Case: Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corporation, et al., 647 F.3d 723 (2011)

Facts: Georgia-Pacific has been selling its Quilted Northern brand toilet paper with “Quilted Diamond Design” since the early 1990s and has several trademarks, copyrights, and utility and design patents for the Quilted Diamond Design.In 2008, Kimberly-Clark redesigned two of its brands, Cottonelle Ultra and Scott Kimberly-Clark Professional, using a quilted pattern that Georgia-Pacific believes to be very similar to its Quilted Diamond Design.

Georgia-Pacific claimed unfair competition and trademark infringement under the Lanham Act, 15 U.S.C. § 1051 et seq. and filed suit in the U.S. District Court for the Northern District of Illinois. Kimberly-Clark filed a Motion for Summary Judgment claiming the design was functional and could not be protected. Virginia M. Kendall, the presiding judge, agreed and granted summary judgment in favor of Kimberly-Clark.
Issue: Can Georgia-Pacific hold utility patents, which detail functionality of design, and still have the protection of a registered trademark for its “Quilted Diamond Design”?
Rule: Lanham Act, 15 U.S.C. § 1052 (e)(5) - No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it consists of a mark which comprises any matter that, as a whole, is functional.
Analysis:
The court looked at five factors to determine functionality:
1. Existence of a utility patent that describes functionality of design. Georgia-Pacific had 5 current utility patents that described the functionality of the Quilted Diamond Design.
2. Utilitarian Properties of unpatented design elements Not Applicable to this case.
3. Advertising utilitarian advantages of a design element. Language of advertising directly linked the quilted feature to utilitarian benefits, further affirming the Quilted Diamond Design is functional.
4. Lack of or difficulty in creating alternative designs for the items purpose
The design does not have to be the only design to be functional, it can be functional if it represents one of many solutions to a problem and according to Georgia-Pacific patents the Quilted Diamond Design was the “preferred embodiment” of the design.
5. Effect of design feature on quality or cost
Georgia-Pacific's patents and advertising talked about how the Quilted Diamond Design added quality to the product.
For these reasons the court found the “Quilted Diamond Design” to be functional and ineligible to be a registered trademark under the Lanham Act.

Conclusion: The court affirmed the decision of the lower court.

Holding: Under the Lanham Act, where the functionality of a design is established with current utility patents, then the design is unable to be registered as a trademark and cannot be protected.