Each of the seasons has its own soundtrack to signal its transition. Spring is symbolized by the chirping of robins and sparrows. The sound of the grill and the splashing in the pool announces the arrival of Summer. Unfortunately for Winter, it got the short end of the stick. Nothing says Winter is on its way like the sound of you, your loved ones, and your co-workers, reaching for a tissue and blowing their nose.
Those in the know on matters of the nose will take note: you reach for a tissue and not necessarily a Kleenex®. The owner of the Kleenex® brand has fought hard to keep its trademark from becoming generic, even purchasing advertisements to educate consumers on this distinction, like the ad reproduced below reminding consumers that “‘Kleenex’ is a brand name and should always be followed by an ® and the word ‘Tissue.'”
The effort is ongoing, but Kleenex® continues to be a valid registered trademark. Even if Wikipedia (currently) states otherwise.
But the Kleenex® brand has more than one legal battle on its hands. This battle is not with consumers but instead with the U.S. Trademark Office. In May, Kimberly Clark (the owner of the Kleenex® brand) filed a trademark application for a product packaging configuration for facial tissue. The mark is described as “the configuration of a folding container for facial tissues” and is displayed in the drawing below:
The actual product packaging, closed and open, looks like this:
The Examining Attorney has refused registration, finding that the claimed mark is functional. We’ve discussed the limits imposed by the functionality doctrine a number of times at Duets Blog, wondering aloud whether 2015 might be “the year of functionality refusals.” In short, a claimed mark is functional if it comprises matter that, on the whole, is essential to the use or purpose of the product, if it affects the cost or quality of the product, or if it would put competitors at a significant non-reputation-related disadvantage.
In support of the refusal, the Examining Attorney identified a number of utility patents owned by Kimberly Clark for facial tissue dispensers and packaging. Interestingly, none of the patents appear to cover this particular design, but instead address older versions of packaging, or a particular component that allows the packaging to dispense only one tissue at a time. The Examining Attorney also relied upon statements from advertisements for the goods, which claimed that the packaging is “slim, stylish and easily fit in a backpack or back pocket.”
The Examining Attorney’s evidence supports a prima facie case, but doesn’t appear bullet proof. Yet at first glance, the packaging appears to be nothing but functional. The packaging allows the tissues to be carried in a compact container, making it amenable to travel. The flat packaging is likely the most beneficial shape, making it easy to fit in pockets or bags. The folding feature is a simple and easy way to close the package, keeping contents from falling out, but still being readily accessible by the consumer. Overall, it looks like an uphill battle.
No response has been filed yet, but perhaps Kimberly Clark will find a way to overcome the refusal. Like the common cold, we’ll just have to wait it out.