As you may recall, last September we wrote about Coca-Cola’s Significant Interest in Zero Marks, discussing Coca-Cola’s defense of a trademark infringement suit brought by an individual named Mirza Baig, who claimed rights in “Naturally Zero” for Canadian natural spring water, and Coca-Cola’s contrasting attempts to own and federally-register various marks containing the term
As the court ruled, and repeatedly reminded: "Toilet paper. This case is about toilet paper."
Just last week the United States Court of Appeals for the Seventh Circuit enjoyed applying only a modicum of potty humor while deciding Georgia Pacific Consumer Products LP v. Kimberly-Clark Corporation, a case involving alleged non-traditional trademark rights in Georgia-Pacific’s Quilted Diamond Design embossed on the surface of toilet paper (shown above):
- "Georgia-Pacific unrolled this suit against Kimberly-Clark, alleging unfair competition and trademark infringement under the Lanham Act, for Kimberly-Clark’s introduction of its redesigned toilet paper."
- "We review the district judge’s grant of summary judgment de novo, viewing all facts in favor of the nonmoving party. . . . Therefore, despite the fact that the judge dutifully plied her opinion, we now wipe the slate clean and address Georgia-Pacific’s claims."
Actually, I think the court could have enjoyed itself even more with this case, since most agree double ply humor is far superior than single ply, especially when it’s on a roll.
Returning to the substance in hand, the Seventh Circuit Court of Appeals agreed with the district court that Georgia-Pacific’s Quilted Diamond Design, found on the surface of Quilted Northern brand toilet paper — and made recognizable from the television commercials with cartoon quilters — "is functional and therefore cannot be protected as a registered trademark."
It is unfortunate for Georgia-Pacific that it was unable to capture both patent protection for a limited term and trademark protection for eternity. They are not necessarily mutually exclusive intellectual property rights, but as this decision painfully demonstrates, if planning, coordination, and great care is not exercised, any hope of eternal trademark protection will be wiped away.
As you may recall, I’ve emphasized the importance of legal and marketing types working together in graceful collaboration to stand a reasonable chance of avoiding the many pitfalls in creating valid and protectable traditional and non-traditional trademark rights (Furminator, Smash Burger, and Bawls Guarana).
But, this decision, rejecting trademark protection for the above-depicted federally-registered design trademarks, highlights the importance of not only having talented legal and marketing types working together for common intellectual property goals, but also, the equally strong need for very close collaboration between patent counsel and trademark counsel.
Actually, not just the Seventh Circuit Court of Appeals (governing appeals from the federal district courts in Illinois, Indiana, and Wisconsin), but the Seventh Circuit is the most recent to reaffirm that our current legal system does, in fact, provide protection against real “trademark bullies” — and more generally — those who abuse…