Last month, we posted here about a the Fourth Circuit’s reversal of dismissal of a trademark action brought by Georgia-Pacific to bar competitors from selling paper towels to fit in its “touchless” paper towel dispensers.
The Eighth Circuit has now weighed in and rejected similar claims by Georgia-Pacific in an Arkansas suit. Georgia-Pacific Consumer Prods. LP v. Myers Supply, Inc., 2010 U.S. App. 19246 (8th Cir. Sept. 15, 2010), found here. In Myers Supply, the Eighth Circuit affirmed the District Court’s finding, after a bench trial, that Georgia-Pacific had failed to prove that a distributor of generic paper towels for Georgia-Pacific’s dispensers was liable for contributory trademark infringement.
In its decision, found here, the Fourth Circuit ruled only on whether Georgia-Pacific could survive summary judgment. Since the Court did not weigh the evidence or make any factual findings about the strength of Georgia-Pacific’s claims, the Eighth Circuit found the decision to be “not helpful.” In Myers Supply, on the other hand, the District Court had heard all the evidence and found that Georgia-Pacific had failed to prove a likelihood of confusion.
Key to the Eighth Circuit’s decision was evidence that it was an unobjectionable and common practice in the paper towel industry to put towels of one brand into a dispenser of another brand. Thus, the Court held, the District Court was justified in discounting survey evidence from both sides that showed a likelihood of confusion among bathroom consumers.
The flaw in the Eighth Circuit’s reasoning is that industry practices do not seem probative of whether bathroom consumers are likely to be confused by the placement of generic paper towels in Georgia-Pacific’s paper towel dispensers. At bottom, the Court’s holding that evidence of a likelihood of confusion may be overcome by industry practice appears debatable, a point which Georgia-Pacific is sure to raise on remand in the Fourth Circuit action.