In the

United States Court of Appeals

For the Seventh Circuit

No. 10-3519

GEORGIA-PACIFIC CONSUMER PRODUCTS LP,

Plaintiff-Appellant,

v.

KIMBERLY-CLARK CORPORATION, et al.,

Defendants-Appellees.

Appeal from the United States District Court

for the Northern District of Illinois, Eastern Division.

No. 1:09-cv-02263—Virginia M. Kendall, Judge.

ARGUED JUNE 6, 2011—DECIDED JULY 28, 2011

Before KANNE, EVANS, and SYKES, Circuit Judges.

EVANS, Circuit Judge. 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
2 No. 10-3519

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.
No. 10-3519 3

A video of a 2003 Quilted Northern advertisement featuring 1

the quilters is available at: http://www.youtube.com/watch?v=

ttoiVqy8C3c&feature=related (last visited June 21, 2011).

Georgia-Pacific has been selling toilet paper since 1902.

In the early 1990s, it rebranded its toilet paper as Quilted

Northern, emphasizing a new diamond-shaped embossed

design on the tissue, which gives it the appearance of a

quilt. This design—recognizable for the commercials with

cartoon quilters —is referred to as the “Quilted Diamond 1

Design.” To protect the Quilted Diamond Design, GeorgiaPacific applied for and received several trademarks,

copyrights, and utility and design patents. Most relevant

to this case are trademarks Reg. Nos. 2,710,741; 1,778,352;

1,806,076; and 1,979,345 and utility patents 5,436,057 (’057

patent); 5,573,830 (’830 patent); 5,597,639 (’639 patent);

5,620,776 (’776 patent); and 5,874,156 (’156 patent). The

same lattice designs depicted in Georgia-Pacific’s trademarks appear in the five utility patents.

 Reg. No. 2,710,741 Reg. No. 1,778,352 Reg. No. 1,806,076 Reg. No. 1,979,345

 ‘057, ‘156, and ‘639 patents ‘776 and ‘830 patents
4 No. 10-3519

Georgia-Pacific later filed another suit against Kimberly- 2

Clark for its introduction of Scott Extra Soft bath tissue, also

claiming it infringed the Quilted Diamond Design. The

district judge consolidated the two actions.

In 2008, Georgia Pacific discovered that Kimberly-Clark,

one of its main competitors in the toilet paper industry,

had redesigned its Cottonelle Ultra bath tissue and

Scott Kimberly-Clark Professional. Both products used

a quilted design which Georgia-Pacific believed to be

very similar to its Quilted Diamond Design.

Georgia-Pacific unrolled this suit against KimberlyClark, alleging unfair competition and trademark infringement under the Lanham Act, for KimberlyClark’s introduction of its redesigned toilet paper.2

Kimberly-Clark moved for summary judgment, arguing

that Georgia-Pacific’s Quilted Diamond Design is functional and therefore cannot be protected as a registered

trademark. The district judge agreed and granted

Kimberly-Clark’s motion. Georgia-Pacific now appeals.

We review the district judge’s grant of summary judgment de novo, viewing all facts in favor of the nonmoving

party. Buie v. Quad/Graphics, Inc., 366 F.3d 496, 502 (7th

Cir. 2004). Summary judgment is appropriate where the

admissible evidence shows that “there is no genuine

dispute as to any material fact and the movant is entitled

to judgment as a matter of law.” FED. R. CIV. P. 56(a).

Therefore, despite the fact that the judge dutifully plied

her opinion, we now wipe the slate clean and address

Georgia-Pacific’s claims.
No. 10-3519 5

Under the Lanham Act, registration of a trademark

creates a rebuttable presumption that the mark is valid,

but the presumption “evaporates as soon as evidence of

invalidity is presented.” Door Systems, Inc. v. Pro-Line Door

Systems, Inc., 83 F.3d 169, 172 (7th Cir. 1996). Thus, the

burden of proof originates with the party seeking to

invalidate the registered mark. But if that party can put

forward strong evidence of functionality, the mark

holder carries a “heavy burden of showing that the

feature is not functional, for instance by showing that it

is merely an ornamental, incidental, or arbitrary aspect

of the device.” TrafFix Devices v. Marketing Displays,

Inc., 532 U.S. 23, 30 (2001); Eco Manufacturing LLC v.

Honeywell International, Inc., 357 F.3d 649, 653 (7th Cir.

2003). Here, the burden of proof lies with KimberlyClark, but Kimberly-Clark can shift that burden to its

opponent by producing strong evidence of functionality.

Georgia-Pacific begins by arguing that summary judgment was inappropriate because functionality is an

issue of fact. While Georgia-Pacific is correct, we have

recently held that the functionality of an asserted design

can be determined on summary judgment in appropriate cases. See Jay Franco & Sons, Inc. v. Franek, 615 F.3d

855, 857 (7th Cir. 2010); see also TrafFix, 532 U.S. at 34-35.

Georgia-Pacific also argues that its trademarks are

“incontestable” under 15 U.S.C. § 1065. Unfortunately

for Georgia-Pacific, incontestable is not invincible; the

Lanham Act lists a number of affirmative defenses an

alleged infringer can use, including showing that the

mark is “functional.” See 15 U.S.C. § 1115(b)(8); Franek, 615
6 No. 10-3519

F.3d at 857. As we explained in Franek, “patent law alone

protects useful designs from mimicry; the functionality

doctrine polices the division of responsibilities between

patent and trademark law by invalidating marks on

useful designs.” Id.; see also Qualitex Co. v. Jacobson

Products Co., Inc., 514 U.S. 159, 164 (1995). In other

words, if the Quilted Diamond Design is functional, the

trademark is invalid.

In TrafFix, the Supreme Court found that a design is

functional “if it is essential to the use or purpose of

the article or if it affects the cost or quality of the article.”

532 U.S. at 32 (internal citations and quotations omitted). Courts look to several factors to determine whether

a design is functional:

(1) the existence of a utility patent, expired or unexpired, that involves or describes the functionality of

an item’s design element; (2) the utilitarian properties

of the item’s unpatented design elements; (3) advertising of the item that touts the utilitarian advantages

of the item’s design elements; (4) the dearth of, or

difficulty in creating, alternative designs for the

item’s purpose; (5) the effect of the design feature

on an item’s quality or cost.

Specialized Seating, Inc. v. Greenwich Industries, L.P., 472

F. Supp. 2d 999, 1011 (N.D. Ill. 2007); see also Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 1274 (Fed.

Cir. 2002).

Kimberly-Clark argues, correctly we think, that GeorgiaPacific’s trademarks covering the Quilted Diamond

Design overlap with the ‘057, ‘156, ‘639, ‘776, and ‘830
No. 10-3519 7

utility patents and are strong evidence of functionality.

In Franek, we found that “utility patents serve as

excellent cheat sheets [for determining functionality]

because any design claimed in a patent is supposed to

be useful.” 615 F.3d at 857; see also TrafFix, 532 U.S. at

29 (finding that expired utility patents are “strong

evidence that the features therein claimed are functional”). Specifically, if the “central advance” claimed

in the utility patent matches the “essential feature” of

the trademark, there is strong evidence that the design

is functional. TrafFix, 532 U.S. at 30.

As an initial matter, Georgia-Pacific argues on appeal,

as it did in the district court, that the patents cover the

manufacturing method or techniques of “offsetting”

the pattern and “varying the depth” of the embossed

elements, and not the design itself. But as the district

judge found, a patent claim involving a tangible item

is different from a claim relating to a process. See In re

Kollar, 286 F.3d 1326, 1332 (Fed. Cir. 2002). There is no

question that the patents at issue refer to toilet paper—a

tangible product—and not the step-by-step approach

to creating it.

We therefore turn to the actual trademarks and patents.

The parties agree that the essential feature of the trademarks is the Quilted Diamond Design, which is embossed

on the toilet paper, giving it a quilt-like appearance.

See Reg. Nos. 2,710,741; 1,778,352; 1,806,076; and 1,979,345.

Therefore, the question is whether the Quilted Diamond

Design is also the “central advance” claimed in any of

the utility patents. Unfortunately for Georgia-Pacific, all
8 No. 10-3519

five utility patents disclose a diamond lattice design

filled with signature bosses and claim the benefits of this

design as the “central advance.” For example, the ‘830

patent discloses a “sheet of tissue” with a “nonwoven

fibrous web” that exhibits “puffiness and bulk”; the ‘776

patent references “diamond shaped cells” and a “sheet

of tissue exhibiting puffiness and bulk” that minimizes

“nesting”; the ‘057 patent claims a “lattice pattern . . . filled

with a signature debossment” that reduces “nesting”; and

the ‘639 patent notes that embossing a lattice design

and the signature bosses at different heights can

achieve utilitarian benefits. Each of the patents discusses the benefits of the Quilted Diamond Design.

Kimberly-Clark argues that this language is strong evidence of functionality. We agree.

Georgia-Pacific argues, however, that the Quilted

Diamond Design is merely “incidental” under TrafFix.

Accordingly, we will “[go] beyond” the patent claims

to the specifications. See TrafFix, 532 U.S. at 34. The abstracts for the ‘639 and ‘156 patents state that “[t]he

perceived softness of embossed tissue can be increased greatly

while avoiding nesting when a particular pattern is

embossed into the tissue.” (Emphasis added.) The ‘776

abstract describes that patent as “[a]n embossed tissue

having improved bulk and puffiness while being non-nesting

by having a lattice pattern and at least two signature

bosses.” (Emphasis added.) And the ‘057 patent states

that “[t]his invention relates to the discovery that

perceived softness of embossed tissue can be increased greatly

while avoiding prior art nesting problems if a particular

pattern is embossed into the tissue.” (Emphasis added.) So
No. 10-3519 9

Georgia-Pacific’s argument fares no better here;

these abstracts all refer to the Quilted Diamond Design’s

utilitarian benefits of softness, bulk, and non-nesting.

Moreover, the patents claim the Quilted Diamond

Design as the “most preferred embodiment.” (The preferred embodiment of the ‘057 patent is a lattice pattern

of diamond cells filled with signature debossments;

the most preferred embodiment for the ‘639 patent is a

lattice comprised of “diamond shaped” cells filled with

a “signature boss.”) And while the preferred embodiment

alone is not definitive of functionality, the language

Georgia-Pacific uses in the preferred embodiment (a

lattice pattern filled with hearts and flowers) matches

the language in the claims (a lattice structure and

diamond-shaped cells). As with the language in the

specifications, the consistency in language between

the preferred embodiment and the claims is evidence

of functionality.

Thus, reading the language of the patents, we find that

the “central advance” claimed in the utility patents

is embossing a quilt-like diamond lattice filled with

signature designs that improves (perceived) softness

and bulk, and reduces nesting and ridging. This is the

same “essential feature” claimed in the trademarks. Thus,

the language of the patents—the claims, abstracts, and

preferred embodiment—is “strong evidence” that the

Quilted Diamond Design is functional, and Georgia-Pacific

has failed to offer evidence that the design is merely

incidental.

Georgia-Pacific also argues that the existence of design

patents precludes a finding of functionality, or at least
10 No. 10-3519

is evidence of non-functionality. But, like a trademark,

design patents do not preclude a finding of functionality.

See Eco Manufacturing, 357 F.3d at 653 (affirming

district court denial of preliminary injunction due to

functionality of design even though design had been

protected by expired design patent); Talking Rain

Beverage Co., Inc. v. South Beach Beverage Co., 349 F.3d 601,

605 n.3 (9th Cir. 2003). Therefore, we agree with the

district judge—the functionality of the Quilted Diamond

Design remains undisturbed by the design patents

because of the utilitarian benefits that are clearly disclosed in the utility patents.

Georgia-Pacific next asserts that expert testimony

creates a genuine issue of material fact. First, we note

that because we can readily discern the scope and

content of the utility patents at issue from the drawings,

specifications, and claims, it is unnecessary to rely on

extrinsic evidence, such as expert testimony. Kara Technology, Inc. v. Stamps.com, Inc., 582 F.3d 1341, 1348 (Fed. Cir.

2009); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,

1584 (Fed. Cir. 1996) (“[T]he expert testimony, which

was inconsistent with the specification and file history,

should have been accorded no weight.”). Therefore, to

the extent that the experts’ opinions on how to read a

patent conflict with the actual language of the patent,

that conflict “does not create a question of fact nor can

the expert opinion bind the court or relieve the court of

its obligation to construe the claims according to the

tenor of the patent.” Modine Manufacturing Co. v. U.S.

International Trade Commission, 75 F.3d 1545, 1550

(Fed. Cir. 1996) (internal citation omitted) (abrogated

on other grounds).
No. 10-3519 11

Here, Georgia-Pacific presented expert testimony that

the utilitarian benefits of the Quilted Diamond Design

are not the result of the particular pattern but, rather,

the technique used to emboss the tissue, and that embossing is not required to produce soft tissue. But to

the extent that the experts’ testimony conflicts with our

findings—findings derived from the language of the

patents—we afford it no weight, and it does not create

a question of fact.

Georgia-Pacific also claims, in the alternative, that

while the Quilted Diamond Design might have been

functional once, it is no longer functional. According to

Georgia-Pacific, this is critical because “technological

change can render designs that were functional years

ago no longer so.” Franek, 615 F.3d at 859. GeorgiaPacific is correct. We held in Eco Manufacturing that “what

was once functional may . . . later be ornamental.

Passage of time diminishes a utility patent’s significance.” 357 F.3d at 653. But in both of the cases GeorgiaPacific cites, the patents at issue had expired, whereas

here the ‘830 and ‘776 patents are still active. Indeed, in

Franek we noted that “more recent patents are often

better evidence” of functionality. 615 F.3d at 859. Thus,

Georgia-Pacific’s claim that even if the Quilted Diamond

Design was once functional it no longer is, does not

hold water; two of the patents at issue in this case are

still in effect. Accordingly, the first factor weighs heavily

in favor of finding functionality.

Because the second factor—the utilitarian properties

of the unpatented design elements—is not at issue in this
12 No. 10-3519

case, we move to third factor of functionality: whether

advertising touts the utilitarian advantages of the

asserted design. Georgia-Pacific’s advertisements

include the following claims: (1) “Quilted to Absorb”;

(2) “Quilted to create thousands of places for moisture to

go”; (3) “Our two softest layers of premium tissue are

gently quilted together to give you and your family

exceptional softness and comfort”; and (4) “Quilted

Northern Ultra with a unique new quilted design for

more quilting and comfort than ever before.”

Georgia-Pacific makes two claims with regard to

these advertisements. First, it argues that they are mere

puffery and, therefore, not factual statements about

the product. But looking to the ads, the district judge

was spot-on in noting that the language “links the

quilted feature to numerous utilitarian benefits, such as

softness, comfort, and absorption,” further affirming

that the Quilted Diamond Design is functional. See

Franek, 615 F.3d at 859 (finding that a product’s functionality was bolstered by the advertisements, which

highlighted the functional aspect of the design).

Second, Georgia-Pacific argues that its advertising

creates a genuine issue of material fact. Georgia-Pacific

relies on Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277,

299-300 (7th Cir. 1998), a case in which we reversed

summary judgment because a material question of fact

existed concerning whether advertisements touted functional aspects of trade dress. But, as Kimberly-Clark notes,

Thomas & Betts is distinguishable; in that case it was

unclear whether the advertisements were about the
No. 10-3519 13

asserted design feature (an oval-shaped cable tie head)

or other features of a cable tie, while here, the language in the ads is clear—the Quilted Diamond Design

is unequivocally linked to functional benefits such as

absorbency, softness, and comfort. Georgia-Pacific’s ads

do not create a genuine issue of material fact. See In re

Bose Corp., 772 F.2d 866, 871-72 (Fed. Cir. 1985) (finding

that advertisements were strong evidence of functionality when Bose advertised the shape of its speaker

as a performance-enhancing part of the sound system).

The next factor in determining functionality is the

availability of alternative designs for the item’s purpose.

Georgia-Pacific argues that the toilet paper can be embossed with any number of designs, such as octagons or

hexagons (as it mentioned in the ‘776 and ‘830 patents),

and still possess the same utilitarian benefits as the

Quilted Diamond Design. But as we noted in Specialized

Seating, Inc. v. Greenwich Industries, L.P., the design in

question does not have to be the only possible design to

be functional; rather, it is functional if it “represents one

of many solutions to a problem.” 616 F.3d 722, 727 (7th Cir.

2010) (emphasis added). And like in Specialized Seating,

we do not doubt that there are many other available

functional designs for toilet paper (indeed, marketleader Charmin proves there are), but if the Quilted

Diamond Design is a solution to a problem, as GeorgiaPacific claimed it to be in its patents, it is functional and

thus remains in the sphere of patent protection and not

in that of trademark. Id. Accordingly, because we find

the design to be functional, the fact that there are numerous alternative designs does not, on its own, render

the design nonfunctional and incidental. Id.
14 No. 10-3519

The final factor of functionality concerns the effect of

the design on a item’s quality or cost. Here, KimberlyClark asserts only that the Quilted Diamond Design

affects the quality of the bath tissue, and so we will

focus our inquiry there. Kimberly-Clark argues that the

utility patents’ claims and specifications explicitly note

that the Quilted Diamond Design improves softness

and comfort, increases bulk, enhances roll structure, and

prevents nesting and ridging—all claims of quality.

Kimberly-Clark also notes that Georgia-Pacific’s ads

highlight the same benefits of the design. GeorgiaPacific’s own language, in both the utility patents and

the advertisements, consistently refers to the increased

quality—softness, comfort, bulk, and reduced nesting

and ridging—when using the Quilted Diamond Design.

We agree with the district judge that Georgia-Pacific’s

own claims tout the improved quality of the product

due to the Quilted Diamond Design.

We thus find that Kimberly-Clark has produced strong

evidence of functionality, and Georgia-Pacific has failed

to prove that the design is incidental. In Franek and Specialized Seating, we explained that functionality polices the

division between patent and trademark law, and if a

design is functional the owner cannot trademark the

design and block innovation. Georgia-Pacific, whether

intentionally or not, patented their Quilted Diamond

Design and claimed it to be functional. They must now

live with that choice and can benefit only under the protection of a patent, not that of a trademark.

We next address Georgia-Pacific’s claim that the district judge erred in failing to address whether Kimberly-
No. 10-3519 15

Clark infringed Georgia-Pacific’s trademarks by using

the design on its packaging. Georgia-Pacific argues that

regardless of whether the Quilted Diamond Design on

the toilet paper is functional, it absolutely is not

functional when used on packaging. But if a product is

functional and thus unregistrable, as we have found the

Quilted Diamond Design to be, then “the accurate depiction of that [product] is also unregistrable.” In re CNS,

Inc., No. 76250116, 2005 WL 3175107 at *6 n.11 (T.T.A.B.

Nov. 18, 2005); Textron Inc. v. Pilling Chain Co., Inc., 175

U.S.P.Q. (BNA) 621, 622 (T.T.A.B. 1972) (one cannot claim

trademark right in the configuration or illustration of a

purely functional item); see also 1 J. Thomas McCarthy,

McCarthy on Trademarks & Unfair Competition § 7:37

(4th ed. 2009) (“No one competitor should have the exclusive right to show a picture of a functional product. This

would be the competitive equivalent of an exclusive

right to the generic name of the product, which no one

can own.”). Thus, Georgia-Pacific cannot trademark the

Quilted Diamond Design on its packaging for the same

reason it cannot trademark the design on the toilet

paper—the design is functional.

Finally, Georgia-Pacific argues that laches bars KimberlyClark from asserting the functionality defense. To establish laches, Georgia-Pacific must show that KimberlyClark unreasonably delayed in asserting its functionality

defense, and that Georgia-Pacific reasonably relied

upon, and was prejudiced by, the delay. Maher v. City

of Chicago, 547 F.3d 817, 822 (7th Cir. 2008); see also

Chattanoga Mfg., Inc. v. Nike, Inc., 301 F.3d 789, 792-93 (7th
16 No. 10-3519

Cir. 2002) (noting that in trademark cases, laches applies

where the defendant can show “that the plaintiff had

knowledge of the defendant’s use of an allegedly infringing mark . . . that the plaintiff inexcusably delayed in

taking action with respect to the defendant’s use, and

that defendant would be prejudiced by allowing the

plaintiff to assert its rights at this time”).

According to Georgia-Pacific, Kimberly-Clark knew

about the utility patents for at least a decade, and

therefore cannot now use functionality as an affirmative

defense. Kimberly-Clark claims, however, that it did not

sleep on its rights because until Georgia-Pacific sued, it

had no obligation or reason to challenge the validity of

Georgia-Pacific’s trademark registrations. Anderson v.

Board of Regents of the Univ. of Wisconsin System, 140 F.3d

704, 707 (7th Cir. 1998) (“A target of a potential lawsuit

has no obligation, however, to point out the flaws in

the complainant’s action before the suit is even filed

with the court.”). Moreover, the Lanham Act does not

permit the filing of a trademark cancellation claim in

federal court absent an independent basis for federal

jurisdiction, such as a claim of infringement of the registered mark. Ditri v. Coldwell Banker Residential Affiliates,

Inc., 954 F.2d 869, 873-74 (3d Cir. 1992). Kimberly-Clark

did not delay in raising functionality as an affirmative

defense; it did so in response to Georgia-Pacific’s claims.

Therefore, there was no inexcusable delay or prejudice,

and laches does not apply. 

For the foregoing reasons, Georgia-Pacific’s Quilted

Diamond Design is functional and therefore cannot
No. 10-3519 17

be trademarked. The judgment of the district court

is AFFIRMED.

7-28-11