LEVAL, Circuit Judge:
This action for trademark infringement involves the principle that the public's right to use language and imagery for descriptive purposes is not defeated by the claims of a trademark owner to exclusivity.
Plaintiff Car-Freshner Corporation sells air fresheners for cars in the shape of a pine tree. Over a number of years, Car-Freshner has sold millions of such pine-tree-shaped fresheners. Its air fresheners are made of flat scented cardboard and come in a variety of colors and odors, including a green pinescented version. They have a string attached to the top of the tree, so that they can be hung from the rear-view mirror of an automobile. We assume that plaintiff has established trademark rights in the pine-tree shape of its product and in the name "Little Tree," which it uses on some of its products.
Defendant S.C. Johnson & Son, Inc., sells air fresheners under the trademark name "Glade." Johnson's "Glade" products include a line of air fresheners called "Plug-Ins," designed to be plugged into electrical outlets. Glade Plug-Ins have a plastic casing that holds a replaceable fragrance cartridge of scented gel. When the unit is plugged in, the electrical current warms the gel, causing release of the fragrance into the air. During the Christmas holiday season, Johnson sells a pine-tree-shaped, plug-in air freshener called "Holiday Pine Potpourri" under its Glade Plug-Ins trademark.
Car-Freshner brought this action against Johnson, claiming that Johnson's sale of its pine-tree-shaped plug-in freshener violates Car-Freshner's trademark rights in the pine-tree shape of its air fresheners and in its mark "Little Tree." Plaintiff claims: (1) trademark infringement under 15 U.S.C. § 1114(1); (2) false designation of origin, in violation of 15 U.S.C. § 1125(a); (3) common law trademark infringement and unfair competition; and (4) trademark dilution under N.Y.Gen.Bus.Law § 368-d. Johnson, in addition to denying that its use of a pine-tree shape creates a likelihood of confusion, asserted the affirmative defense known in trademark law as fair use.
Johnson moved for summary judgment, arguing that the dissimilarity between the two products and the fair use defense precluded a finding of infringement as a matter of law. The district court rejected Johnson's claim of fair use and granted summary judgment to Car-Freshner on that issue. The court ruled that the defense of fair use applies only when the plaintiff's mark is descriptive, and is not applicable here because the court found plaintiff's mark to be suggestive. The district court nonetheless granted summary judgment to Johnson on the ground that the plaintiff's and defendant's tree-shaped products were sufficiently dissimilar that there was no likelihood consumers would be confused as to the source of the two products. Accordingly, judgment was awarded to the defendant Johnson.
Car-Freshner appeals. Johnson cross-appeals, arguing that the district court erred in its fair use determination. We affirm the district court's grant of summary judgment in favor of Johnson, but on grounds of fair use.
The district court rejected Johnson's claim of fair use because it believed such a defense could be mounted only against a mark classed as "descriptive" in the fourtiered hierarchy of trademark law — generic, descriptive, suggestive, and arbitrary or fanciful. See Abercrombie, 537 F.2d at 9-11 (describing the four levels of trademark classifications). Although there is authority for that proposition, see Institute for Scientific Info. v. Gordon and Breach, Science Publishers, Inc., 931 F.2d 1002, 1010 (3d Cir.), cert. denied, 502 U.S. 909, 112 S.Ct. 302, 116 L.Ed.2d 245 (1991); Cullman Ventures, Inc. v. Columbian Art Works, Inc., 717 F.Supp. 96, 133 (S.D.N.Y.1989); 3A Callmann § 21.24, at 212, we believe that notion is misguided.
Whether the mark is classed as descriptive (and thus ineligible for protection without secondary meaning) depends on the relationship between the mark and the product described. Thus words like SWEET or CHEWY would be descriptive for a candy, but would be suggestive, or even arbitrary or fanciful, if used in connection with bed sheets, a computer, or an automobile. 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. See Dowbrands, L.P. v. Helene Curtis, Inc., 863 F.Supp. 963, 966-69
Section 1115(b)(4) includes no prerequisite that the mark sought to be protected be on the descriptive tier. In Abercrombie, 537 F.2d at 12, we found fair use without needing to resolve whether the plaintiff's mark was descriptive or suggestive. Similarly, in Venetianaire Corp. of America v. A & P Import Co., 429 F.2d 1079, 1082 (2d Cir.1970), we noted that the defendant could have asserted fair use had he used the plaintiff's fanciful mark in a descriptive manner, rather than as a trademark. And in Holzwarth v. Hulse, 14 N.Y.S.2d 181 (Sup.Ct.1939), the court permitted the defendant to use the plaintiff's mark, a red arrow, in a descriptive manner even though the plaintiff's mark was clearly not on the descriptive tier of the trademark hierarchy.
In short, fair use permits others to use a protected mark to describe aspects of their own goods, provided the use is in good faith and not as a mark. See 15 U.S.C. § 1115(b)(4). That is precisely the case here. Johnson's use of the pine-tree shape describes two aspects of its product. The pine tree refers to the pine scent of its air freshening agent. Furthermore, as a Christmas tree is traditionally a pine tree, the use of the pine-tree shape refers to the Christmas season, during which Johnson sells this item. Johnson's use of the pine-tree shape is clearly descriptive. There is no indication that Johnson uses its tree shape as a mark. Its pine-tree-shaped air fresheners come in boxes prominently bearing the "Glade Plug-Ins" trademark as well as Johnson's corporate logo. Each unit has "Glade" imprinted across the front of the product itself.
Car-Freshner contends that Johnson adopted the mark in bad faith and therefore cannot claim fair use. Car-Freshner bases its argument primarily on the fact that Johnson adopted its tree shape with knowledge of Car-Freshener's use of the tree shape and without consulting counsel. There is no merit to this argument. As Johnson was fully entitled to use a pine-tree shape descriptively notwithstanding Car-Freshener's use of a tree shape as a mark, the fact that it did so without consulting counsel has no tendency to show bad faith. See U.S. Shoe, 740 F.Supp. at 199 n. 3 (defendant's knowledge of plaintiff's success with mark is insufficient to show bad faith); Restatement (Third) of Unfair Competition § 28 cmt. d (1995) (describing examples of bad faith).
We therefore reverse the district court's grant of summary judgment to Car-Freshner on the defense of fair use and direct entry of summary judgment in favor of Johnson on that issue. We thus affirm the dismissal of Car-Freshner's complaint.