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