A manufacturer of paper towels and touchless paper towel dispensers under the brand name "enMotion" could not go forward with claims that a competitor engaged in contributory trademark infringement by marketing and selling to distributors a less-expensive paper towel product that was specifically manufactured to work in eMotion dispensers, the U.S. Court of Appeals in St. Louis has decided. There was no dispute that the competitor knew that its customers --businesses and not-for-profit entities, such as churches and schools --were putting the competitor's towels in the complaining manufacturer's dispensers. This conduct was not, however, likely to cause confusion among purchasers or consumers.

There was no evidence of actual confusion, the court said. Neither party's towels bore any trademarks; once the competitor's towels were removed from their packaging and placed in an enMotion dispenser, the competitor's marks were not visible. Customers were fully aware of the brand of towel they placed into their dispensers, so there was no confusion as to source, in the court's view.

Two consumer surveys did not support a finding that "bathroom consumers" --members of the public who used the purchasers' facilities --would expect the brand of the towel to be the same as the brand of the dispenser. One survey had limited probative value because of methodological flaws. The other survey showed that only a small percentage of consumers thought the brand on the dispenser was always the same as the towels.

Testimony by industry insiders indicated that it was a common and unobjectionable practice to put towels of one brand into a dispenser of another brand, the court noted. The fact that the enMotion dispensers were leased to customers under an agreement that required the use of the manufacturer's towels had no bearing on the actual confusion of bathroom consumers; there was no evidence that bathroom consumers knew whether the dispensers they used were leased or unleased.

In an earlier decision involving similar claims by the same manufacturer against a different competitor, the U.S. Court of Appeals in Richmond had determined that genuine issues of material fact existed regarding the likelihood of post-sale confusion, precluding summary judgment (TRADEMARK LAW GUIDE ¶61,661).

Georgia-Pacific Consumer Products LP, 8th Cir., ¶61,697.