K-C Wins in Tissue Trademark Dispute with G-P

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A U.S. federal appeals court has sided with Kimberly-Clark, Neenah, Wis., USA, in a trademark dispute with Georgia-Pacific, Atlanta, Ga. According to a report this week by the Milwaukee, Wis.-based Journal Sentinel (JS), G-P had sued K-C, claiming some of its toilet paper brands infringed on G-P's trademarks, specifically, the quilted patterns of Quilted Northern (featured in TV ads for the product in the early 2000s).

In 2008, G-P learned some of K-C's papers, such as Cottonelle Ultra, were using a similar diamond-shaped design in the tissue, and sued, the newspaper reported. K-C argued that the diamond quilting was functional, not merely ornamental, and can only be protected by patent, not trademark. A district judge agreed and dismissed G-P's case, and it appealed.

Writing for the three-judge panel in the 7th Circuit Court of Appeals, Judge Terence Evans of Milwaukee couldn't resist a few puns and a little humor in affirming the lower court's decision, the newspaper article continued.

"This case is about toilet paper. Are there many other things most people use every day but think very little about? We doubt it. But then again, only a select few of us work in the rarefied air inhabited by top-rate intellectual property lawyers," Evans began. 

Later, he wrote:

"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."

And this bit:

"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 Co. 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, Wis. (just minutes away from Green Bay), and a long way from the land of cotton, we have the Kimberly-Clark Corp. Ironically, its signature toilet paper brand is called Cottonelle."

The court pointed out that five prior utility patents by G-P noted the diamond embossing for "puffiness and bulk" as a central advance, strongly suggesting the feature was functional, and therefore invalid from protection by trademark. It also noted that G-P's own advertising for the toilet paper emphasizes the functional aspects of the disputed design: "Our two softest layers of premium tissue are gently quilted together to give you and your family exceptional softness and comfort."

G-P argued that the ads were mere "puffery," not factual statements about the product.