the volatile substance is of a nature which would dis- color or stain the card by contact, the back face of the card adjacent to the porous member can be covered with a layer of metal foil or the like 33, thus making it pos- sible to insert the paper or card with printed matter thereon into the same pouch or container with the porous member. By means of the construction described, the porous device and pouch can be readily adjusted relatively to each other so that a substantially uniform amount of volatilization of the material with which the porous mem- ber is impregnated will take place, thus making it pos- sible to impregnate the porous member with a relatively large quantity of volatile material so that the article can remain effective for deodorizing and perfuming a room or other enclosure for a much longer period of time than w0uld be the case if the porous member were impreg- nated with a smaller quantity of the volatile substance. If the extent of withdrawal of the porous device from the pouch were left entirely to the judgment of the user, he might waste much of the volatile substance by exces- sive withdrawal of the member from the pouch, and the resulting strong odor might be displeasing to him. It will be understood that various changes in the de- tails, materials and arrangements of parts which have been herein described and illustrated in order to explain the nature of the invention may be made by those skilled in the art within the principle and scope of the invention as expressed in the appended claim. I claim: A vapor dispensing package for releasing an incre- mental amount of a volatile substance to the atmosphere, comprising: a ?at closed envelope of thin impervious ma- terial with a sealed top end adapted to permit progressive opening thereof; a ?at absorbent body impregnated with the volatile substance and disposed within said envelope; the envelope having an opaque front face with a clear longitudinally extending window through which the ab- sorbent body may be seen; a marking on said body aligned with the window so that it appears in the window and travels along the length thereof toward the top end of the envelope as the body is progressively moved out of the top of the envelope; indicia on said front face and longitudinally spaced along the length of said window, said indicia permitting incremental adjustment of the area of the absorbent body moved out of the envelope through its top end and exposed to the atmosphere; said absorbent body having a point at the top and an outline which flares outward toward the bottom, the outline and the indicia being correlated so that the desired area of the body is exposed; said body outline being suf?ciently rigid to pierce the seal of the top end of the envelope and progressively widen the opening as the body is moved therethrough; the unbroken sealed portion of the en- velope and the outline of the absorbent body cooperating to hold the body and the envelope in adjusted relation. References Cited in the ?le of this patent UNITED STATES PATENTS 1,857,367 Ellison May 10, 1932 1,895,236 Smith et aI. Jan. 24, 1933 2,069,179 Dunaway Jan. 26, 1937 2,155,057 Moore Apr. 18, 1939 2,593,060 Schrader Apr. 15, 1952 2,757,957 Samann Aug. 7, 1956 2,763,395 Meek Sept. 18, 1956 2,766,067 Shinberg Oct. 9, 1956 2,797,844 Meek July 2, 1957 FOREIGN PATENTS 281,201 Italy Jan. 5, 1931 545,113 Great Britain May 11, 1942 Case Document 42-2 Filed 08/19/16 Page 1 of 4 EXHIBIT Open Sereensnm (cars.com Sell& Trade Service 8: Repair HEAR LIN-MANUEL MIRANDA TELL IT audible 3' Air Supply: Putting Today's Fresheners to the Test By Courtney Messenbaugh Start Shopping Find cars for sale nearyou Ll Research a specific model lCompare Vehicles Here at 3am to find you discounts and -lp life go right. My car has a special stench. It's a stench reserved for those of us in our familial prime. those of us whose cars have been the scene of many scent crimes, from dirty diapers to long?forgotten bags to plenty of spilt milk. But @statEP-arm? there is no need to cry. Since we live in a world obsessed with trying to superficially cover up all problems big and small: the marketplace is full of automotive air fresheners, and they're no longerjust simple cardboard pine treesTop Stories When I began this scent?satlonal (sorryII journalistic mission, I was surprised to discover how crowded the automotive air freshener market actually is. The abundance of choices nearly rivals the abundance of cereal 01 2015 Toyota 4Runner TRD Pro Photo choices these days. Clearly, expert guidance is required. I purchased and thoroughly tested a host ofairfresheners Gallery so that you can make an informed choice should your car ever start to smell like mine does. My rating system is like in that each product receives a Good, Acceptable, Marginal or Poor rating based on 02 2017 Jaguar F?Pace Fll'St Drive my experience. The prices below may vary depending on where you live and where you buy. Little Trees Air 03 Alfa Romeo 4C Spider: Pro on the Track, Price: $1.25 each Pain on the Street Rating: Good The original. They've been around for 60 years for a reason. They're light, inexpensive, easy to hang. available in 04 What's the Midsize Sedan for 2015? over 60 fragrances, and they give off a subtle but effective scent. Surprisingly, Little Trees last quite a while if used correctly. Don't tear open the packaging and hang the Tree; instead= follow the instructions and tear only a small triangle in the top otthe packaging and pull out the tree bit by bit over seven weeks, thereby achieving the longest- lasting 42-2 Filed 08/19/16 Page 3 0f 4 Febreze Car Vent Clips Price: $5.35 Rating: GoodlfAcceptable These clips claim to eliminate carodors ratherthan just coverthem up. Total incineration would not be able to eliminate the odors in my car, but these clips did a decentjob. They are small, plastic squares ?lled with pleasant- smelling liquid, and a dial lets you adjust the intensity. The clips easily attach to your car's airvents and are light enough that the vent remains adjustable. Febreze says the clips can last up to 30 days under the right conditions. and I found that to be true. Managing Editor David Thomasr wife put one in their family's wagon, and it. too, lasted a month with a few drops of liquid remaining. These clips lost a few points because they have the highest price tag of all the fresheners I tested. {Look for coupons, people.} Also. the five available scents have names like "thai fruit dragon" and "meadows and rain." which are a bit annoying in their forced extravagance. Bahama 8: Co. Air Fresheners Price: $3.99 Rating: Acceptable These fresheners are for those ofyou who buy things only to please your children or who think Jimmy Buffett is appropriate music for any occasion. These fresheners hang on a string and come in the form of a miniature beach sandal, lei or palm tree-themed pouch. ltested the sandal in a lovely Tahitian vanilla scent. Other available scents include the similarly beach?themed pina colada, island sun and tropical breeze. The scent was robust for about 15 days, and then it simply became a small shoe on a string that my children thought was swell. Yankee Candle Car Jar Price: $2.99 Rating: AcceptablefMarginal They're similar to the Little Trees, though not entirely as satisfying. The Car .Jar is a hanging piece of cardboard depictinga Yankee Candle in ajar, and it comes in about 25 fragrances. Those that I tested came on too strong initially, were too sweet and fruity?smelling overall, and faded awaytoo quickly. A Car Jar Ultimate is available but was not tested. The Ultimate claims to offer up to fourweeks of lasting fragrance, and while that may be true, my guess is that you may not last fourweeks ifthe Ultimate's fragrance is any sweeter and strongerthan the regular CarJah Refresh Your Car Scented Oil Wick Price: $3.49 Rating: Marginal This is made bythe same folks who gave usthe cute little Bahama 8.: Co. mini sandal. Like the Febreze Clip, the Oil lWick attaches to your car's airvent. Unlike the Febreze Clip, this one is made ofglass and is so heavy and large that it compromises the utility of the vent and therefore doesn't work that well since it relies on air blowing through the vent to spread the scent. Italso leaks, creating a precarious combination of glass and oil in my carload of kids. Related CarSmells Like Teen Spirit? Not Anymore More Family News on Cars.com More Automotive News on Cars.com Case Document 42-2 Filed 08/19/16 Page 4 of 4 Email [Zc-urtre'; More from Cars.com How to Transport YOur Christmas Tree Safely Our Company 5-. i: Cl L. r? I2: :1re-.c Site a p. I: re ere. 3 re Jd rer ?mas: 51135-52312 ZIB a Wed Jan 22 2316 14:35:57 :Easle": Day git?"ne- Car Smells Like Teen Spirit? Not Anymore 0 Pa rtne .5. 13::Iepairjal Father's Day Gift Ideas for the Car- Obsessed Dad 9fuo+in Enter Make or Model i. Case Document 42-3 Filed 08/19/16 Page 1 of 3 EXHIBIT 3:391 Sc'ee'ts'tot You. Searcn Case Document 42-3 Filed 08/19/16 IID u:39ro:5a Hoytr To Install Christmas Tree Air Freshener Haley Certified Center Haley Toyota Certified Center a .u 12,188 views I'r?e 0? Uploaded on Jan 29; 2011 Did you know tnat tne'e was a science to installing a Cnristmas tree air lreshene'? You do now! I