Monday, October 4, 2010

No Surprise: Quilted Toilet Paper is Functional

The Northern District of Illinois has ruled that the "Quilted Diamond Design" on Georgia-Pacific's "Quilted Northern" toilet paper is functional, and can't be the subject of trademark protection.  Georgia Pacific Consumer Products v. Kimberly-Clark Corp., No. 09-C-2263 (N.D. Ill. Sept. 30, 2010).  GP asserted four registered trademarks in its "Quilted Diamond Design" against Kimberly-Clark's toilet paper with the same design.

The court applied the following test for functionality:

The issue of whether an item is functional can be broken down to five factors.  See, e.g., Specialized Seating, Inc. v. Greenwich Indus., L.P., 472 F. Supp. 2d 999, 1011 (N.D. Ill. 2007) (Holderman, C.J.).  Functionality turns on: “(1) the existence of a utility patent, expired or unexpired, that involves or describes the functionality of an item’s design element; (2) the utilitarian properties of the item’s unpatented design elements; (3) advertising of the item that touts the utilitarian advantages of the item’s design elements; (4) the dearth of, or difficulty in creating, alternative designs for the item’s purpose; (5) the effect of the design feature on an item’s quality or cost.”  Id.
Unfortunately for GP, it also held utility patents on the same diamond design. The court thus stated:

The existence of a utility patent that covers the asserted designs can be a “cheat sheet” for deciding whether a design is useful, and therefore functional.  Jay Franco, 2010 WL 3156539, at *2.  If the “central advance” claimed in the utility patent matches the “essential feature” of the trade dress or trademark, that constitutes strong evidence that the design is functional.  TrafFix, 532 U.S. at 30.  Satisfying this requirement places a “heavy burden” on the trademark owner to show nonfunctionality.  Specifically, the owner of the trademark can overcome the burden by showing that the design at issue is an “ornamental, incidental, or arbitrary aspect of the device.”  TrafFix, 532 U.S. at 30; see, e.g., Berlin Packaging, LLC, v. Stull Tech., Inc., 381 F. Supp. 2d 792, 799 (N.D. Ill. 2005) (Denlow, M.J.).

The Court also rejected the assertion that there were alternative designs that achieve the same functionality:  "A design that serves a functional purpose does not become nonfunctional solely because of the possibility of numerous alternative designs."  Accordingly, the Court held the diamond design functional and not subject to trademark protection.  It's unclear whether GP has any patent claims against Kimberly-Clark.

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