A manufacturer's diamond-shaped embossed design for its toilet paper was functional and not entitled to trademark protection, the U.S. Court of Appeals in Chicago has held. The manufacturer could not pursue trademark infringement claims against a competitor for using a similar design.

The design gave the toilet paper the appearance of a quilt. The manufacturer had obtained several trademark registrations, copyrights, and utility and design patents for its "Quilted Diamond Design." Although the trademark registrations had achieved "incontestable" status, incontestability was not a bar to a defendant raising an affirmative defense of functionality, the court said.

The utility patents provided strong evidence of functionality. The patents claimed the benefits of the diamond lattice design as the "central advance" of the underlying invention, stating that the design exhibited "puffiness and bulk," minimized "nesting," and achieved other utilitarian benefits, including perceived softness, the court noted. The patents claimed that the diamond design was the "most preferred embodiment" for the underlying invention.

The quilt-like diamond lattice described in the patents was the same "essential feature" claimed in the trademark registrations. The manufacturer failed to present evidence that the design was merely incidental.

The existence of the design patents did not preclude a finding of functionality, the court said, although design patents only cover ornamental, nonfunctional features of an item. The functionality of the design remained undisturbed by the design patents because of the utilitarian benefits that were disclosed in the utility patents.

Because the scope and content of the utility patents could be discerned from their drawings, specifications, and claims, it was not necessary to examine extrinsic evidence, such as expert testimony, to make a determination as to functionality, in the court's view. To the extent that an expert report submitted by the manufacturer conflicted with the court's findings, the report was given no weight and did not create a question of fact.

The manufacturer's advertising touted the utilitarian advantages of the design. Advertising claims that the manufacturer's toilet paper was "quilted to absorb" and had "exceptional softness and comfort" were not mere puffery, according to the court.

Even if there were many possible alternative designs --such as designs using patterns of embossed octagons or hexagons --the design did not have to be the only available design to be functional. The diamond lattice design could be deemed functional if it represented one of many solutions to a problem, the court said.

In addition, the court determined that the competitor could not have engaged in trademark infringement by reproducing the design on its packaging. Although the depiction of the design was not itself functional, if a product design is functional and not registrable, the accurate depiction of that design also is not protectable.

Georgia-Pacific Consumer Products LP, 7th Cir., ¶61,845.