Trademark Claim Flushed by Seventh Circuit

13 September 2011 Second City Bench Memo Publication

The “Quilted Diamond Design” of toilet paper made by Georgia-Pacific is functional and therefore cannot be protected as a registered trademark under federal law. Georgia-Pacific Consumer Products L.P. v. Kimberly-Clark Corp., 7th Cir., No. 10-3519, 7/28/11.

In short: Defendant Kimberly-Clark was entitled to summary judgment on Georgia-Pacific’s trademark and unfair competition claims because the asserted product configuration trademarks reflected functional product features, and were therefore invalid.

Lesson: Trademark owners seeking to push the boundaries of trademark law to encompass non-traditional trademarks, such as product features, should be cognizant of the effects of existing utility patents and advertising claims on their ability to successfully assert such claims.

The parties, Plaintiff Georgia-Pacific Consumer Products L.P. (“Georgia-Pacific”) and Defendant Kimberly-Clark Corp. (“Kimberly-Clark”), are consumer products companies who compete with one another in the toilet paper market. Georgia-Pacific is the owner of the “Quilted Northern” brand and several trademark registrations, copyright registrations, and utility and design patents used in connection with its product and product design. Kimberly-Clark is the maker of Cottonelle Ultra and Scott toilet paper.

Georgia-Pacific brought claims against Kimberly-Clark, alleging that Kimberly-Clark’s use of diamond shapes in its toilet paper design violated Georgia-Pacific’s registered trademark rights. Before the district court, Kimberly-Clark was granted summary judgment on the basis that Georgia-Pacific’s asserted trademark was functional and, therefore, not protectable as a trademark. On appeal, the Seventh Circuit agreed.

Applying the test set forth by the Supreme Court in Traffix Devices v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001), the Court of Appeals analyzed whether the designs Georgia-Pacific sought to protect as trademarks are “essential to the use or purpose of the article or [effect] the cost or quality of the article.” The Court found that both the claims and specifications in five utility patents claimed the quilted diamond design as a useful and functional feature. The court found this to be strong evidence that the claimed designs were functional and ineligible for trademark protection. As stated by the Court, “reading the language of the patents, we find that the central advance claimed in the utility patents is embossing a quilt-like diamond lattice filled with signature designs that improves (perceived) softness and bulk, and reduces nesting and ridging. This is the same essential feature claimed in the trademarks.”

Georgia-Pacific argued that the existence of design patents was evidence of non-functionality. The Court rejected the argument. Although design patents have a similar limitation on functionality as product configuration trademarks, the Court seemed to find the evidence of functionality from the utility patents to be overwhelming.

In further support of its conclusion, the Court cited the promotion of the functional benefits of Georgia-Pacific’s quilted diamond design in its advertisements. According to the Court, “the language in the ads is clear—the Quilted Diamond Design is unequivocally linked to functional benefits such as absorbency, softness, and comfort.”

Finally, the court held that because the quilted diamond design was not protectable as a trademark on the toilet paper itself, it also was not protectable as a trademark on packaging for the toilet paper.

The Seventh Circuit’s holding that Georgia-Pacific’s toilet paper product configuration trademarks is functional, and not protectable under trademark law, provides important guidance as to the outer reaches of trademark law. Courts in recent years have expanded the types of source identifiers eligible for trademark protection to include various types of non-traditional trademarks to include sounds, colors, and smells. The Georgia-Pacific decision makes clear that the requirements that all marks designate origin and do not attempt to monopolize functional features remains in force and provides the conceptual distinction between the domains of patents and trademarks.

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