Igloo Products Corp.v.Kool Pak, Inc.

Trademark Trial and Appeal Board

Nov 21, 2008

No. 91095892 (T.T.A.B. Nov. 21, 2008)

Hearing: Mailed:
20 August 2008 21 November 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Igloo Products Corp.
v.
Kool Pak, Inc.1
_____

Opposition No. 91095892
to application Serial No. 74467785
_____

James R. Robinson of King & Spalding LLP for Igloo Products
Corp.

Michael A. Grow of Arent Fox LLP for Kool Pak, Inc.
______

Before Grendel, Drost, and Taylor, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

Kool Pak, Inc. (applicant) has applied to register the
mark KOOL PAK in typed or standard character form on the
Principal Register under the provision of Section 2(f) of
the Trademark Act (15 U.S.C. § 1052(f)) for the following
goods:
Insulated carrying cases for audio and video cassettes,
compact discs and camera equipment in Class 9

Insulated tote bags for travel, books, and various
other sundry items, fanny packs, shoe bags, drawstring
fabric bags, and non-insulated tote bags in Class 18

1 By change of name from Brantex, Inc. See Reel/Frame No.
2092/0570.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91095892
2

Insulated carrying bags for beverage container six-
packs, beverage container eight-packs, beverage
container twelve-packs, and for use as lunch bags;
insulated lunch bags; insulated carrying bags for
single bottles; and soft insulated holding sleeves for
beverage cans, beverage bottles, and wine and champagne
bottles in Class 21.2

On November 18, 1994, opposer, Igloo Products Corp.,
filed a notice of opposition to the registration of
applicant’s mark on the grounds that (Notice of Opposition
at 2 (paragraph numbers omitted)):
The term “cool pack” is merely descriptive of or is a
common or usual name for insulated containers intended
to keep ice, food and beverages cool.

The term “KOOL PAK” is the phonetic equivalent of the
term “cool pack.”

The Applicant through its attorneys has alleged that it
has acquired valuable property rights in the federally
registered mark “KOOL PAK” and that Opposer’s use of
the term “cool pack” constitutes trademark infringement
of the Applicant’s rights.

Opposer has a right to use the term “cool pack” in its
descriptive or generic context to describe or refer to
its cool packs.

On January 30, 2001, opposer amended its notice of
opposition to add the ground of collateral estoppel and res

2 Serial No. 74467785, filed on December 9, 1993. The
application identifies the dates of first use anywhere and in
commerce for all classes as August 29, 1983. Applicant (Brief at
9 n. 5) points out that the USPTO electronic records incorrectly
indicates the dates of first use for Class 21 are 1993 instead of
1983.
Opposition No. 91095892
3
judicata. Applicant denied the salient allegations of the
notices of opposition.
The Record
The record consists of the file of the involved
application; applicant’s notices of reliances dated November
20, 2006, November 1, 2001, and October 2, 2001; the
testimony deposition of Marc Zingler, applicant’s president
dated January 1, 2007; opposer’s notice of reliance dated
November 28, 1995; and the testimony deposition of Lee
Stranathan, opposer’s vice president of marketing dated
October 31, 1995. Opposer also filed an untimely notice of
reliance on June 13, 2007. On July 30, 2007, the board
denied “opposer’s request to reopen its testimony period for
the limited purpose of filing a notice of reliance.” Order
at 3. To the extent that the documents in the untimely
notice of reliance include papers from this proceeding, they
are already of record and we can consider them.
Both parties have filed briefs, and an oral hearing was
held on August 20, 2008.
Procedural Background
After this opposition was instituted on July 18, 1996,
the proceedings were suspended pending disposition of a
civil action. The proceeding involved a civil action that
was filed in the U.S. District for the Southern District of
Opposition No. 91095892
4
Texas. See Igloo Products Corp. v. Brantex, Inc., Civil
Action No. H-96-1620 (S.D. Tex. filed May 20, 1996).
On May 20, 1998, the District Court entered a final
judgment as a result of a unanimous jury verdict (slip op.
at 2-3, paragraph notations omitted) that provided in
pertinent part:
The words “KOOL PACK” as used by Kool Pak on or in
connection with its soft-sided portable coolers have
not acquired secondary meaning.

Kool Pak does not own, and is not entitled to register,
the word mark “KOOL PAK” on or in connection with its
soft-sided portable coolers…

Kool Pak shall amend its federal trademark application
Serial Number 74/467,785, by deleting any reference to
the use of the word mark “KOOL PAK” on soft-sided
portable coolers, if such a reference is made on the
application. If such a reference is not made on the
application, Kool Pak shall include the following
disclaimer:

“No claim is made on the exclusive right to use
the words ‘Kool Pak’ on soft-sided portable
coolers, apart from the mark as shown.”3

The District Court’s decision was affirmed by the Fifth
Circuit on February 11, 2000. Igloo Products Corp. v.
Brantex Inc., 202 F.3d 814, 53 USPQ2d 1753 (5th Cir. 2000).
On April 19, 1999, during the pendency of its appeal to
the Fifth Circuit, applicant filed the following disclaimer
with board:
No claim is made to the exclusive right to use the
words “Kool” and “Pak” on soft-sided portable coolers
apart from the mark shown in the drawing.

3 The Court also ordered a similar disclaimer in applicant’s
Registration No. 1841697.
Opposition No. 91095892
5
On March 1, 2000, the board rejected the disclaimer
because “it constitutes a disclaimer of applicant’s entire
mark and [is] inconsistent with applicant’s claim of
distinctiveness in the application file.” Order at 1. In
addition, “Applicant states that if it is successful on
appeal, it will request the disclaimer be deleted from this
application and any resulting registration.” Order at 1-2.
Therefore, the board deferred further action on the case.
Order at 1-2. The board adhered to its decision in an Order
dated November 29, 2000.
On February 22, 2001, applicant again submitted a
disclaimer. This time the disclaimer read:
No claim is made to the exclusive right to use the
words “Kool Pak” on soft-sided portable coolers, apart
from the mark as shown.

The board denied this request to enter the disclaimer
in an Order dated August 16, 2001. In that Order (p. 2),
applicant’s request to enter the disclaimer was denied
because “soft-sided coolers are not among the goods
identified in the application and to disclaim the words KOOL
PAK constitutes a disclaimer of the entire mark which is the
subject of this application and opposition and cannot be
entered.”
Opposer (Brief at 7) has now “withdrawn its opposition
to the registration of the term KOOL PAK in Classes 9 and
18.”
Opposition No. 91095892
6
Standing
Opposer is a competitor of applicant. Both are in the
same business. See Zingler Ex. 59 and Stranathan dep. at 8
(The term cool pack “describes a line of soft-sided products
that we sell”).
It is recognized that a party need not be a
manufacturer or seller of the goods in connection with
which a descriptive, misdescriptive, or merely
ornamental designation is used in order to object to
the registration thereof. It is sufficient that the
party objecting to such registration be engaged in the
manufacture and/or sale of the same or related goods
and that the product in question be one that could be
produced in the normal expansion of that person's
business. If the designation in question is found to
be merely descriptive, merely ornamental or the like,
damage is presumed since a registration thereof with
the statutory presumptions afforded the registration
would be inconsistent with the right of another person
to use these designations or designs in connection with
the same or similar goods as it would have the right to
do when and if it so chooses… Thus, opposer as a
competitor of applicant is a proper party to challenge
applicant's right of registration.

Federal Glass Co. v. Corning Glass Works, 162 USPQ 279, 282-
83 (TTAB 1969). See also McCarthy on Trademarks and Unfair
Competition (4th ed. August 2008) § 20:11 (“Standing is
presumed when the mark sought to be registered is allegedly
descriptive of the goods and the opposer is one who has a
sufficient interest in using the descriptive term in his
business”).
Therefore, we find that opposer has standing to oppose
the involved application.

Opposition No. 91095892
7
Issues
Opposer maintains (Brief at 2) that the issue in this
proceeding is:
Whether Applicant Kool Pak, Inc. is entitled to a
registration on the Principal Register of the mark KOOL
PAK in connection with the goods recited in Class 21
identified in U.S. trademark application serial number
74/467,785 on the basis of acquired distinctiveness.

Applicant agrees (Brief at 4):

The primary issue before the board is whether Kool
Pak’s mark, KOOL PAK, which has been in continuous and
substantially exclusive use in connection with
insulated bags and other products for nearly twenty-
four years, and has been extensively marketed and sold
nationwide, has acquired secondary meaning as of today,
thereby justifying registration of the mark shown in
Appln. Ser. No. 74/467,785 on the Principal Register.

We add that another issue is, inasmuch as the U.S.
District Court for the Southern District of Texas and the
Fifth Circuit have already addressed issues related to this
application, whether their determination should be
implemented by the board irrespective of the board’s
previous rulings.
Disclaimer
We will begin by revisiting the issue of whether
applicant’s requested disclaimer of the term KOOL PAK for
soft-sided portable coolers should be entered. We do this
inasmuch as the board originally suspended its proceedings
because a civil action was commenced between the parties and
one of the matters that the civil action determined was the
registrability of the application in this proceeding. To
Opposition No. 91095892
8
the extent that a civil action in a Federal district court
involves issues in common with those in a proceeding before
the Board, the decision of the Federal district court is
binding upon the Board, while the decision of the Board is
not binding upon the court. See American Bakeries Co. v.
Pan-O-Gold Baking Co., 650 F. Supp. 563, 2 USPQ2d 1208, 1210
(D. Minn. 1986):
[T]he proceedings and determinations of the PTO are of
limited importance in a federal court proceeding:

Generally, a court defers to the exercise of an
administrative agency’s primary jurisdiction to
have the benefit of the agency's expertise in the
assessment of disputed facts that are not open for
reconsideration by the court … But when
registration decisions are litigated in a district
court … the proceeding is virtually de novo, since
additional cross-examination and presentation of
additional testimony is permitted. The record
made in the PTO is admitted into evidence, but the
fact finding of that office is not conclusive, nor
is the court’s consideration limited to that
record.

Continental Connector Corp. v. Continental Specialties
Corp., 413 F. Supp. 1347 (Conn. 1976) (citations
omitted). See also Questor Corp. v. Wold Industries,
Inc., 194 USPQ 141 (D. Minn. 1976) (“The value of a
Patent Office determination of the right to register is
... not res judicata or binding on this Court.”); Sam
S. Goldstein Industries, Inc. v. Botany Industries,
Inc., 301 F. Supp. 728, 731 (S.D.N.Y. 1969) (“While it
may be commendable … to permit a specialized agency to
render its opinion in order to gain the benefit of that
administrative expertise, in a registered trademark
cancellation action the court must consider the issues,
in effect, de novo.”) The district court, on the other
hand, can conclusively determine the issues common to
the two proceedings. E.g. Sonora Cosmetics, Inc. v.
L'Oreal S.A., 631 F. Supp. 626 (S.D.N.Y. 1986) (Stay
denied because district court could conclusively
determine claims. “Moreover, … the Commissioner of
Patents has held that, inasmuch as TTAB determinations
Opposition No. 91095892
9
of the validity of registration are merely advisory to
the courts, it is preferable for the TTAB to stay its
own proceedings where parallel litigation occurs in the
district court.” Id. at 629 (citing The Other
Telephone Co. v. Connecticut National Telephone Co.,
181 USPQ 779, 782 (Comm'r. 1974)), aff'd, 795 F.2d 27
(2d Cir. 1986).

See also Goya Foods Inc. v. Tropicana Products Inc., 846
F.2d 848, 6 USPQ2d 1950 (2d Cir. 1988).
Also, it has long been held that “a lower court is
bound to respect the mandate of an appellate tribunal and
cannot reconsider questions which the mandate has laid at
rest.” FCC v. Pottsville Broadcasting Co., 309 U.S. 134,
140 (1940). Indeed, Trademark Act Section 37 (15 U.S.C.
§ 1119) provides that:
In any action involving a registered mark the court may
determine the right to registration, order the
cancellation of registrations, in whole or in part,
restore cancelled registrations, and otherwise rectify
the register with respect to the registrations of any
party to the action. Decrees and orders shall be
certified by the court to the Director, who shall make
appropriate entry upon the records of the Patent and
Trademark Office, and shall be controlled thereby.4

In this case, the interlocutory attorney has issued
several orders refusing to enter the disclaimer. “However,
at final hearing, the Board panel to which the case is
assigned for decision may review an interlocutory ruling and
reverse it, if appropriate.” TBMP § 518 (2d ed. rev. 2004).

4 Inasmuch as the board suspended action on this case pending the
disposition of the civil action and the case law recognizes the
binding nature of the Federal court’s order, the fact that the
order was not “certified by the court to the Director” does not
give us a license to ignore the order.
Opposition No. 91095892
10
See also Harley-Davidson Motor Company, Inc. v. Pierce Foods
Corp., 231 USPQ 857, 859 n.13 (TTAB 1986). Therefore, we
will reexamine the order denying applicant’s request to
enter a disclaimer of the term KOOL PAK as required by the
Court.
15 U.S.C. § 1056 provides:
(a) The Director may require the applicant to disclaim
an unregistrable component of a mark otherwise
registrable. An applicant may voluntarily disclaim a
component of a mark sought to be registered.

(b) No disclaimer, including those made under
subsection (e) of section 1057 of this title, shall
prejudice or affect the applicant’s or registrant’s
rights then existing or thereafter arising in the
disclaimed matter, or his right of registration on
another application if the disclaimed matter be or
shall have become distinctive of his goods or services.

In this case, the District Court determined that the
mark KOOL PACK for soft-sided portable coolers had not
acquired secondary meaning and that applicant was not
entitled to register the word mark KOOL PAK on or in
connection with its soft-sided portable coolers. As a
result of that determination, the District Court ordered
that applicant either delete any reference to the use of the
word mark KOOL PAK on soft-sided portable coolers in this
application or if there were no reference to soft-sided
portable coolers, it was to include the following
disclaimer:
No claim is made on the exclusive right to use the
words “Kool Pak” on soft-sided portable coolers, apart
from the mark as shown.
Opposition No. 91095892
11
Applicant has now done exactly what the District Court
has ordered. Since there is no reference to “soft-sided
portable coolers” in the application, it has submitted a
disclaimer in the format set out in the Court’s order.
While the board previously held that the submitted
disclaimer was a disclaimer of applicant’s entire mark and
inconsistent with applicant’s claim of distinctiveness in
the application file, it is clear that applicant is seeking
registration for its mark in three classes. Two of these
classes are apparently not affected by the disclaimer.
While the Court determined that applicant’s mark had not
acquired distinctiveness for soft-sided portable coolers5,
the application contains goods that are not soft-sided
portable coolers for which the application’s claim of
acquired distinctiveness is unaffected.
The District Court has required applicant to disclaim
an unregistrable component of its mark. 15 U.S.C. § 1056.
While the USPTO has policies on the disclaimers that have
been upheld by the Federal Circuit,6 the policies expressed
in the TMEP are “not binding on this Board, and it is

5 Applicant admits that it “is seeking registration of its marks
for goods that fall within the phrase used by the court, ‘soft
side portable coolers’ (e.g., ‘insulated carrying bags for
beverage container six-packs, beverage container eight-packs,
insulated lunch bags etc.’”) Response to Order To Show Cause
submitted May 9, 2000 at 1.
6 See Dena Corp. v. Belvedere International Inc., 950 F.2d 1555,
21 USPQ2d 1047, 1051 (Fed. Cir. 1991).
Opposition No. 91095892
12
certainly not binding upon a court.” Capital Speakers Inc.
v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d
1030, 1035 (TTAB 1996). See also West Florida Seafood, Inc.
v. Jet Restaurants, Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1664
n.8 (Fed. Cir. 1994). It is clear that since “a mark which
must be entirely disclaimed has no ‘otherwise registrable’
parts. Therefore, such marks do not qualify as composite
marks for which the Commissioner may require a disclaimer.”
Dena Corp., 21 USPQ2d at 1051. In this application, the
Office has not required a disclaimer of the term “Kool Pak.”
A pre-Lanham decision of the Court of Custom and Patent
Appeals held:
Since that decision the Patent Office and the courts
have recognized the right of registration in proper
cases where parts of a proposed mark have been
disclaimed, but we have not been cited to any case in
which the right of registration has been upheld by any
court where the issue involved a mark disclaimed in its
entirety. In the absence of any persuasive authority
to the contrary, we feel constrained to uphold the view
of the commissioner in this case.

In re Midy Laboratories, Inc., 104 F.2d 617, 42 USPQ 17, 18
(CCPA 1939). While this policy was incorporated into the
Lanham Act,7 there were some limitations to this policy,
such as Ex parte Pillsbury Flour Mills Co., 23 USPQ 168
(Comm'r Pat. 1934) (Applicant for the mark MINITMIX where
the Commissioner held that: “A descriptive term is any one
that would normally and naturally be employed by a

7 Dena Corp., 21 USPQ2d at 1049.
Opposition No. 91095892
13
manufacturer in describing the particular goods upon which
the mark is used. Would ‘MINITMIX’ be so employed? I do
not believe so, particularly, if the applicant is required
to disclaim the word ‘MINIT’ apart from the word ‘MIX’ and
the word “MIX” apart from the word ‘MINIT,’ and I require
the applicant to do so”).
In this case, we have an unusual situation. The board
had suspended the opposition proceeding because of a civil
action between the parties. The court, after a jury
verdict, did address the issues that were before the board
and ordered applicant to submit a disclaimer of the term
“Kool Pak,” if there was no reference to soft-sided portable
coolers in its application. The district court’s decision
was affirmed by the Fifth Circuit. There is no indication
that opposer requested that the district court order be
modified. Eventually, applicant submitted the disclaimer in
the form that the District Court required.
Under the unique facts here, we reconsider the
submission of the disclaimer. It is clear that this type of
disclaimer would not be required by the Director or
appropriate under most circumstances in other inter partes
or ex parte cases. However, the statutory requirements for
a disclaimer are not so absolute that it would prohibit us
from accepting the court-ordered disclaimer here. The
parties have litigated an issue, which had been pending
Opposition No. 91095892
14
before the board, to a conclusion in Federal court. The
board, if possible, should not permit parties to re-litigate
issues that have been conclusively decided by the courts.
As a result, we defer to the authority of the Federal courts
to rectify the register and we accept the applicant’s
disclaimer. Therefore, applicant’s disclaimer that “No
claim is made to the exclusive right to use the words ‘Kool
Pak’ on soft-sided portable coolers, apart from the mark as
shown” will be entered into the record of the application.8

Acquired Distinctiveness
We next address the issue of whether applicant’s mark
KOOL PAK has acquired distinctiveness. Inasmuch as
applicant has sought registration under the provision of
Section 2(f), there is no issue that the mark is merely
descriptive. See Yamaha Int’l Corp. v. Hoshino Gakki Co.,
840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (“Where,
as here, an applicant seeks a registration based on acquired
distinctiveness under Section 2(f), the statute accepts a
lack of inherent distinctiveness as an established fact”).

8 We note that the USPTO has accepted a similarly-worded
disclaimer for soft-sided portable coolers, which were not listed
in applicant’s registration (No. 1841697). The goods in Class 21
were listed as “insulated carrying bags for beverage container
six-packs, beverage container eight-packs, beverage container
twelve-packs and for use as lunch bags; insulated carrying bags
for single bottles; and soft insulated holding sleeves for
beverage cans, beverage bottles, and wine and champagne bottles.”
Opposition No. 91095892
15
An opposer challenging a mark on the ground that a mark has
not acquired distinctiveness has the “initial burden of
challenging or rebutting the applicant's evidence of
distinctiveness made of record during prosecution which led
to publication of the proposed mark.” Yamaha, 6 USPQ2d at
1004. In this case, opposer has met its burden, at a
minimum, by showing that the district court has determined
that the mark in this application had not acquired
distinctiveness. However, “applicant has the ultimate
burden of showing acquired distinctiveness regardless of
whether the lack of inherent distinctiveness or the
applicability of Section 2(e) was shown by the opposer
during the opposition or conceded by the applicant prior to
the opposition.” Id. at 1008.
We add that the burden increases as the descriptiveness
of the mark increases. Yamaha at 1008 (Federal Circuit has
commented that “logically that standard becomes more
difficult to meet as the mark's descriptiveness increases”).
We also note that the jury specifically found that the
“words “KOOL PACK” as used by Kool Pak on or in connection
with its soft-sided portable coolers have not acquired
secondary meaning.” Furthermore, we have already indicated
that applicant’s disclaimer of the term KOOL PACK is
acceptable. Section 6(b) of the Trademark Act specifically
provides that “No disclaimer … shall prejudice or affect the
Opposition No. 91095892
16
applicant’s … rights then existing or thereafter arising in
the disclaimed matter, or his right of registration on
another application if the disclaimed matter be or shall
have become distinctive of his goods or services” (emphasis
added). “It is clear that a disclaimer does not preclude
registrant, as a matter of law, from later demonstrating in
another application, for example, rights in the disclaimed
matter if it can show that the disclaimed words have, with
time and use, become distinctive of such goods or services.”
In re DNI Holdings Ltd., 77 USPQ2d 1435, 1442 (TTAB 2005)
(emphasis added).
Applicant argues that its “attempts to comply with the
District Court’s 1998 disclaimer order do not preclude a
finding of acquired distinctiveness.” Brief at 16. We
agree that applicant is not precluded from subsequently
showing that its mark has acquired distinctiveness, however,
applicant has not filed another application. Its
application, filed December 9, 1993, remains before the
board. As we previously discussed, we have accepted
applicant’s disclaimer of the term KOOL PAK that was
submitted as a result of the district court order.
Applicant is free to submit another application to assert
that its mark has acquired distinctiveness. It may not
provide the court-ordered disclaimer and argue, in this
application, that the disclaimed matter has acquired
Opposition No. 91095892
17
distinctiveness. Therefore, the issue of whether
applicant’s mark has acquired distinctiveness for the goods
in Class 21 is moot.
Decision: Inasmuch as opposer is no longer opposing
the goods in Class 9 and 18 and acceptance of the disclaimer
has mooted the issue of acquired distinctiveness in Class
21, the opposition is dismissed as moot.