Toilet Paper Trademark Flushed Away

Those quilted designs on toilet paper are functional and cannot be trademarked, the Seventh Circuit has found.

The appellate court agreed that Georgia-Pacific’s trademark for its “Quilted Diamond Design” was invalid because the quilted design has “numerous utilitarian benefits, such as softness, comfort and absorption,” all functional features.  As a result, Kimberly-Clark’s Cottonelle brand cannot be liable for trademark infringement.

Georgia-Pacific sued Kimberly-Clark for unfair competition and trademark infringement for using a quilted diamond design in making its toilet paper.  The trial court found the design was functional and could not be protected as a trademark and granted a motion to dismiss the case, which Georgia-Pacific appealed.  The appellate court affirmed the trial court’s ruling.

The problem for Georgia-Pacific was that it not only sought trademark protection for its quilted design, but it also obtained design and utility patents.  The company claimed that the “central advance” in the patents “is embossing a quilt-like diamond lattice filled with signature designs that improves (perceived) softness and bulk, and reduces nesting and ridging.  This is the same ‘essential feature’ claimed in the trademarks.  Thus, the language of the patents—the claims, abstracts, and preferred embodiment—is ‘strong evidence’ that the Quilted Diamond Design is function, and Georgia-Pacific has failed to offer evidence that the design is merely incidental.”

Under trademark law, if the trademark is for a functional design, then the trademark is invalid.  “Georgia-Pacific, whether intentionally or not, patented their Quilted Diamond Design and claimed it to be functional. They now must live with that choice and can benefit only under the protection of a patent, not that of a trademark,” the court found.

Georgia-Pacific Consumer Products, LP v. Kimberly-Clark Corporation, Seventh Cir. No. 10-3519, decided July 28, 2011.