Continuing our ramp up toward the launch of our Strategies for Owning Your Product Designs webinar next week, I’ve been thinking a lot about the Morton-Norwich factors — the common analysis for determining whether a product design or feature can be owned as a trademark or whether it is functional and part of the public

Jeffrey Stone and Brett Klein, Patent Attorneys, Winthrop & Weinstine, P.A.

The design patent is perceived by many designers and patent attorneys as being a relatively weak and impotent patent protection mechanism as compared with the better-respected utility patent. It is typically thought that design patents are only useful in protecting against exact

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.


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Furminator deShedding Tool

If FURminator Inc. were looking for a pitchman to promote and increase sales of the “famous” FURminator® pet grooming tool, and recognizing the recent, sudden and unforfunate passing of famous bearded TV pitchman Billy Mays (who could sell household products better than just about anyone, and still appears to be doing so after his passing), I’m thinking that the fictional cyborg assassin character played by “Ahnold” in “The Terminator” film would be the next best pitchman for the futuristic, stylish, and eye-catching pet grooming product shown above.

While either Billy Mays or Ahnold probably could have increased, or still could increase, sales of the product, it is more likely that neither could have saved the company from losing its bid to register trademark protection for the claimed trade dress, covering the three dimensional shape and appearance of the product. Since the applications were refused registration by the U.S. Trademark Office on functionality grounds here and here, and they terminated (were abandoned) without response, I suspect that early collaborations between legal and marketing types (and probably engineering types too) is all that might have helped avoid the terminal fate of these wishful non-traditional trademark applications.


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