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Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp.

September 30, 2010

GEORGIA-PACIFIC CONSUMER PRODUCTS LP, PLAINTIFF,
v.
KIMBERLY-CLARK CORPORATION, KIMBERLY-CLARK GLOBAL SALES, INC., AND KIMBERLY-CLARK WORLDWIDE, INC., DEFENDANTS.



The opinion of the court was delivered by: Judge Virginia M. Kendall

MEMORANDUM OPINION AND ORDER

Plaintiff Georgia-Pacific Consumer Products, LP ("Georgia-Pacific") filed suit against Defendants Kimberly-Clark Corporation, Kimberly-Clark Global Sales, Inc., and Kimberly-Clark Worldwide, Inc. (collectively "Kimberly-Clark") alleging unfair competition and trademark infringement under the Lanham Act, 15 U.S.C. § 1051 et seq., and various state statutes. The suit alleges that Kimberly-Clark has introduced bath tissue products with designs that infringe Georgia-Pacific's protected rights in its "Quilted Diamond Design." Kimberly-Clark moves for summary judgment on the grounds that the Quilted Diamond Design is functional, and therefore cannot be protected as a registered trademark. For the reasons set forth below, Kimberly-Clark's Motion for Summary Judgment is granted.

STATEMENT OF UNDISPUTED FACTS*fn1

I. The Parties

Georgia-Pacific, a Delaware limited partnership headquartered in Atlanta, Georgia, manufactures a variety of home and commercial paper products that are sold throughout the United States. (Pl. 56.1 Resp. ¶ 1.) The Kimberly-Clark entities are Delaware corporations with operation facilities in Neenah, Wisconsin; they are direct competitors of Georgia-Pacific in the bath-tissue market. (Pl. 56.1 Resp. ¶ 2.)

II. The Products

Georgia-Pacific manufactures and sells a brand of bath tissue, called Quilted Northern, that is embossed with a "Quilted Diamond Design." (Pl. 56.1 Resp. ¶ 6.) Georgia-Pacific asserts that its rights in the Quilted Diamond Design are protected by four United States trademark registrations: Reg. No. 2,710,741; Reg. No. 1,778,352; Reg. No. 1,806,076; and Reg. No. 1,979,345. (Pl. 56.1 Resp. ¶ 9.) Georgia-Pacific also owns numerous federal trademark registrations using the "Quilted" and "Quilted Northern" marks. (Pl. 56.1 Resp. ¶ 9.) The packaging of the Quilted Northern product states that the product is made under both utility and design patents and protected by trademark registrations. (Pl. 56.1 Resp. ¶ 48.)

Kimberly-Clark sells two brands of bath tissue that allegedly infringe Georgia-Pacific's rights in the Quilted Diamond Design-"Cottonelle Ultra" and "Scott Kimberly-Clark Professional." (Pl. 56.1 Resp. ¶¶ 7-8.) In addition, recently Kimberly-Clark re-launched its Scott(r) Extra Soft tissue, which Georgia-Pacific claims is very similar to its Quilted Diamond Design.

III. The Trademarks

In support of its claims, Georgia-Pacific asserts the following four United States trademark registrations, as well as numerous trademark registrations incorporating the word marks "Quilted" and "Quilted Northern." (Pl. 56.1 Resp. ¶ 9; Def. 56.1 Resp. ¶ 1.) These trademarks are set forth below.

Reg. No. 2,710,741

Reg. No. 1,778,352

Reg. No. 1,806,076

Reg. No. 1,979,345

Although Registration No. 2,710,741 depicts the Quilted Diamond Design with neither flowers nor hearts in any of the diamond-shaped cells, the only manner in which the Quilted Diamond Design has been used by itself, without any flowers or hearts, is on the packaging for Quilted Northern tissue. (Def. 56.1 Resp. ¶ 20.)

IV. The Utility Patents

In addition to its federal trademark registrations, Georgia-Pacific owns five United States utility patents that are relevant to the dispute over the functionality of the Quilted Diamond Design. They are numbered 5,436,057 (the "'057 Patent"); 5,573,830 (the "'830 Patent"); 5,597,639 (the "'639 Patent"); 5,620,776 (the "'776 Patent"); and 5,874,156 (the "'156 Patent"). (Pl. 56.1 Resp. ¶ 10.)

The lattice design that is the subject of trademark Reg. 2,710,741 is depicted in each of the utility patents enumerated above. (Pl. 56.1 Resp. ¶ 13.) Specifically, it is shown in Figure 1 of the '776 and '830 Patents and in Figure 5 of the '639, '057, and '156 Patents. (Pl. 56.1 Resp. ¶ 14.) Similarly, the design of trademark Reg. 1,778,352 is shown in Figure 1 of the '776 and '830 Patents and in Figure 5 of the '639, '057, and '156 Patents. (Pl. 56.1 Resp. ¶¶ 15, 52, 59.)

A. '639 and '156 Patents

Both the '639 and '156 Patents are titled "HIGH SOFTNESS EMBOSSED TISSUE." (Pl. 56.1 Resp. ¶¶ 21, 22.) The '639 Patent was granted on January 28, 1997, and the '057 Patent was granted on February 23, 1999. (Pl. 56.1 Resp. ¶¶ 21, 22.) Both the '639 and '156 Patents include a diamond lattice design with a floral pattern in some of the diamond cells. (Pl. 56.1 Resp. ¶ 27.)

The abstracts of the '639 and the '156 Patents state as follows: "The perceived softness of embossed tissue can be increased greatly while avoiding nesting when a particular pattern is embossed into the tissue. This pattern combines relatively shallow stitchlike bosses with deeper more sharply defined signature bosses. The stitchlike bosses can be rounded and arranged in wavy flowing intersecting lines. The signature bosses can be arranged in regions framed by the intersecting wavy flowing lines." (Pl. 56.1 Resp. ¶ 24.) Further, the '639 and '156 Patents state that "[i]n a most preferred embodiment, the cells are diamond shaped." (Pl. 56.1 Resp. ¶ 28.)

Moreover, the "Background of Invention" for the '639 and '156 Patents states: "[a] primary advantage of the present invention is to provide an embossed tissue which avoids buildup and ridging problems while heightening the consumer's perception of softness." (Pl. 56.1 Resp. ¶ 29.) The Background further mentions that the combination of the stitchlike bosses and signature bosses provides "very good roll structure [that does] not exhibit the ridging effect found with prior art embossed tissue patterns." (Pl. 56.1 Resp. ¶ 31.) Finally, the Background notes that "[s]ignature and finishing bosses in regions framed by the intersecting flowing lines serve to greatly enhance the bulk of the tissue while also enhancing the distortion of the surface thereof." (Pl. 56.1 Resp. ¶ 33.)

B. '057 Patent

The '057 Patent is titled "HIGH SOFTNESS EMBOSSED TISSUE WITH NESTING PREVENTION EMBOSSED PATTERN," and was granted on July 25, 1995. (Pl. 56.1 Resp. ¶ 23.) The '057 Patent, as depicted in Figure 5, includes a diamond lattice design with a floral pattern in some of the diamond cells, and as shown below, is the same design as the '639 and '156 Patents. (Pl. 56.1 Resp. ¶ 27.) The abstract of the '057 Patent states: "This invention relates to the discovery that the perceived softness of embossed tissue can be increased greatly while avoiding prior art nesting problems if a particular pattern is embossed into the tissue. This pattern combines relatively shallow stitchlike debossments with deeper more sharply defined signature debossments. The stitchlike debossments are rounded and arranged in wavy flowing intersecting lines. The signature debossments are arranged in regions framed by the intersecting wavy flowing lines." (Pl. 56.1 Resp. ¶ 25.) Moreover, the '057 Patent states that "[i]n a most preferred embodiment, the cells are diamond shaped." (Pl. 56.1 Resp. ¶ 28.) The "Background of Invention" for Patent '057 states: "[t]he present invention provides an embossed tissue which avoids buildup and ridging problems while heightening the consumer's perception of softness." (Pl. 56.1 Resp. ¶ 30.) The Background further states that "[s]ignature debossments in regions framed by the intersecting wavy flowing lines serve to greatly enhance the bulk of the tissue while also enhancing the distortion of the surface." (Pl. 56.1 Resp. ¶ 34.)

'639, '057, and '156 Patents Trademark Reg. No. 1,806,076

C. '776 and '830 Patents

The '776 Patent is titled "EMBOSSED TISSUE PRODUCT WITH A PLURALITY OF EMBOSS ELEMENTS," and the '830 Patent is titled "HIGH BULK EMBOSSED TISSUE WITH NESTING PREVENTION." (Pl. 56.1 Resp. ¶¶ 49, 50.) The abstracts of the '776 and '830 Patents state: "An embossed tissue having improved bulk and puffiness while being non-nesting by having a lattice pattern and at least two signature bosses. More particularly, one of the signature bosses is defined by embossments having a lower portion which is continuous and an upper portion which is defined by crenels and merlons." (Pl. 56.1 Resp. ¶ 51.) Georgia-Pacific's Trademark Registration No. 1,979,345, is depicted in Figure 1 and 14 of the '776 and '830 Patents (Pl. 56.1 Resp. ¶ 59.)

'776 and '830 Patents Trademark Reg. No. 1,979,345

The Patents disclose that uniform roll structure is improved when the two signature emboss patterns are non-nesting. (Pl. 56.1 Resp. ΒΆ 67.) The "Summary of Invention" for the '776 and '830 Patents states: "[t]he present invention provides an embossed paper product which is significantly higher in bulk than prior art products. When formed into a roll, the embossed paper products of the ...


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