Igloo Products Corp v. Brantex Inc

IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
_______________
m 98-20593
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IGLOO PRODUCTS CORPORATION,
Plaintiff-Counter Defendant-
Appellee,
VERSUS
BRANTEX, INC.,
Defendant-Counter Claimant-
Appellant.
_________________________
Appeal from the United States District Court
for the Southern District of Texas
_________________________
February 11, 2000
Before HIGGINBOTHAM and SMITH,
Circuit Judges, and DUPLANTIER,
District Judge.*
JERRY E. SMITH, Circuit Judge:
Igloo Products Corporation (“Igloo”) sued
Brantex, Inc. (“Brantex”), to defeat Brantex’s
registration of the words “kool pak” with the
Patent and Trademark Office (“PTO”) as a
words-only trademark (a “word mark”). Bran-
tex counterclaimed under the Lanham Act,
15 U.S.C. § 1051 et seq., for trademark in-
fringement, trademark counterfeiting, trade-
mark dilution, and unfair competition, and as-
serted state law causes of action. Igloo pre-
vailed except as to its damages claim. Finding
no reversible error, we affirm.
I.
Since 1983, Brantex (which later changed
its name to “Kool Pak”) made soft-sided port-
able containers that it called “kool paks.” It
registered a “composite mark” (a trademark
* District Judge of the Eastern District of
Louisiana, sitting by designation.

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including both words and images in a distinct
manner), consisting of the words “kool pak”
alongside a penguin carrying one of the pro-
ducts, with the PTO in 1985. In granting this
registration, the PTO required Brantex to dis-
claim any exclusive right to the use of the
words “kool pak” alone. Brantex began the
process of registering a different composite
mark including penguin and “kool pak” in
1991, but abandoned the application when the
PTO again required it to disclaim an exclusive
right to the words alone.
In 1993, Brantex tried again, applying for a
composite mark, but noting in this application
that the “word mark Kool Pak” had become
distinctive through substantially exclusive and
continuous use for the five years immediately
preceding the application. In June 1994, the
PTO registered the second penguin mark with-
out requiring Brantex to disclaim an exclusive
interest in the words “kool pak” standing
alone.
Also in 1993, Brantex applied for registra-
tion of the words “kool pak” as a word mark
(standing alone, without the penguin or a pe-
culiar design). Igloo, which since 1992 had
been marketing products substantially similar
to Brantex’s “kool pak” in advertising that
referred to the products as “Cool Pack 6” and
“Cool Pack 12," opposed registration of the
word mark in the PTO.
Igloo sued, seeking (1) a declaratory judg-
ment that Igloo’s use of the term “cool pack”
for soft-sided insulated portable beverage
coolers did not infringe Brantex’s federally
registered trademark for the words “kool pak”
with a penguin design; (2) cancellation of
Brantex’s federal and state trademark regis-
trations; (3) an injunction preventing Brantex
from registering the words “kool pak” alone;
and (4) damages for misrepresentation and
unfair competition. Brantex counterclaimed
under the Lanham Act, 15 U.S.C. § 1051
et seq., for trademark infringement, trademark
counterfeiting, trademark dilution, and unfair
competition, and asserted state law causes of
action.
The jury returned a verdict favorable to
Igloo, finding, via special interrogatories, that:
(1) use of the words “kool pak” was “descrip-
tive” as that term is used in trademark law;
(2) the words had not themselves acquired
secondary meaning; (3) Igloo’s use of the
words “cool pack” did not raise a likelihood of
confusion issue with the use of the words
“kool pak” alone; (4) trademark infringement,
dilution, and counterfeiting under federal law
had not occurred; (5) trademark dilution under
Florida law had not occurred; and (6) trade-
mark dilution under Texas law had not oc-
curred. The jury also found that Brantex had
not fraudulently obtained its trademark regis-
trations and that Igloo had established an ac-
ceptable “fair-use” defense to Brantex’s trade-
mark actions.
II.
Both of the issues on appeal raise the ques-
tion whether the jury was properly instructed.
The standard of review in such cases was nice-
ly summarized in Bender v. Brumley, 1 F.3d
271, 276-77 (5th Cir. 1993), which explained
that
[w]e afford trial judges wide latitude in
fashioning jury instructions and ignore
technical imperfections, but the trial
court must instruct the jurors, fully and
correctly, on the applicable law of the
case, and guide, direct, and assist them
toward an intelligent understanding of
the legal and factual issues involved in

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their search for truth. Reversal is there-
fore appropriate whenever the charge as
a whole leaves us with substantial and
ineradicable doubt whether the jury has
been properly guided in its deliberations.
Assessing whether the jury was properly
guided, however, is only one-half of the
inquiry. Even though error may have
occurred, we will not reverse if we find,
based upon the record, that the chal-
lenged instruction could not have af-
fected the outcome of the case.
(Internal quotations, citations, and ellipses
omitted.)
III.
Brantex contends that the court mis-
instructed the jury with regard to its trademark
infringement and counterfeiting claims and to
some of Igloo’s claims against Brantex. We
consider each assertion in turn.
A.
Understanding the argument requires some
background in the taxonomy of “mark-
distinctions” for determining whether a trade-
mark-in-use is protectable as a legal trade-
mark. As this court recently explained,
In order to be registered as a trademark,
a mark must be capable of distinguishing
the applicant’s goods from those of oth-
ers. Marks are often classified in cate-
gories of generally increasing distinc-
tiveness; following the classic formula-
tion set out by Judge Friendly, they may
be (1) generic; (2) descriptive; (3) sug-
gestive; (4) arbitrary; or (5) fanciful.
The latter three categories of marks are
entitled to trademark protection because
they are inherently distinctiveSSthey
serve to identify a particular source of a
product. Generic marks, in contrast, re-
fer to the genus of which the particular
product is a species and are neither reg-
isterable as trademarks nor protectable
under § 43(a). The final category, con-
sisting of marks that describe a product,
do not inherently identify a particular
source, and hence cannot be protected
unless they acquire distinctiveness
through secondary meaning. Such sec-
ondary meaning is achieved when, in the
minds of the public, the primary sig-
nificance of a product feature or term is
to identify the source of the product
rather than the product itself.
Sugar Busters, LLC v. Brennan, 177 F.3d 258,
268 (5th Cir. 1999) (internal quotations, cita-
tions, and ellipses omitted). Thus, it is impor-
tant to decide in which category a given mark
belongs.
The court asked the jury to determine what
category the word mark “kool pak,” standing
alone (the word mark Brantex had applied for,
but that Igloo had opposed, and that therefore
became the focus of this litigation), occupied.
The jury determined that the word mark was
descriptive. The court also asked the jury, in
the event it found the mark to be descriptive,
to determine whether the word mark had cul-
tivated a secondary meaning. The jury found
that it had not.
It followed from this finding that Brantex’s
use of the word mark “kool pak” alone, with-
out the penguin, was not entitled to trademark
protection. As a result, it would avail Brantex
nothing to prove that any of Igloo’s uses of
the words “cool pack” created a likelihood of
confusion with the words “kool pak”; rather,
Brantex would have to prove that Igloo’s use
of the words “cool pack” created a likelihood

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of confusion with the composite mark for
which Brantex had previously established a
valid registration: the “kool pak”-plus-penguin
design.1
Brantex objected to this manner of presen-
tation to the jury. Noting that its “federal reg-
istration for KOOL PAK & Design [the
words-plus-penguin composite mark] was is-
sued under Section 2(f) of the [Lanham] Act
. . . without any disclaimer,” Brantex argued
that “[t]his means the PTO determined that the
words KOOL PAK had acquired distinctive-
ness, or secondary meaning, and that no other
person had the right to use a similar mark.”
Were Brantex’s contention true, of course, it
would render the question to the jury about
whether the word-mark had developed secon-
dary meaningSSand the failure affirmatively to
instruct that the word-mark had presumptively
developed secondary meaningSSerror.
B.
Brantex’s contention, however, is false as a
statement of law, at least with regard to Bran-
tex’s federal registrations. As Brantex admit-
ted, the federal registration it had already re-
ceived was for the composite mark, not the
word mark alone. Brantex is right to note that
registration of a mark “serves as prima facie
evidence that a secondary meaning existed”
during the period of registration. See Waples-
Platter Co. v. General Foods Corp., 439
F. Supp. 551, 578 (N.D. Tex. 1977). That
prima facie presumption, however, pertains to
the whole markSSin this case the words-plus-
penguin compositeSSrather than to any indi-
vidual portion of the mark. In re National
Data Corp., 753 F.2d 1056, 1059 (Fed. Cir.
1985); see also In Re Bose Corp., 772 F.2d
866, 873 (Fed. Cir. 1985). This is true even if
a registration application is accepted, as oc-
curred in the case of Brantex’s 1993 com-
posite registration, without an explicit demand
on the part of the PTO that the registrant dis-
claim any exclusive right to some portion of
the complete trademark.2
Thus, at least with regard to the federal
registration, it would have been error for the
district court to have granted Brantex a pre-
sumption of secondary meaning in the word-
mark “kool pak.” The court correctly found
that the question of secondary meaning was a
question of fact to be determined by the jury.
C.
The state trademarks present a slightly dif-
ferent question. The district court found that
“Brantex’s Texas and Florida registrations
were also of the logo ‘kool pak’ with a pen-
guin design.” Brantex asserts, however, that
1 The jury implicitly found that there was no
likelihood of confusion between the composite
(words-plus-penguin) design and Igloo’s use of the
words “cool pack” when it found, in answer to
another of the questions, that use of “cool pack”
did not create a likelihood of confusion with Bran-
tex’s use of the words “kool pak” alone. If using
“cool pack” did not create confusion with a mark
consisting only of “kool pak” standing alone, then
surely it could not create confusion with a mark
consisting of “kool pak” accompanied by an
illustrated penguin.
2 See 15 U.S.C. § 1056(a) (“The Commissioner
may require the applicant to disclaim an unregister-
able component of a mark otherwise registerable”
(emphasis added)); National Data Corp., 753 F.2d
at 1059 (“The absence of a disclaimer does not . . .
mean that a word or phrase in a registration is, or
has become, distinctive[.] The power of the PTO
to accept or require disclaimers is discretionary un-
der the statute, . . . and its practice over the years
has been far from consistent. Thus, it is
inappropriate to give the presence or absence of a
disclaimer any legal significance.”).

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the state registrations were “for the mark
KOOL PAK alone.”
1.
The record indicates that the district court
did not err in finding that the Florida trade-
mark registration registered the composite
mark rather than the word mark alone. Florida
specifies in its “Little Lanham” statute that
multiple copies of the exact mark to be reg-
istered must be sent with the application. See
FLA. STAT. ANN. § 495.031(5) (requiring fac-
simile in triplicate). The only evidence submit-
ted by Brantex to support its claim that it had
registered the word mark alone in Florida was
a copy of the certificate of registration issued
by the Florida Secretary of State’s office.
That certificate does state, in the text portion
of the document, that “BRANTEX . . . has
registered KOOL PAK to be used as a mark.”
The face of the certificate, however, contains
a copy of the composite mark, which would
not have “fit” in the text-only portion of the
certificate.
Hence, the evidence supplied by Brantex as
to exactly what it registered in FloridaSSthe
word mark or the composite markSSdid not
establish that Brantex had actually registered
the word mark alone. The court did not abuse
its discretion, therefore, in failing to find that
Brantex had established its entitlement to a
presumption of validity in that word mark.
2.
Texas also specifies in its “Little Lanham”
statute that multiple copies of the exact mark
to be registered must be sent with the appli-
cation. See TEX. BUS. & COM. CODE ANN.
§ 16.10(c)(2)(A) (requiring facsimile in dupli-
cate). The record indicates that the district
court erred in finding that Brantex’s Texas
registration was for the composite mark rather
than the word mark. The Texas Certificate of
Trademark issued to Brantex lists the words
“kool pak” alone as the registered mark, with-
out attachment on the certificate of any com-
posite mark. Moreover, Brantex included in
the record its application for trademark regis-
tration, which was for “the words ‘KOOL
PAK’” alone.
This fact does not avail Brantex, however.
Even if it did register the word mark rather
than the composite mark in Texas, it is not
evident that the Texas Little Lanham Act, as in
effect when this suit was proceeding in the
district court, provided for any presumptions
of secondary meaning. The Texas act includes
a provision that creates a “presumption of va-
lidity” in any trademark for which “[a] cer-
tificate of registration [is] issued by the sec-
retary of state under this chapter.” See TEX.
BUS. & COM. CODE ANN. § 16.15. See also
All Am. Builders, Inc. v. All Am. Siding, Inc.,
991 S.W.2d 484, 489 (Tex. App.SSFort Worth
1999, n.w.h.) (recognizing presumption); Tex-
as A&M Univ. Sys. v. University Book Store,
Inc., 683 S.W.2d 140, 144 (Tex. App.SSWaco
1985, writ ref’d n.r.e.) (same). Until Septem-
ber 1999, however, the Texas act also required
that suits filed pursuant to the act be
tried de novo . . . and every decision or
action concerning an issue in the suit
made or taken by the secretary of state
before the suit was filed is void [and] the
district court shall determine the issues
in the suit as if no decision had been
made or action taken by the secretary of
state; [and] the district court may not
apply in any form the substantial evi-
dence rule in reviewing a decision or ac-
tion of the secretary of state.
ACTS 1967, 60th Leg., p. 2343, ch. 785, § 1

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(amended 1999) (current version at TEX. BUS.
& COM. CODE ANN. § 16.24 (Vernon Supp.
2000)).
The plain language of these provisions, tak-
en together, indicates that even if we conclude
that Brantex registered the word mark alone in
Texas, Brantex was entitled to no presump-
tions of validity as a result of that registration,
which was a “decision or action concerning an
issue in the suit made or taken by the secretary
of state before the suit was filed.” The neg-
ative implication of the Texas cases recogniz-
ing the presumption, however, is that § 16.24
does not invalidate it.3 We may assume argu-
endo that Brantex was entitled to a presump-
tion of validity in a Texas word mark for “kool
pak” alone, however, because such a presump-
tion does nothing to alter the ultimate con-
clusion in this case.
D.
Even if we find that a prima facie pre-
sumption obtained to the “kool pak” word
mark, we still would not find error in failing to
provide the desired instruction.
In all civil actions and proceedings not
otherwise provided for by Act of Con-
gress or by these rules, a presumption
imposes on the party against whom it is
directed the burden of going forward
with evidence to rebut or meet the pre-
sumption, but does not shift to such par-
ty the burden of proof in the sense of the
risk of nonpersuasion, which remains
throughout the trial upon the party on
whom it was originally cast.
FED. R. EVID. 301. Hence, even if Brantex
were entitled to the presumption of secondary
meaning, the burden of persuasion on the
question of secondary meaning would not have
shifted to Igloo; instead, merely a burden of
production would have arisen in Igloo.
Whether Igloo met that burden of produc-
tion is ultimately a question for the court. If it
failed to meet the burden, then the question of
secondary meaning would not have properly
gone to the jury; the presumption in favor of
Brantex would have prevailed. If Igloo met
the burden, then the advantage created by the
presumption would have disappeared, and
Brantex would have faced the same burdens it
faced before the introduction of the pre-
sumption.
Thus, if Brantex had deserved the relevant
presumption, and had Igloo provided no evi-
dence to rebut it, then Brantex might well have
asked that the question of secondary meaning
be taken from the jury entirely. Under no cir-
cumstances, however, did it make sense for
Brantex to ask for an instruction about the
prima facie presumption to accompany the
question for the jury about secondary meaning;
to admit that the question of secondary mean-
ing was still one for the jury was to admit that
the prima facie presumption had fallen out of
the case.4
3 See All Am. Builders, 991 S.W.2d at 489;
University Book Store, 683 S.W.2d at 144.
Interpretation of the previous iteration of § 16.24
will matter little to future cases, because the
current version of § 16.24, as amended effective
September 1999, expressly limits the elimination of
the § 16.15 presumption to instances in which the
“secretary of state takes final action refusing to
register a mark under Section 16.109 or to renew
the registration of a mark under Section 16.14."
§ 16.24 (Vernon Supp. 2000) (emphasis added).
4 Cf. St. Mary’s Honor Ctr. v. Hicks, 509 U.S.
(continued...)

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IV.
Brantex also claims that the district court
misinstructed the jury with regard to Igloo’s
fair-use defense. Because the jury found, un-
der proper instruction, that Brantex had failed
to establish its claims against Igloo, we need
not reach the question whether the court
properly instructed the jury regarding an af-
firmative defense to those claims.
AFFIRMED.
4(...continued)
502, 506 (1993) (discussing the role of a similar
presumption in the setting of employment
discrimination suits); Olitsky v. Spencer Gifts, Inc.,
964 F.2d 1471, 1478 (5th Cir. 1992) (same);
Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 119
(5th Cir. 1979) (recognizing that presumptions
accorded to marks under the Lanham Act are
rebuttable).

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