If You Don't Get The Matching Brand Paper Towel Out Of A Dispenser In A Restroom… Is That Trademark Infringement?
from the wash-your-hands,-everybody dept
The more you travel, the more you realize just how many different options there are in restrooms around the globe to enable people to dry their hands. However, if you see a particular brand of paper towel dispenser, do you expect that a related brand of paper towels will come out of them? And should it be trademark infringement if they do not? Apparently, the company Georgia Pacific makes the EnMotion brand of paper towel dispensers for restrooms — and includes a contractual provision that those used will only use EnMotion brand paper towels. Another company came up with competing paper towels that worked in the EnMotion dispenser. GP sued the company making the replacement paper towels, claiming contributory trademark infringement — saying it’s akin to a Coca-Cola soda machine, where people expect Coca-Cola to come out of it. That may be true… but does anyone actually expect a specific brand of paper towel to come out of a random dispenser? GP, of course, found “experts” to conduct studies that said yes, but that seems difficult to believe. Perhaps I’m missing something, but does anyone out there actually expect a specific brand of paper towels out of a particular dispenser?
GP is claiming that the other company is guilty of contributory trademark infringement, which would mean that anyone using these replacement paper towels could be guilty of direct trademark infringement, which seems like a blatantly ridiculous reading of trademark law. The lower court agreed that this was ridiculous and found no evidence of any kind of confusion among the distributors involved in selling and stocking the EnMotion dispensers. However, the appeals court points out that it also needs to be considered whether or not the real end-users were confused — and notes that there’s significant evidence that people might be confused. I still don’t buy it. I can’t recall ever even caring what brand paper towels comes out of a dispenser. If asked I might just say the same brand as the dispenser company, but that’s just because it’s the easiest answer, not because it needs to be.
For now, the case has been sent back to the lower court to determine whether or not end-users are really confused. Perhaps the court can hold part of the session in the court’s restrooms to determine whether or not there’s a real “likelihood of confusion.”
Filed Under: enmotion, paper towels, trademark
Companies: georgia pacific
Comments on “If You Don't Get The Matching Brand Paper Towel Out Of A Dispenser In A Restroom… Is That Trademark Infringement?”
Printers
Printer manufacturers may be watching this with interest – given how many people use “generic” ink or toner in their HP, Epson, Canon (etc.) printer.
Re: Printers
The only way that this is the same issue is if I print something for you on my Epson and you don’t realise I’m using a generic brand of ink, so I have ‘confused’ you, the end-user.
Contrarily, I am at liberty to use any generic brand I wish for my own use, since no-one (except maybe my printer) is likely to be ‘confused’.
Re: Printers
Personally I think that the printer companies should sue GP. They do make replacement printer paper.
WTF ? You’re kidding me right ?
So basically they’re arguing it’s copyright infringement if some *thing* else gives me the wrong paper towel .. ? If there was a big sign on each enmotion dispenser that said something like “Every time a wrong brand piece of paper leaves this dispenser, copyright lawyers kill a kitten” I might consider it a worry if the wrong paper came out.. but if lives were not depending on it, I, would not give a rat’s – like I figure most other people.
Trademark Bolsheviks!
Finally this poster becomes current again: Is Your Washroom Breeding Bolsheviks?
Who is the customer?
Does it even *matter* if the person taking the paper towel from the dispenser assumes they’re getting paper towels from the supplier marked on the dispenser? Those people aren’t the ones buying the paper towels – whoever manages the stocking of that bathroom is the real customer here.
Re: Who is the customer?
You hit the nail on the head. If a Coca-cola vending machine accepts my money and gives me Pepsi cola, then in principle I’ve been defrauded (never mind the fact that I can barely tell them apart). But if it gives me Pepsi free then I have no grounds for complaint even if I’m disappointed. If I really cared about brands of paper towels, and knew one from another, and had a choice of dispenser within one building (none of which is true) I’d still have a hard time arguing that I’d been wronged when I got stuck with an inferior towel.
Re: Re: Who is the customer?
But unlike the Coke machine selling Pepsi I’m not paying for the paper towel.
Re: Who is the customer?
I can sort of see it…
If some-one who does buy paper towels uses this machine and gets low quality, then they may be dissuaded from buying the presumed brand, seeing it as low quality.
That said most people just wouldn’t give a crap.
A Coke machine could contain Pepsi as long as the button read Pepsi, and the customer was informed of their purcase (I would guess this doesn’t happen due to these machines actually being owned most of the time by Coke), so maybe the solution is to just put a small sticker on the paper towel dispenser saying who made the towels themselves.
...
I just don’t even know where to begin. This whole thing is just stupid beyond words.
Re: ...Paper towels
I concur. I doubt there is a single person in the US who would notice or care what brand of paper towel was stocked in a restroom.
Re: Re: ...Paper towels
I care more about the TP I wipe with than the PT I dry with.
End users?
Does anyone using the dispenser actually care about the brand of paper towels? From the end user’s perspective they are basically commodities, provided at the same (free) price and performing the same hand-drying function. And I can assure you I wouldn’t choose a different restroom based on the brand of paper towels provided.
Has GP (or any rival manufacturer) ever run a consumer campaign to raise brand awareness of their paper towels? GP is implying that end users care deeply about this, so presumably such campaigns could be very profitable.
So anybody making spare parts for anything is violating trademark laws?
Things keep looking better and better every year LoL
How about...
How about sticking some duct tape on the dispensers so that the brand name is no longer visible. No more confusion to the end user with the added advantage that the manufacturer does not get any brand recognition.
Re: How about...
Ah duct tape!
It can fix anything including legal troubles 🙂
Re: How about...
And even better than duct tape: a tasteful sticker that says, “Towels by Von Drehle Corporation” (the defendant).
Zero chance of confusion or trading on another’s reputation.
Wrong lawsuit?
Isn’t this a contractual issue, not a trademark one? I agree that it does seem like a pretty absurd reading of trademark law, but it also seems like a clear contract violation, so unless the contract is illegal, why aren’t they pursuing that?
Re: Wrong lawsuit?
That would involve suing the people who are using the paper towels in the dispensers, and since they’re typically not the ones who purchased the dispensers themselves.
A builder subcontracts out the bathrooms, the tenants or property owner order the materials and another company has the staff that fills them. Who do you sue?
The building subcontractor’s not filling the dispensers. The property management isn’t bound by the contractor’s agreement with GP. And those doing the filling didn’t buy either.
No, far easier to sue your competitor than go after the contract.
I say just burn GP’s HQ to the ground. It’s easier.
Re: Wrong lawsuit?
It IS definitely a contract violation, in fact, the dispensers may be given away/sold at a loss, since they know there is guaranteed income from selling the refills. However, it is probably very difficult (and expensive) to ENFORCE that contract, since you’d have to send out people to thousands of washrooms to collect evidence and file thousands of separate lawsuits. It’s much more efficient to design the dispensers so they only work with your paper and then go after anyone who makes paper specifically to work in your dispensers. The trademark case is pretty weak though; it would have been better to patent the dispenser/paper design and then get the copycats on patent infringement.
Re: Re: Wrong lawsuit? Or ANTITRUST violation.
“Georgia Pacific makes the EnMotion brand of paper towel dispensers for restrooms — and includes a contractual provision that those used will only use EnMotion brand paper towels. Another company came up with competing paper towels that worked in the EnMotion dispenser. GP sued the company making the replacement paper towels, claiming contributory trademark infringement…”
Lets look at part of antitrust law.
Exclusive dealing refers to when a retailer or wholesaler is ‘tied’ to purchase from a supplier on the understanding that no other distributor will be appointed or receive supplies in a given area. When the sales outlets are owned by the supplier, exclusive dealing is because of vertical integration, where the outlets are independent exclusive dealing is illegal (in the US) due to the Restrictive Trade Practices Act.
Looks like that can easily be a violation of antitrust.
Re: Wrong lawsuit?
Either way, this looks like a “Steve Dallas” lawsuit, where they’re going after the wrong party because it’s easier, and because that party has deeper pockets.
Another reason to use laminar airflow to dry your hands or the hands of your patrons.
Paper coming out of a paper dispenser is for me like water coming out from faucets, why does it matter?
Re: Re:
Wait…are they using the right brand of air? =)
Re: Re:
Last time I tried to blow my nose with one of those air thingies, it looked like the Ghost Busters just exploded an ecto…
It should sue the company using the dispensers...
Its contract is with them after all, not with the manufacturers of alternative napkins that fit their dispensers. Doesn’t matter whether the consumer is confused or not, if the company got its free dispensers with certain conditions, they are bound to those conditions.
As a consumer, my only concern is if the dispenser displays the brand name. Although admittedly, the brand of napkins might be irrelevant to most people, the same rule should apply to all products. If the brand of napkins is not important, what about the brand of hand soap? What about the brand on a condom dispensing machine? If I saw a “Durex” dispenser, I’d be annoyed to find an unbranded “made in Zakizikistan” condom instead.
Devil's Advocate
While I don’t care what brand of paper towel comes from a dispenser, I have to wonder how that changes the law? I’ve seen it mentioned many times on Techdirt how trademark is to protect the consumer. IANAL and I’ve never read the law, but I doubt it says the consumer has to care. A lot of people who buy counterfeit merchandise probably know that it’s counterfeit and don’t care. Should the companies whose merchandise is counterfeited lose trademark protection cases against the counterfeiters because the customer didn’t care?
Re: Devil's Advocate
The problem is, the people using the paper towels to dry their hands are not the consumers. The consumer is the one spending money to buy the paper towels. If that person is knowingly buying a different type of paper towel and there is no possibility that they are confusing it with the paper towels manufactured by GP then there is no trademark violation.
I thought this was settled
See http://www.justice.gov/atr/public/hearings/ip/chapter_5.htm#ii
Regarding (1): A paper dispenser and paper that goes into it are separate products.
Regarding (2): GP is trying to require that someone who buys a GP paper dispenser must buy GP paper.
Regarding (3) and (4): Don’t know. But, I am assuming GP is a major player in both markets, nationally.
They are trying to get around the per se rule by pretending this is not a restraint on trade but protection of people who is use restrooms in their clients’ locations. It is certainly a creative way to try to create market power in the market for a generic good.
That seems to me to be a per se violation of Section 1 of the Sherman Act:
And the Clayton Act:
However, as noted on page 26 of the decision, von Drehle failed to pursue this.
I think it is a missed opportunity.
Woohoo - Free Money!!!
The next time I use a public restroom where the paper towels don’t match the dispenser I can sue and claim emotional damages because my expectations weren’t met! I can apparently sue the owner of the restroom, the distributor of the ‘bogus’ paper towels and the manufacturer of the dispenser for putting their brand on it and setting my expectations! I’m gonna be rich!*
*Patent pending for this particular lawsuit idea – if you try and use this same idea, I will sue you, too!
Mimi and Eunice.
http://ninapaley.com/mimiandeunice/archives/rivalrous-vs-non-rivalrous/492
There must be something wrong when people start fighting to see who can provide paper to a paper dispenser.
Last gasp of a dying business. I don’t know about where you live but paper towels have almost been entirely replaced with air machines where I am. It has become a joy to even find paper towels.
But in answer to your question. I don’t expect to get any particular brand in my paper towel dispenser.
Re: Re:
How would you even know what brand it is anyway? I guess some are manufactured with an imprint saying what they are, but in my recollection they’re either brown or grey or white, on a giant roll or folded singly in a stack. I only care that they’re available.
And as someone said above, it’s not the end users that are really part of this, it’s whoever is buying the supply that would feel the effect of any trademark issues.
Not at all. The brands I’ve seen on paper towel dispensers don’t match any of the brands of paper towel I see in supermarket. My assumption was that paper towel rolls just fit any of the standard size dispensers, and the companes that made them were largely independent from each other. But the paper towel/toilet paper I find in public restrooms is usually some cheap and crappy no-name brand anyway, even if the dispensers themselves are good.
It’s definitely not a trademark violation though. If the company had a contract with the venue to provide the paper to go with the dispenser, then it could possibly break the contract. But if the dispenser was sold separately with no such contract, and the company happens to offer paper that the venue doesn’t use, then tough luck. That’s called competition.
Cola machines aren't a good comparison everywhere. . .
I know this isn’t relevant, because I’m referring to laws outside of the states, but here, if the cola machine options are clearly marked, or if the machine has a glass front, (such that you can see what you’re buying), then it is not illegal to sell pepsi from a coke-cola machine or vice versa, no matter how badly those companies want otherwise.
It usually doesn’t happen these days because pepsi offers huge annual kickbacks if only pepsi products are sold on the property, though, and in a lot of places both companies now directly own and stock their machines as opposed to leasing or renting them to middlemen.
paper
I am more concerned that there is paper available over what brand it is.
I think we have been have come to expect that there will be only one choice and it will be free (in this department). If there is a cost and choice, with tangible differences in quality, I bet it matters which brand comes out of the dispenser.
Can I falsely advertise as long as there is no cost associated?
It can't matter...
Whether the end-user thinks it’s a GP towel or not because the end user DOESN’T HAVE A CHOICE OF TOWELS. So while the end user MIGHT be confused, there’s nothing they could do about it anyway! You use whatever towels are in the towel dispenser of the bathroom you are in. It’s not like you’re going to choose bathrooms based on paper towels.
Damage the brand?
While this doesn’t feel like a trademark issue, I can see how the use of an inferior brand in the dispenser could be seen to damage the brand. For example, if using EnMotion dispensers in a restroom with inferior paper towels bunching up, tearing, and not working correctly led to decisions to avoid EnMotion because the system did not work as expected, that would be material damage.
But, is that what they are arguing? It’s not clear to me…
Rather than trademark infringement, this would be more akin to dilution by tarnishment, where a mark is used in an unauthorized manner with a product or service that is of lower quality than the original. When the use is likely to cause a consumer to form a negative opinion of the trademark owner’s product, a cause of action exists.
Here, someone uses the non-EnMotion paper towel that comes out of the EnMotion dispenser, thinks it sucks, and forms a negative opinion of the EnMotion mark and the mark holder (GP) as a result. GP can then put forth actions based on both the contract and the trademark misuse.
In the US you can buy your own “Coke” machine and put what ever the damm well please into it. If you rig it up for free drinks then you don’t have to change the labels on the buttons, can set it out in public, and put no-name cola in it if you like.
The caveat is that its free, if you start charging money, put coke on the button (not the giant plastic shell) and then give a no-name brand, you have defrauded your customer by calling it one thing and selling something else. Now you could get around this by using generic names on your buttons, “cola, Clear Cola, Diet Cola, etc” are all generic enough that its clear your selling a cola but it may not be coke (even if coke is in the plastic shell).
Re: Re:
I think the issue with the coke machine is that coke machines are LEASED. You don’t own the coke machine but you have a contract with a distributor to vend cokes in your building.
GP’s coke example isn’t a good one.
As long as I don’t have to touch that dial on the side to pre-feed any paper out of the box I’m happy. eww.
I always assumed the name was the name of the dispenser, not the name of the paper in it.
What's the definition, "a moron in a hurry???"
I would think that trademark would be one of a number of issues. I as a business owner always prefer to buy a brand/model of something I experience in another company over something I have never seen.
So if I was a developer of large commercial properties and I happen to see one of these machines constantly malfunctioning it’s not likely I would even consider the machine at all. While a restaurant patron may not care what the brand of paper is, or even what the brand of the dispenser is, I as a developer would care that the brand of the dispenser didn’t work so I wouldn’t select it.
I don’t know though if the generic manufacturer or the person filling the dispenser would be guilty of the trademark infringement, but I would think it would be one or the other. And since the manufacturer is being accused of contributing to the infringement I would think that even this case is claiming the person filling the machine is the one infringing, and the generic manufacturer is only contributing to the infringement by making a product the right dimensions…
little mikee, you can’t have it both ways here, either the moron in a hurry can be confused or he can’t, it doesn’t seem to matter if he cares or not.
Do people even expect that the manufacturer of a dispenser also makes its content?
If I see a brand on a dispenser, I think “oh, this dispenser was made by company X”, instead of “oh, this dispenser dispenses things made by company X”. If asked about the brand of the things dispensed, I would look in the nearby garbage for the wrapper they came in (which is removed before putting in the dispenser, at least for paper towels).
Re: Re:
My stapler is a certain brand, but it doesn’t much matter whose staples I put in it as long as they’re the right size for the mechanics to function.
But if there were consistent malfunctions of the stapler, I might try a different brand of staples after trying to troubleshoot the stapler.
If it malfunctions no matter whose staples I use, it’s a defective stapler. If it works with one brand but not another, I’d likely keep away from the non-working brand, maybe curse the stapler maker for making my life difficult. I mean, they’re fricken staples, c’mon.
But if it’s someone else’s stapler that I borrowed, I’d be hard pressed to determine the staple manufacturers from the just the staple itself – they’re fricken staples. I’d be more suspect of the stapler. As I would if a paper towel dispenser didn’t work properly. I’d suspect the dispenser over the towels. Paper towelling is pretty basic stuff, not a lot of variation and by this time difficult to screw up. It doesn’t come out, it’s a dispenser problem, not a towel problem. Or maybe the property manager ordered the wrong size supply for the dispenser, or hasn’t maintained the dispenser.
In conclusion – I would not think less of the towelling product if there is 1) an obvious issue with the dispensing method or device, and 2) the towelling is by all accounts the same stuff all over and the only thing on offer, so nothing to compare it to, like a competing dispenser.
inkjet
I work in the inkjet industry, and not only is it ok for other companies to make refill ink for our printers, if we do to much to prevent it we would be violating the law. That said no one can sell ink branded with our company logo. So what I would say is that if the competitor was selling towels that were branded as GP then they would have a case, but if the person paying for the towel knows they are buying a generic version of the product then GP doesn’t have a leg to stand on, and may find that their provision is illegal.
Gold-Plated Paper and Reach of Trademark.
Here is the correct citation of the case. Always go back and consult the original source, if possible.
http://pacer.ca4.uscourts.gov/opinion.pdf/091942.P.pdf
Relevant facts: the dispensers are leased by Georgia-Pacific to the distributors, and subleased to the restroom owners. They are of a no-touch design, in which an electronic sensor causes the paper to feed. Georgia-Pacific chose a distinctive paper width, to be incompatible with existing paper dispensers, and chose to vend the dispensers in conjunction with the kind of clothlike paper towel one buys in the grocery store and uses in the kitchen, rather than the brown paper customarily used in public restrooms. The grocery store product is naturally more expensive. The defendant, Von Drehle, responded by cutting the standard brown paper to the correct size, and selling it to Georgia-Pacific’s distribution chain to sell on to their customers.
There would appear to be a market opportunity for someone to build a no-touch dispenser for standard paper towel. The considered opinion of the market appears to be that clothlike paper towel is only needed when one is handling food. For restrooms, the brown paper is good enough. Come to that, one could build a complete sink module, operating on the no-touch system: water, automatically regulated to blood-temperature, soap dispenser, and hot-air dryer.
The appeals court held that the relevant public for trademark claims is the person who sees product Y, purporting to be product X, forms an opinion of the quality of product X which is actually based on the quality of product Y, and who might therefore chose not to buy product X. For example, if the manager of the Metropolis Airport, passing through the Gotham City Airport, sees one of these dispensers dispensing the wrong kind of towel, this might inform his own purchasing decisions.
This leaves an unresolved point, however. In many cases, the “visible quality” is not a quality of the product itself, but of the customer. A classic example would be the story of the young lady who, visiting Europe in the 1950’s, was told to get rid of her Ingrid Bergman-style trenchcoat, “because every prostitute in Paris has one.” The manufacturers of expensive designer handbags are not concerned about losing sales to the kind of people who buy cheap knock-offs, but they are concerned that their regular customers might not want to buy anything which might cause them to be mistaken for “people like that.”
I have used the EnMotion product and dispensers...
It is miserly and infuriating to use.
Worse, it will dispense a towel at you as you walk past it, just as if it was intentionally sticking it’s scratchy paper tongue out at you.
Grrrrrr….if I only carried a baseball bat with me to the bathroom…..
so am I a pirate, if I print something on my HP printer, without using the HP printer software, with non HP paper, using a non HP ink cartridge??? how many laws and contracts have I violated??? and who do I sue??????
soap dispensers
I just bought some Waxie foaming soap to go in my Gojo foaming soap dispenser. I knew they would fit, because I saw them used interchangeably at my fitness center a few years back.
Well, I was unpleasantly surprised to find that the soap just wouldn’t pop into the dispenser. Although the two different brands of soap appear to come out of identical bottles (not just the shape, but the numbers on the plastic are identical), they’re fitted with different collars that have bits of plastic sticking out so that they fit into the dispenser like a lock and key.
So I broke off the right bit of plastic, and voila, it fit right in. Whew–I was afraid I’d have to spend money on a new dispenser or something.
I was hoping that the Waxie cucumber melon foaming body wash & shampoo would have a different formulation than the Gojo cucumber melon foaming body wash & shampoo, but now I fear that they both buy it from the same manufacturer…
And yet…..we are subjected and conditioned to similiar idiocies in all other aspects of our lives with all this IP and patents. It’s gone crazy – the tail is wagging the dog indeed
IP law – protecting consumers from meaningful competition for hundreds of years.
Consumers Don't Care
“it also needs to be considered whether or not the real end-users were confused — and notes that there’s significant evidence that people might be confused.”
Well, there’s confusion, and there’s giving a shit.
the real issue
According to the article,Georgia Pacific sells their dispensers with a ” contractual provision that those used will only use EnMotion brand paper towels”. Using an off market product is breach of contract. It is not about the consumer, it is about a company trying to protect itself against the rise of cheap foreign knockoff products. Georgia Pacific is one of the oldest producers of paper products in the United States, and one of the few US paper companies that have not been driven out of business by China. It seems pretty simple to me, if you don’t want to use their products, don’t buy their dispensers.
No No No ..
I’ve been working in the industry for 15 years, I assume the brand of the dispenser is just that, the dispenser brand. Otherwise, I would expect Bobrick soap to come out of a Bobrick dispenser, which is just plain stupid. Oh, and since over 50% of the toilet paper dispensers in the USA are Bobrick, then I should expect Bobrick toilet paper too? Good for us Bobrick doesn’t make soap or paper products.
Paper
I like wiping with paper still in the dispenser and then rolling it back up 😉
Wrong lawsuit?
The contract is only for 2 years. afterward I bought paper towels from a competitor because GP charges much more!
Tork Towel dispense
Just bought two of these and now find out I need to buy their towels in order for it to work No disclosure and I am stuck with buyer their POS towels at a non competitive price. Maybe some corporate don’t GAS buyers will put up with this crap, but not this guy. Never again!!!!! they need to be sued for non disclosure