Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp.
647 F.3d 723
| 7th Cir. | 2011Background
- Georgia-Pacific alleges Kimberly-Clark’s quilted designs infringe its Quilted Diamond Design (toilet paper) under Lanham Act.
- Georgia-Pacific owns trademarks, copyrights, and multiple utility patents covering the Quilted Diamond Design.
- Kimberly-Clark challenges the design as functional, arguing it cannot be trademarked.
- District court granted summary judgment that the Quilted Diamond Design is functional.
- This court reviews the district court de novo and analyzes functionality under TrafFix and related precedent.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is the Quilted Diamond Design functional? | GP argues design is nonfunctional or incidental. | KC argues design is functional per patents and utilitarian benefits. | Yes, functional; trademark not protectable. |
| Do utility patents and specifications establish central functionality? | GP asserts patents show essential feature. | KC contends patents reflect functionality disclosed. | Yes, patents support functionality evidence. |
| Can design patents preclude trademark functionality analysis? | GP contends patents don’t preclude trademark. | KC argues patents reinforce functionality. | Design patents do not preclude functionality findings. |
| Do advertising statements about the design prove functionality? | GP ads link quilting to functional benefits. | KC argues ads are puffery or not material. | Ads strongly support functionality. |
| Does laches bar KC from asserting functionality? | GP claims KC delayed assertion of its defense. | KC argues no undue delay or prejudice. | No laches; defense timely raised. |
Key Cases Cited
- TrafFix Devices v. Marketing Displays, Inc., 532 U.S. 23 (U.S. 2001) (design functional if essential to use or affects cost/quality; assesses factors)
- Franek v. Jay Franco & Sons, Inc., 615 F.3d 857 (7th Cir. 2010) (utility patents show functionality; central advance vs. feature)
- Eco Manufacturing v. Honeywell Int'l, Inc., 357 F.3d 649 (7th Cir. 2003) (design functionality persists despite design patents)
- Specialized Seating, Inc. v. Greenwich Indus., L.P., 616 F.3d 722 (7th Cir. 2010) (designs can be functional if solving a problem; not only sole design option)
- Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (7th Cir. 2010) (Court allows summary judgment on functionality; patents as guide )