Igloo Products Corp. v. Brantex Inc.

• Decision Date: 11 February 2000
• Docket Number: No. 98-20593,98-20593
• Citation: 202 F.3d 814
• Parties: (5th Cir. 2000) IGLOO PRODUCTS CORPORATION, Plaintiff-Counter Defendant-Appellee, v. BRANTEX, INC., Defendant-Counter Claimant-Appellant
• Court: U.S. Court of Appeals — Fifth Circuit

Page 814

202 F.3d 814 (5th Cir. 2000)

IGLOO PRODUCTS CORPORATION, Plaintiff-Counter Defendant-Appellee, v. BRANTEX, INC., Defendant-Counter Claimant-Appellant.

No. 98-20593

IN THE UNITED STATES COURT OF APPEALS, FIFTH CIRCUIT

February 11, 2000

Appeal from the United States District Court for the Southern District of Texas

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"). 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. Igloo prevailed 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 portable containers that it called "kool paks." It registered a "composite mark" (a trademark including both words and images in a distinct manner), consisting of the words "kool pak" alongside a penguin carrying one of the products, with the PTO in 1985. In granting this registration, the PTO required Brantex to disclaim 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 without requiring Brantex to disclaim an exclusive interest in the words "kool pak" standing alone.

Also in 1993, Brantex applied for registration of the words "kool pak" as a word mark (standing alone, without the penguin or a peculiar 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 judgment 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 registrations; (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 "descriptive" 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) trademark dilution under Texas law had not occurred. The jury also found that Brantex had not fraudulently obtained its trademark registrations and that Igloo had established an acceptable "fair-use" defense to Brantex's trademark actions.

II.

Both of the issues on appeal raise the question whether the jury was properly instructed. The standard of review in such cases was nicely 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 their search for truth. Reversal is therefore 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 challenged instruction could not have affected the outcome of the case.

(Internal quotations, citations, and ellipses omitted.)

III.

Brantex contends that the court misinstructed 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 trademark-in-use is protectable as a legal trademark. 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 others. Marks are often classified in categories of generally increasing distinctiveness; following the classic formulation set out by Judge Friendly, they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. The latter three categories of marks are entitled to trademark protection because they are inherently distinctivethey serve to identify a particular source of a product. Generic marks, in contrast, refer to the genus of which the particular product is a species and are neither registerable as trademarks nor protectable under 43(a). The final category, consisting 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 secondary meaning is achieved when, in the minds of the public, the primary significance 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, citations, and ellipses omitted). Thus, it is important 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 cultivated 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, without 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 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 presentation to the jury. Noting that its "federal registration for KOOL PAK & Design [the words-plus-penguin composite mark] was issued 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 distinctiveness, 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 secondary meaningand the failure affirmatively to instruct that the word-mark had presumptively developed secondary meaningerror.

B.

Brantex's contention, however, is false as a statement of law, at least with regard to Brantex's federal registrations. As Brantex admitted, the federal registration it had already received 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 markin this case the words-plus-penguin compositerather than to any individual 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 occurred in the case of Brantex's 1993 composite registration, without an explicit demand on the part of the PTO that the registrant disclaim 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 presumption 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 different question. The district court found that "Brantex's Texas and Florida registrations were also of the logo 'kool pak' with a penguin design." Brantex asserts, however, that the state registrations...