Ga.-Pacific Consumer Prods. LP v. Kimberly-Clark Corp. - 647 F.3d 723 (7th Cir. 2011)

Rule:

A design is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. Courts look to several factors to determine whether a design is functional: (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.

Facts:

Georgia-Pacific Company rebranded its toilet paper as Quilted Northern, emphasizing a new diamond-shaped embossed design on the tissue, which gave it the appearance of a quilt; the design was referred to as the “Quilted Diamond Design.” To protect the Quilted Diamond Design, Georgia-Pacific applied for and received several trademarks, copyrights, and utility and design patents. The same lattice designs depicted in Georgia-Pacific's trademarks appeared in five utility patents. In 2008, Georgia Pacific discovered that Kimberly-Clark, one of its main competitors in the toilet paper industry, had redesigned its Cottonelle Ultra bath tissue and Scott Kimberly-Clark Professional. Both products used a quilted design which Georgia-Pacific believed to be very similar to its Quilted Diamond Design. Consequently, Georgia-Pacific filed a suit against Kimberly-Clark Professional, alleging unfair competition and trademark infringement under the Lanham Act, for Kimberly-Clark's introduction of its redesigned toilet paper. Kimberly-Clark moved for summary judgment, arguing that Georgia-Pacific's Quilted Diamond Design was functional and therefore cannot be protected as a registered trademark. The district court granted Kimberly-Clark's motion. Georgia-Pacific appealed.

Issue:

Was Georgia-Pacific's Quilted Diamond Design functional and cannot be protected as a registered trademark?

Answer:

Yes.

Conclusion:

The court held that the Georgia-Pacific's Quilted Diamond Design was functional and therefore could not be trademarked. The court noted that the central advance claimed in the utility patents was embossing a quilt-like diamond lattice filled with signature designs that improved the perceived softness and bulk, and reduced nesting and ridging. This was the same essential feature claimed in the trademarks. Thus, the language of the patents was strong evidence that the design was functional, and the company had failed to offer evidence that the design was merely incidental. Georgia-Pacific's linked the quilted feature to numerous utilitarian benefits, such as softness, comfort, and absorption, which further affirmed that the design was functional. The court ruled that the fact that there were numerous alternative designs did not, on its own, render the design nonfunctional and incidental. The court held that Kimberly-Clark had produced strong evidence of functionality, and Georgia-Pacific had failed to prove that the design was incidental.