Via the Trademark Blog, is it a trademark violation to put paper towels in a paper towel dispenser, if the paper towels are manufactured by someone other than the paper towel dispenser?
Answer: Maybe. Or at least, there’s enough of a question there to survive summary judgment.
GP licenses the ENMOTION towel dispenser to distributors who license it to restroom operators. The restroom operators are contractually obligated to use only ENMOTION brand toweling. Von Drehle created compatible (and allegedly inferior) paper for the ENMOTION dispenser. Fourth Circuit reverses lower court’s dismissal of GP’s trademark infringement cause, as GP may be allowed to show actionable post-purchase confusion by the non-purchasing public: namely restroom users who expect ENMOTION towels to come out of an ENMOTION dispenser (GP argued that this was analogous to expectations that COCA COLA is dispensed from a COCA COLA-marked soda fountain.
So no, it’s not a problem that the “consumers” here are restroom patrons that pretty much have no choice about which kind of paper towel they would prefer to use. The court accepts the analogy that what the Defendant is doing is like a hotel lobby that dispenses complimentary generic cola out of a Coca-Cola branded machine. As the consumers are expecting to receive a tasty trademarked beverage, they will be confused when instead they get some brackish generic knock off.
Because the 4th Circuit found there was a disputed question of fact, it remanded the case. GP managed (somehow) to find three experts who could testify that public restroom visitors expect there to be a correlation between the kind of dispenser and the kind of paper towel that comes out. I am exceedingly dubious about those studies’ validity, because I can’t imagine anyone out there seriously expects to be getting “brand name” paper towels. While the Defendant won’t get its summary judgment, I have an awfully hard time believing GP can prevail on this claim before a jury.
As noted on the Trademark Blog, the concurrence at page 25 is pretty entertaining: “oh hey GP, btw, if you win this whole trademark infringement, watch out on that whole ‘tying arrangement’ deal, that’s maybe kind of an antitrust violation you got going on there.”
Also — I don’t think I’ve ever seen an opinion where, as here, rather than writing out the word marks or assigning names for the logos, the actual stylized marks are shown. Is this a common practice that I’m just unaware of because I’m almost always reading from Lexis or WestLaw?
It’s annoying as hell, and doesn’t look very professional. I’m not usually the crotchety type about this kind of thing, but I don’t like it.
-Susan
