Summary
**Holding:** The Second Circuit reversed summary judgment for Car-Freshner's "Black Ice" mark, finding genuine issues of trademark infringement and state-law unfair competition where Energizer's "Midnight Black Ice Storm" used the same two nondescriptive words in sequence and there was explicit evidence of bad faith intent to "get as close to the Black Ice name as we can." However, the court affirmed summary judgment for Energizer on "Bayside Breeze" claims, because the single shared word "Breeze" and dissimilar packaging did not create a likelihood of confusion, and affirmed dismissal of federal dilution claims for both marks due to insufficient evidence of fame. The opinion weighs the *Polaroid* factors de novo and emphasizes that a junior user's inclusion of a senior user's entire mark in sequence on directly competing products can preclude summary judgment despite packaging differences.
Topics
Practice areas
Questions Presented
- Whether the district court properly granted summary judgment on the likelihood of confusion for CFC's 'Black Ice' mark.
- Whether the district court properly granted summary judgment on the likelihood of confusion for CFC's 'Bayside Breeze' mark.
- Whether the district court properly granted summary judgment on the federal dilution claims.
- Whether the district court properly granted summary judgment on the state law claims.
Holdings
- The record developed by CFC sufficed to withstand Energizer's motion for summary judgment; genuine issues of material fact exist as to the likelihood of confusion.
- CFC failed to raise a genuine issue of material fact on likelihood of confusion; summary judgment for Energizer was proper.
- Summary judgment for Energizer was proper because CFC's marks are not famous as required by the Lanham Act.
- Summary judgment is reversed for the 'Black Ice' mark but affirmed for the 'Bayside Breeze' mark, consistent with the federal infringement analysis.
Key quotations
“get as close to the Black Ice name as we can, without running into legal issues” (12)
“We want the customers to immediately make the connection.” (12)
“intent has always been to draw close to the Bayside Breeze in fragrance and concept” (13)
“Obviously we don't want to tell our customers this.” (13)
“the evidence is insufficient for a reasonable juror to conclude that the products in question are sufficiently similar to create a likelihood of confusion as to the source of the goods.” (30)
“We therefore affirm in part, reverse in part, and remand.” (35)
Factual background
Car-Freshner Corporation (CFC) sells automotive air fresheners under the brand Little Trees, with scents including 'Black Ice' and 'Bayside Breeze.' Energizer sells competing air fresheners under the brand Refresh Your Car!, with scents including 'Midnight Black Ice Storm' and 'Boardwalk Breeze.' CFC's 'Black Ice' mark is strong and widely recognized. Energizer's internal emails show intent to get close to CFC's marks. The products are sold at the same retailers at low prices.
Procedural history
The district court granted summary judgment to defendants on all claims. Plaintiffs appealed.
Remand instructions
We REMAND the case to the District Court for further proceedings consistent with this opinion.