Georgia Pacific embossed a quilted pattern on its QUILTED NORTHERN toilet tissue. It held registered trademarks, utility patents and design patents covering or related to the quilted design. Defendant Kimberly Clark allegedly infringed. Defendant argued that GP’s registration for its quilted design was invalid on functionality grounds. GP argues that the quilted design was incidental to functionality.
When considering whether a trademarked design is functional, the Court will look to:
(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.
With regard to utility patents, KP had claimed that its embossed quilted design improved the perception of softness and of bulk, and reduced nesting and ridging. (I looked this up here – ‘ridging’ is the appearance of ridges and valleys in a roll of paper giving the appearance of corrugation, and is a sign of poor product quality. Nesting occurs is when embossed elements fit into the embossed elements in the layer below, which apparently is a bad thing (I’m assuming that nesting makes the sheets stick together)).
With regard to factor three, advertising, GP had stated in its ads that the product was:
(1) “Quilted to Absorb”; (2) “Quilted to create thousands of places for moisture to go”; (3) “Our two softest layers of premium tissue are gently quilted together to give you and your family exceptional softness and comfort”; and (4) “Quilted Northern Ultra with a unique new quilted design for more quilting and comfort than ever before.”
GP argued that this advertising was mere puffery.
The 7th Circuit was not overly concerned by factors two, four and five, and found that factors one and three favored Kimberly. It invalidated GP’s trademark concluding: “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
I’m Ollie, senior dog correspondent. Defendant was inches away from a police K-9 named Timber, no doubt a good dog, making barking and hissing noises, agitating Timber. When a police officer approached defendant (who apparently smelled of alcohol), defendant informed the officer that ‘the dog started it.’ Defendant was arrested for the misdemeanor of maliciously or willfully teasing a police dog. Held: the court distinguished this case from an earlier holding where defendant was at least thirty feet from the animal and there was no possibility of any physical contact with the police dog in that instance. Here, defendant had stirred the dog to a violent and disruptive level, where the K-9 could have been seriously injured. The sufficiently important governmental interest of preventing such injury justified the incidental limitation on First Amendment freedoms. Furthermore, the court ‘failed to see any message the Defendant intended to convey” in his barking and hissing. Motion to dismiss overruled.
And if you bark or hiss at me, I will silently judge you.
We See No Benefit To This 'Catalog' From USA TradeMark Ent. of Wilton Manors, Florida, And Will Not 'Accept This Offer'
We received the notice reproduced above because of our US registration for LEASON ELLIS. We are aware of no legal benefit that will arise if the owner of a federal trademark registration has its registration details published in a ‘catalog’ of registrations. The company actually appears to admit this in its FAQs (third from bottom). We are also of the view that “We recommend you to take this registration . . .” and “By paying the indicated amount you accept this offer that will approve the listing ” are grammatically incorrect.
I suspect that this is the New World Mall on Main Street in Flushing (I grew up in Flushing, FWIW). Photo from here.