Judge Waxes Comedic On Whether You Can Trademark Quilted Diamonds On Toilet Paper

from the toilet-paper! dept

Bryan points us to this bit of fun from a judge in opening his ruling in a case over the ability to trademark "quilted diamonds" on toilet paper. The appeals court ruling by Judge Terence Evans opens (as pointed out by Michael Barclay at the link above) in a rather amusing fashion, in clearly mocking the very fact that two consumer products giants, Georgia Pacific and Kimberly Clark are even bothering to fight over the ability to put "quilted diamonds" on toilet paper:

Toilet paper. 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 who specialize in presenting and defending claims of unfair competition and trademark infringement under the Lanham Act, 15 U.S.C. §§ 1051 et seq. And the lawyers on both sides of this dispute are truly firstrate. 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.

If you'd like to see where it goes from there, you can read the full decision (pdf), but I will say that, given those three opening paragraphs, it's hard not to read the rest of the ruling without thinking that Judge Evans would prefer to be dealing with pretty much any other case rather than one about a dispute on quilted diamonds on toilet paper.

Update: Title changed, as the original was misleading. There was an awkward phrasing in the judges statement about the amount of documents in discovery which suggested that the judges themselves were asked to read all 675,000 pages, but he's really just noting that so many pages were produced during discovery...

Filed Under: toilet paper, trademark
Companies: georgia pacific, kimberly clark

If You Don't Get The Matching Brand Paper Towel Out Of A Dispenser In A Restroom... Is That Trademark Infringement?

from the wash-your-hands,-everybody dept

The more you travel, the more you realize just how many different options there are in restrooms around the globe to enable people to dry their hands. However, if you see a particular brand of paper towel dispenser, do you expect that a related brand of paper towels will come out of them? And should it be trademark infringement if they do not? Apparently, the company Georgia Pacific makes the EnMotion brand of paper towel dispensers for restrooms -- and includes a contractual provision that those used will only use EnMotion brand paper towels. Another company came up with competing paper towels that worked in the EnMotion dispenser. GP sued the company making the replacement paper towels, claiming contributory trademark infringement -- saying it's akin to a Coca-Cola soda machine, where people expect Coca-Cola to come out of it. That may be true... but does anyone actually expect a specific brand of paper towel to come out of a random dispenser? GP, of course, found "experts" to conduct studies that said yes, but that seems difficult to believe. Perhaps I'm missing something, but does anyone out there actually expect a specific brand of paper towels out of a particular dispenser?

GP is claiming that the other company is guilty of contributory trademark infringement, which would mean that anyone using these replacement paper towels could be guilty of direct trademark infringement, which seems like a blatantly ridiculous reading of trademark law. The lower court agreed that this was ridiculous and found no evidence of any kind of confusion among the distributors involved in selling and stocking the EnMotion dispensers. However, the appeals court points out that it also needs to be considered whether or not the real end-users were confused -- and notes that there's significant evidence that people might be confused. I still don't buy it. I can't recall ever even caring what brand paper towels comes out of a dispenser. If asked I might just say the same brand as the dispenser company, but that's just because it's the easiest answer, not because it needs to be.

For now, the case has been sent back to the lower court to determine whether or not end-users are really confused. Perhaps the court can hold part of the session in the court's restrooms to determine whether or not there's a real "likelihood of confusion."

Filed Under: enmotion, paper towels, trademark
Companies: georgia pacific