IP Update, Vol. 14, No. 8, August 2011 (Part 2).

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IP Update, Vol. 14, No. 8, August 2011 (Part 2).

Trademarks / Functionality

Kimberly-Clark Finds a Soft Touch on Appeal by Natalie A. Bennett

The U.S. Court of Appeals for the Seventh Circuit, on a de novo review of a district court grant of summary judgment in favor of defendant in an unfair competition and trademark infringement suit involving patterned toilet paper, disposed of plaintiff's claim using ironic and candid prose to explain its conclusions. Georgia-Pacific v. Kimberly-Clark, Case No. 10-3519 (7th Cir., July 28, 2011) (Evans, J.).

Georgia-Pacific sued Kimberly-Clark over the design similarity between Quilted Northern and Cottonelle toilet paper. Both brands bear diamond-shaped designs on the surface of the paper, and Georgia-Pacific asserted that the Cottonelle brand infringed its allegedly "incontestable" trademarks. Kimberly-Clark defended on the basis that the functionality of the design trumped any goodwill plaintiff may have made in promoting its mark to consumers. After Kimberly-Clark prevailed on its functionality defense, Georgia-Pacific appealed. In affirming the district court decision, the 7th Circuit agreed that the functionality of the quilted diamond designed used on Quilted Northern toilet paper precluded Georgia-Pacific from relying on the Lanham Act to protect its mark, in large part because the plaintiff already had already opted to protect the quilted design through utility patents. The court was quick to point out that even where a mark has incontestable status under 15 U.S.C. s. 1065, it does not make the mark "invincible."

In finding the pattern design embossed on the toilet paper was functional, the court focused its inquiry on post-TrafFix factors...

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