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Regardless whether the protected mark is descriptive, suggestive, arbitrary, or fanciful as used in connection with the product or service covered by the mark, the public's right to use descriptive words or images in good faith in their ordinary descriptive sense must prevail over the exclusivity claims of the trademark owner.
Plaintiff Car-Freshner Corporation sells air fresheners for cars in the shape of a pine tree. Defendant S.C. Johnson & Son, Inc., sells air fresheners under the trademark name "Glade." Car-Freshner sued S.C. Johnson & Son, claiming S.C. Johnson & Son's sale of its pine-tree-shaped plug-in freshener violated Car-Freshner’s trademark rights in the pine-tree shape of its air fresheners and in its mark. S.C. Johnson & Son asserted the affirmative defense of fair use and moved for summary judgment. The lower court rejected S.C. Johnson & Son’s claim of fair use and granted summary judgment to Car-Freshner on that issue. However, the lower court granted summary judgment to S.C. Johnson & Son on the ground that there was no likelihood of confusion between products. Both parties appealed.
Did S.C. Johnson & Son's sale of its pine-tree-shaped plug-in freshener violate Car-Freshner’s trademark rights in the pine-tree shape of its air fresheners and in its mark?
The court held that fair use permitted others to use protected marks to describe aspects of their own goods, provided use was in good faith and not as a mark. The court held that S.C. Johnson & Son’s use of a pine-tree shape was clearly descriptive. There was no indication S.C. Johnson & Son used its tree shape as a mark. S.C. Johnson & Son was fully entitled to use a pine-tree shape descriptively, notwithstanding Car-Freshner’s use of a tree shape as a mark.