Judge Waxes Comedic On Whether You Can Trademark Quilted Diamonds On Toilet Paper

from the toilet-paper! dept

Bryan points us to this bit of fun from a judge in opening his ruling in a case over the ability to trademark “quilted diamonds” on toilet paper. The appeals court ruling by Judge Terence Evans opens (as pointed out by Michael Barclay at the link above) in a rather amusing fashion, in clearly mocking the very fact that two consumer products giants, Georgia Pacific and Kimberly Clark are even bothering to fight over the ability to put “quilted diamonds” on toilet paper:

Toilet paper. This case is about toilet paper. Are there many other things most people use every day but think very little about? We doubt it. But then again, only a select few of us work in the rarefied air inhabited by top-rate intellectual property lawyers who specialize in presenting and defending claims of unfair competition and trademark infringement under the Lanham Act, 15 U.S.C. ?? 1051 et seq. And the lawyers on both sides of this dispute are truly firstrate. Together they cite some 119 cases and 20 federal statutes (albeit with a little overlap) in their initial briefs. We are told that during the ?expedited? discovery period leading up to the district court decision we are called upon to review, some 675,000 pages of documents were produced and more than a dozen witnesses were deposed. That?s quite a record considering, again, that this case is about toilet paper.

We?ll start by introducing the combatants. In the far corner, from an old cotton-producing state (Dixie: ?I wish I was in the land of cotton, old times there are not forgotten.?) and headquartered in the area (Atlanta) where Scarlett O?Hara roamed Tara in Margaret Mitchell?s epic Gone With the Wind, we have the Georgia-Pacific Company. Important to this case, and more than a bit ironic, is that the name of Georgia-Pacific?s flagship toilet paper is Quilted Northern. In the near corner, headquartered in the north, in Neenah, Wisconsin (just minutes away from Green Bay), and a long way from the land of cotton, we have the Kimberly-Clark Corporation. Ironically, its signature toilet paper brand is called Cottonelle.

The claim in this case is that a few of Kimberly-Clark?s brands of toilet paper are infringing on Georgia-Pacific?s trademark design. But again, this case is about toilet paper, and who really pays attention to the design on a roll of toilet paper? The parties, however, are quick to inform us that in a $4 billion dollar industry, designs are very important. Market share and significant profits are at stake. So with that, we forge on.

If you’d like to see where it goes from there, you can read the full decision (pdf), but I will say that, given those three opening paragraphs, it’s hard not to read the rest of the ruling without thinking that Judge Evans would prefer to be dealing with pretty much any other case rather than one about a dispute on quilted diamonds on toilet paper.

Update: Title changed, as the original was misleading. There was an awkward phrasing in the judges statement about the amount of documents in discovery which suggested that the judges themselves were asked to read all 675,000 pages, but he’s really just noting that so many pages were produced during discovery…

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Companies: georgia pacific, kimberly clark

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Comments on “Judge Waxes Comedic On Whether You Can Trademark Quilted Diamonds On Toilet Paper”

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77 Comments
The Mighty Buzzard (profile) says:

Re: Re:

I don’t do the TP buying at my house, so I couldn’t tell you what brand it is. I can, however, tell the difference between the kind that leaves little bits of paper on the area of use and the kind that doesn’t by the design.

That is purely a matter of function though. Like being able to tell the difference between an open end wrench that will easily slip off a nut and a box end that won’t slip as easily. Good call from the judge.

Anonymous Coward says:

It seems sad to me that the judge just can’t bite his tongue and do his job. The dispute isn’t any different from hundreds of other commercial disagreements, and just because it’s about TP instead of industrial machine parts doesn’t make it any more or less relevant.

The pattern on TP is important enough to the players involved to have taken it to court. The judge should keep the comedy routine for amateur nights at the Comedy Hole, and get back to taking his job seriously.

John Doe says:

Re: Re:

Hmm, I quite like his sense of humor here. I am no fan of judges, but this guy is funny. Besides, it sounds like he is doing his job, just using a little humor to make toilet paper more interesting.

On a serious note, how do you trademark a common quilting pattern just because it is on TP?

DCL says:

Re: Re: Re:2 Re:

Wouldn’t a ‘cleaner’ way be to simply print your brand logo or company name?

Personally I wouldn’t recognize the difference between:

////////
////////
////////
////////
////////
////////
vs
/|/|/|/|/|/
/||/|/|/|/
/|/|/|/|/|/
/||/|/|/|/
/|/|/|/|/|/
/||/|/|/|/

Butt print “Cottonelle” or “Quilted Northern” and it is pretty obvious.

Maybe there should be flash cards with each pack so you can study the pattern/name correlation while you are sitting passing the time away.

hehehe… I typed “butt”.

New Mexico Mark says:

Re: Re:

If more corporate and legal folks actually had some humor and sense of perspective, perhaps ridiculous cases like this could be resolved by a direct contest between CEO’s instead of wasting millions of dollars (tax and consumer) with truly asinine conflicts. Let them do SOMETHING to earn those ridiculous salaries and golden parachutes.

http://www.poe-news.com/stories.php?poeurlid=18961

out_of_the_blue says:

No detail of 14 trillion dollar economies are left to chance.

That’s the important implication to “Market share and significant profits are at stake.”

Corporations grow to exceed a critical boundary at some point so that the “marginal cost” of a lawsuit is nearly zero, and since a great deal is at stake, they’ll sue on any pretext. The out-of-bounds growth of corporatized stupidity argues for limiting the size of corporations. America was not founded for benefit of corporations.

Beta (profile) says:

an oasis in the desert

“…Given those three opening paragraphs, it’s hard not to read the rest of the ruling without thinking that Judge Evans would prefer to be dealing with pretty much any other case rather than one about a dispute on quilted diamonds on toilet paper.”

I beg to differ; it looks to me as if the judge is enjoying himself quite a lot, taking this rare opportunity to exercise some wit in his ruling.

btrussell (profile) says:

Re: an oasis in the desert

“And such news of an amicable settlement having made this Court happier than a tick on a fat dog because it is otherwise busier than a one legged cat in a sand box and, quite frankly, would have rather jumped naked off of a twelve foot step ladder into a five gallon bucket of porcupines than have presided over a two week trial of the herein dispute, a trial which, no doubt, would have made the jury more confused than a hungry baby in a topless bar and made the parties and their attorneys madder than mosquitoes in a mannequin factory;”
.
.
.
Dated this 19 day of July, 2011.

MARTIN J. SHEEHAN Kenton Circuit Judge

http://www.wlwt.com/r/28739998/detail.html

Anonymous Coward says:

Hum…675,000 pages does seem like an unreasonable amount. But let’s try to put that into perspective:

If we assume that books have an average of about 300 pages (not unreasonable for a relatively large story), the judge would have to read the equivalent of 2250 books!!

But that’s nothing. If the judge reads one page per minute, and if he didn’t have to stop to eat, drink or bathe, he’d be doing it for ~468 days non-stop!! That would take some endurance!

And all of this because of some toiled paper pattern? Has this world gone mad!?

Anonymous Coward says:

Re: Re: Re:4 Re:

As I said (and Mike has acknowledged in changing the article title), NOBODY asked the judge to read all 675,000 pages produced in discovery.

Asking the judge (or, actually, the judge’s clerk) to read 119 opinions and 20 statutes (or, actually, portions thereof) is in a whole different ballpark.

Anonymous Coward says:

Re: Re:

That would be very different and very difficult. You can only have trade dress rights in product design/configuration if such design/configuration is nonfunctional.

Since the tread patterns of tires are functional, and the company wouldn’t want to put itself in the position of claiming the patterns are not functional, those cases aren’t likely to happen.

Jeffrey Nonken (profile) says:

Re: Re: Re:

Ah, but then it wouldn’t be a fight over trademarks, would it? This, my friend, would be a patent fight.

http://www.patentstorm.us/patents/4777993/fulltext.html

Actually, I think it’s been done, but while I could find a couple indirect references my Google-foo wasn’t good enough to find records of actual tread-pattern litigation.

Rob says:

T.P.

Well, it’s clearly a SMEAR campaign, trying to make the other side….Well, at one point the …. will hit the fan. I say just let those guys have their diamond T.P. and the other side just use squares turned sideways.

One of these days someone will find a way to wipe our butts with microwaves or something, and T.P. will become obsolete. A few lawyers will be out of jobs; maybe they’ll just go out and T.P. each others’ houses.

Paul Alan Levy (profile) says:

Mixed feelings about the humor

I have decidedly mixed feelings about humor in judicial opinions. At one level, it certainly helps break up the day; there is so much dry text, often nonsense in the larger scheme of things, that we have to get through as lawyers (and judges).

But then I remember the request for Supreme Court review that I did about twenty-five years ago, arising out of an opinion by First Circuit Judge Bruce Selya, who is notorious for maximizing the number of obscure words in his opinions. He wrote a decision dismissing a lawsuit that has been brought on behalf of nearly a hundred workers in Puerto Rico who had lost their jobs when a women’s underwear factory “reorganized.” http://law.justia.com/cases/federal/appellate-courts/F2/835/11/296423/ Judge Selya just could not get over the fact that the factory made women’s underwear, and reading the opinion made me wonder whether he has put more effort into inserting double entendres than into making his legal decision. Meanwhile, ninety women were out of a job.

Not that I feel so badly about the fact that Georgia Pacific will have to accept a limited term on its monopoly of the diamond pattern that patent gives it, instead of the indefinite that a trademark would have given it.

Jeffrey Nonken (profile) says:

Re: Mixed feelings about the humor

Not sure there’s a real parallel, though. One is about people losing their livelihoods to corporate greed; the other is two companies having what amounts to a petty squabble.

Sounds like this Judge Selya needs to get out more. Somebody has to make women’s underwear, after all. I bet that somewhere, somehow, is a factory that makes men’s underwear, too.

Anonymous Coward says:

Maybe the loser could switch from diamonds to pearls. But then I still wouldn’t care. What I care about is two things:

1) That it’s not overpriced.

2) That it doesn’t fall into 1,000 pieces when you wipe.

Maybe these two turd scoopers could be a little cheaper, or at least invest more in quality, if they weren’t wasting so much money on legal battles for something maybe 1% of the population even notices, much less cares about.

Anonymous Coward says:

Re: Re: Re: Re:

Yes, the court says that while a design patent might be evidence of nonfunctionality, it does not absolutely preclude a finding of nonfunctionality, and the fact that aspects of the claimed pattern are disclosed in a utility patent shows that the pattern is in fact functional.

Basically, you can’t get trade dress protection for something claimed in a utility patent.

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