A Trademark Goes Down the Tubes -- Literally

Last Updated Jul 29, 2011 10:19 AM EDT

Trademarks are serious stuff in law and business. But things can get too serious and precious sometimes, which may help explain a ruling yesterday by the U.S. Court of Appeals for the 7th Circuit in a trademark dispute between Georgia-Pacific Consumer Products and Kimberly-Clark Corporation (KMB).

The decision by Judge Terence Evans dismissed Georgia-Pacific's attempt to sue over a pattern on toilet paper -- and did so in stinging language that could make this opinion a classic in the annals of tongue-in-cheek legal opinions. (Yes, they do exist.) Maybe trademark disputes have finally gone so over the edge that companies often might be losing more than they could possibly gain.

The suit that Georgia-Pacific filed in 2009 alleged that Kimberly-Clark had infringed a trademark on its Quilted Northern brand toilet paper: specifically, the diamond pattern on the paper. A district judge found in favor of Kimberly-Clark's motion for summary judgment. Georgia-Pacific appealed. The opening of this latest decision made clear that the companies were making much ado out of something second only to crap:

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 first rate. 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.
It only gets better. Evans decided to "start by introducing the combatants" and made reference to the song "Dixie" and Gone with the Wind, because of Georgia-Pacific's Atlanta headquarters and the irony of its toilet paper brand being called Northern.
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.
And so, the court did, flushing Georgia-Pacific's case. The company not only had a trademark on the quilted feature, but also a series of patents. The patents showed that the quilts were functional and, as a result, not eligible for trademark protection.

Now, perhaps, Georgia-Pacific can try pursing a far-more-expensive patent action. But after this experience, maybe its management will have second thoughts. After all, it's never a good use of resources when the suers find themselves sent to the sewers.

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    Erik Sherman is a widely published writer and editor who also does select ghosting and corporate work. The views expressed in this column belong to Sherman and do not represent the views of CBS Interactive. Follow him on Twitter at @ErikSherman or on Facebook.