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

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

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

of confusion with the composite mark for
during the period of registration. See Waples-
which Brantex had previously established a
Platter Co. v. General Foods Corp., 439
valid registration: the "kool pak"-plus-penguin
F. Supp. 551, 578 (N.D. Tex. 1977). That
design.1
prima facie presumption, however, pertains to
the whole markSSin this case the words-plus-
Brantex objected to this manner of presen-
penguin compositeSSrather than to any indi-
tation to the jury. Noting that its "federal reg-
vidual portion of the mark. In re National
istration for KOOL PAK & Design [the
Data Corp., 753 F.2d 1056, 1059 (Fed. Cir.
words-plus-penguin composite mark] was is-
1985); see also In Re Bose Corp., 772 F.2d
sued under Section 2(f) of the [Lanham] Act
866, 873 (Fed. Cir. 1985). This is true even if
. . . without any disclaimer," Brantex argued
a registration application is accepted, as oc-
that "[t]his means the PTO determined that the
curred in the case of Brantex's 1993 com-
words KOOL PAK had acquired distinctive-
posite registration, without an explicit demand
ness, or secondary meaning, and that no other
on the part of the PTO that the registrant dis-
person had the right to use a similar mark."
claim any exclusive right to some portion of
Were Brantex's contention true, of course, it
the complete trademark.2
would render the question to the jury about
whether the word-mark had developed secon-
Thus, at least with regard to the federal
dary meaningSSand the failure affirmatively to
registration, it would have been error for the
instruct that the word-mark had presumptively
district court to have granted Brantex a pre-
developed secondary meaningSSerror.
sumption of secondary meaning in the word-
mark "kool pak." The court correctly found
B.
that the question of secondary meaning was a
Brantex's contention, however, is false as a
question of fact to be determined by the jury.
statement of law, at least with regard to Bran-
tex's federal registrations. As Brantex admit-
C.
ted, the federal registration it had already re-
The state trademarks present a slightly dif-
ceived was for the composite mark, not the
ferent question. The district court found that
word mark alone. Brantex is right to note that
"Brantex's Texas and Florida registrations
registration of a mark "serves as prima facie
were also of the logo `kool pak' with a pen-
evidence that a secondary meaning existed"
guin design." Brantex asserts, however, that
1 The jury implicitly found that there was no
2 See 15 U.S.C. § 1056(a) ("The Commissioner
likelihood of confusion between the composite
may require the applicant to disclaim an unregister-
(words-plus-penguin) design and Igloo's use of the
able component of a mark otherwise registerable"
words "cool pack" when it found, in answer to
(emphasis added)); National Data Corp., 753 F.2d
another of the questions, that use of "cool pack"
at 1059 ("The absence of a disclaimer does not . . .
did not create a likelihood of confusion with Bran-
mean that a word or phrase in a registration is, or
tex's use of the words "kool pak" alone. If using
has become, distinctive[.] The power of the PTO
"cool pack" did not create confusion with a mark
to accept or require disclaimers is discretionary un-
consisting only of "kool pak" standing alone, then
der the statute, . . . and its practice over the years
surely it could not create confusion with a mark
has been far from consistent. Thus, it is
consisting of "kool pak" accompanied by an
inappropriate to give the presence or absence of a
illustrated penguin.
disclaimer any legal significance.").
4

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

(amended 1999) (current version at TEX. BUS.
directed the burden of going forward
& COM. CODE ANN. § 16.24 (Vernon Supp.
with evidence to rebut or meet the pre-
2000)).
sumption, but does not shift to such par-
ty the burden of proof in the sense of the
The plain language of these provisions, tak-
risk of nonpersuasion, which remains
en together, indicates that even if we conclude
throughout the trial upon the party on
that Brantex registered the word mark alone in
whom it was originally cast.
Texas, Brantex was entitled to no presump-
tions of validity as a result of that registration,
FED. R. EVID. 301. Hence, even if Brantex
which was a "decision or action concerning an
were entitled to the presumption of secondary
issue in the suit made or taken by the secretary
meaning, the burden of persuasion on the
of state before the suit was filed." The neg-
question of secondary meaning would not have
ative implication of the Texas cases recogniz-
shifted to Igloo; instead, merely a burden of
ing the presumption, however, is that § 16.24
production would have arisen in Igloo.
does not invalidate it.3 We may assume argu-
endo that Brantex was entitled to a presump-
Whether Igloo met that burden of produc-
tion of validity in a Texas word mark for "kool
tion is ultimately a question for the court. If it
pak" alone, however, because such a presump-
failed to meet the burden, then the question of
tion does nothing to alter the ultimate con-
secondary meaning would not have properly
clusion in this case.
gone to the jury; the presumption in favor of
Brantex would have prevailed. If Igloo met
D.
the burden, then the advantage created by the
Even if we find that a prima facie pre-
presumption would have disappeared, and
sumption obtained to the "kool pak" word
Brantex would have faced the same burdens it
mark, we still would not find error in failing to
faced before the introduction of the pre-
provide the desired instruction.
sumption.
In all civil actions and proceedings not
Thus, if Brantex had deserved the relevant
otherwise provided for by Act of Con-
presumption, and had Igloo provided no evi-
gress or by these rules, a presumption
dence to rebut it, then Brantex might well have
imposes on the party against whom it is
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
3 See All Am. Builders, 991 S.W.2d at 489;
prima facie presumption to accompany the
University Book Store, 683 S.W.2d at 144.
question for the jury about secondary meaning;
Interpretation of the previous iteration of § 16.24
to admit that the question of secondary mean-
will matter little to future cases, because the
ing was still one for the jury was to admit that
current version of § 16.24, as amended effective
the prima facie presumption had fallen out of
September 1999, expressly limits the elimination of
the case.4
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."
4 Cf. St. Mary's Honor Ctr. v. Hicks, 509 U.S.
§ 16.24 (Vernon Supp. 2000) (emphasis added).
(continued...)
6

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).
7