7th Circuit Philosophizes About Toilet Paper

     CHICAGO (CN) – “Toilet paper. This case is about toilet paper,” the 7th Circuit wrote in turning away a multibillion-dollar trademark claim, finding that Georgia-Pacific had claimed its “Quilted Diamond Design” is “functional,” and so can be protected by patent, but not by trademark.
     Writing for the three-judge panel, 7th Circuit Judge Terence Evans waxed philosophical in the 17-page ruling: “Are there many other things most people use every day but think very little about? We doubt it.”
     Georgia-Pacific Consumer Products, whose “flagship toilet paper” is called Quilted Northern, claimed Kimberly-Clark’s “signature toilet paper brand,” Cottenelle, violated trademark.
     Georgia-Pacific “rebranded its toilet paper as Quilted Northern, emphasizing a new diamond-shaped embossed design on the tissue, which gives it the appearance of a quilt,” Evans wrote for the circuit.
     Georgia-Pacific applied for trademarks and utility patents. And it was shocked – shocked! – to find that in 2008, Kimberly-Clark, “one of its main competitors in the toilet paper industry, had redesigned its Cottonelle Ultra bath tissue and Scott Kimberly-Clark Professional. Both products used a quilted design which Georgia-Pacific believed to be very similar to its Quilted Diamond Design,” Evans wrote.
     Judge Evans, clearly having a good time, wrote: “Georgia-Pacific unrolled this suit against Kimberly-Clark, alleging unfair competition and trademark infringement under the Lanham Act, for Kimberly-Clark’s introduction of its redesigned toilet paper. Kimberly-Clark moved for summary judgment, arguing that Georgia-Pacific’s Quilted Diamond Design is functional and therefore cannot be protected as a registered trademark. The district judge agreed and granted Kimberly-Clark’s motion. Georgia-Pacific now appeals.”
     Evans then promised to “wipe the slate clean and address Georgia-Pacific’s claims.”
     Evans let the lower court’s decision stand, but not before indulging himself a bit, and searching for irony where, alas, there may be none.
     “The lawyers on both sides of this dispute are truly first rate,” Evans wrote as he plunged in. “Together they cite some 119 cases and 20 federal statutes (albeit with a little overlap) in their initial briefs. We are told that during the ‘expedited’ discovery
     period leading up to the district court decision we are called upon to review, some 675,000 pages of documents were produced and more than a dozen witnesses were deposed. That’s quite a record considering, again, that this case is about toilet paper.
     “We’ll start by introducing the combatants. In the far corner, from an old cotton-producing state (Dixie: ‘I wish I was in the land of cotton, old times there are not forgotten.’) and headquartered in the area (Atlanta) where Scarlett O’Hara roamed Tara in Margaret Mitchell’s epic Gone With the Wind, we have the Georgia-Pacific Company. Important to this case, and more than a bit ironic, is that the name of Georgia-Pacific’s flagship toilet paper is Quilted Northern. In the near corner, headquartered in the north, in Neenah, Wisconsin (just minutes away from Green Bay), and a long way from the land of cotton, we have the Kimberly-Clark Corporation. Ironically, its signature toilet paper brand is called Cottonelle.
     “The claim in this case is that a few of Kimberly-Clark’s brands of toilet paper are infringing on Georgia-Pacific’s trademark design. But again, this case is about toilet paper, and who really pays attention to the design on a roll of toilet paper? The parties, however, are quick to inform us that in a $4 billion dollar industry, designs are very important. Market share and significant profits are at stake. So with that, we forge on.”
     After straining mightily, Evans found that the quilted toilet paper design was too basic to be trademarked.
     “If a design is functional the owner cannot trademark the design and block innovation,” Evans wrote.
     Going the extra mile for Georgia-Pacific, the judge wrote it may well be that the quilting “improves softness and comfort, increases bulk, enhances structure, and prevents nesting and ridging-all claims of quality.”
     But, rolling it all up, Evans concluded: “Georgia-Pacific, whether intentionally or not, patented their Quilted Diamond Design and claimed it to be functional. They must now live with that choice and can benefit only under the protection of a patent, not that of a trademark.”

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