Down East wreath companies tangle over Christmas tree design

Posted Nov. 23, 2010, at 3:28 p.m.

HARRINGTON, Maine — Two Maine wreath companies are headed to court — for a third time — after Morrill Worcester of locally based Worcester Wreath Co. filed suit this week in federal court against David Whitney of Whitney Originals LLC of Machias.

The dispute centers on the design of and decorations on a miniature Christmas tree that Worcester contends Whitney deliberately copied, despite an existing patent and an earlier agreement between the two competing companies regarding the tree’s design.

Even though both companies operate out of Washington County, the suit was filed in U.S. District Court in Bangor because of claims that Whitney violated federal patents.

In the suit, Worcester claims unfair competition, trade infringement, deceptive trade practices, breach of contract and patent infringement by Whitney.

Worcester also has asked the court for a permanent injunction to prevent Whitney’s creation and sale of the trees.

Neither Worcester nor his attorney, Charles Gilbert of Bangor, returned calls for information Tuesday.

When contacted Tuesday, David Whitney referred all questions to his attorney, James Haddow of Portland.

Haddow said the lawsuit is really about the decorations on the tree, although decorations are not specifically mentioned in the suit. He said they are referred to in the lawsuit as “trade dress.”

The miniature Whitney holiday tree, he said, consists of a foam cone into which balsam branches have been inserted. It is decorated with a cascading red ribbon and red berry clusters.

Worcester sells 11 different tabletop trees through his website. All of them are decorated with pine cones, and some have additional items such as candy canes, cinnamon sticks and cardinals.

In the lawsuit, Worcester maintains that he created and sold a distinctive miniature Christmas tree through L.L. Bean and other retail outlets. These trees were patented.

Whitney challenged those patents in federal court in 2000, and the court ruled in 2002 that the patents were valid.

As part of the 2002 ruling, both parties entered into a settlement agreement in which Whitney was licensed to make and distribute his own version of a miniature tree that would not cause confusion in the marketplace.

“There are specific differences [between the two trees] that David Whitney made sure were there. In fact, he and L.L. Bean went back and forth several times to ensure that David’s trees were distinct,” Haddow said Tuesday.

Worcester charges in the suit, however, that after Whitney won Worcester’s contract to supply L.L. Bean with evergreen holiday items in 2009, Whitney agreed to supply L.L. Bean in 2010 with a tree that “substantially copies significant elements” of Worcester’s patented design.

“There is a reasonable likelihood of confusion” between the two companies’ trees, the lawsuit contends, threatening Worcester with a loss of sales and profits.

The lawsuit accuses Whitney of “careful and considered planning” and intentionally designing his tree to simulate the appearance of Worcester’s, therefore engaging in deceptive trade practices.

Haddow said, “It is not a coincidence” that Whitney’s trees were acceptable to Worcester until Whitney won the L.L. Bean contract.

Worcester and Whitney are far from strangers when it comes to facing off in a courtroom. Besides the 2000 lawsuit by Whitney, Worcester sued Whitney in 2009 after Whitney began erecting a large warehouse on Route 1 in Whitneyville. Worcester claimed the building bisected a right of way he held to property behind the warehouse.

An injunction requested by Worcester in that lawsuit was dismissed, and the parties reached a settlement agreement.

No court date has been set for the current suit, and Haddow said no temporary restraining order request has been filed, which would have attempted to block Whitney’s production of the trees for this holiday season.