Austin Padgett and Rusty Close delve back into the ongoing legal battle known as the "Cooler Wars" between YETI and RTIC.
In this episode, Austin Padgett and Rusty Close delve back into the ongoing legal battle known as the "Cooler Wars" between YETI and RTIC. In Part 2, they discuss the various intellectual property strategies YETI employed to protect its products, including patents, trademarks, and trade dress. The conversation highlights the challenges of enforcing IP rights in the consumer products market, particularly when dealing with products that have been around for decades. They emphasize the importance of a comprehensive and strategic approach to IP protection to fend off competitors.
No Infringement Intended, hosted by Rusty Close and Austin Padgett, is your go-to podcast for exploring the fascinating intersection of intellectual property and pop culture.
No Infringement Intended Podcast — What Were the Cooler Wars? (Part 2)
Host: Austin Padgett and Rusty Close
Recorded: January 21, 2025
Aired: April 15, 2025
Austin Padgett:
Come one, come all. Welcome to No Infringement Intended, the intellectual property podcast of our law firm, Troutman Pepper Locke, with your host, Rusty Close and me, Austin Padgett, a podcast where the bad boys of intellectual property dissect the rules that are worth breaking. We can keep this in, but I'll keep working on that line. I do like the Bad Boys aspect of it, but it needs a little work.
Well, while you're settling in for this episode, please make sure that you're subscribed and what a great time to light up those five stars for your friends over on this side of the mic. Thanks for tuning in. We appreciate each and every one of you for taking the time to listen. Share and engage with us. Your support means the world. Without you, this whole thing would be a very awkward process and exercise. Thanks to those who have written to us with questions. Also, we're working on some future episodes to get those items out. In candor, we need some summer interns to show up, so we can get some free research out of them. I think that's all for housekeeping. Rusty, what do we got on the docket today?
Rusty Close:
We're getting into part two of the Cooler Wars. Everybody I know has been on pins and needles, waiting to see what happened in this battle between YETI and RTIC. Before we get into it though, our bad boy reputation really did come into play, because you might remember in the previous episode, there was some talk about 1994 spring break and some possible underage drinking of Ice Beer, which led to another call to the principal's office for the bad boys. Even though the statute of limitations on such things has long, long since run, let's just say, we got to make clear that there may have been people drinking Ice Beer in 1994 and spring break, but it wasn't necessarily either of your hosts.
Austin Padgett:
Right. Yeah. The Internet lives forever for sure. Man, I know that you're keeping close tabs on us upstairs. Also, Rusty, I know you have a loose change style documentary about all the events of 1994, including the Razorback’s big win at the tourney. But we'll save that for our non-firm branded podcast.
Rusty Close:
Yeah, that's right. That's going to be our own content, the bad boys when we branch off. Just to reset for everyone where we were in the cooler wars. We've got YETI on the one hand, they put together this tremendously successful lifestyle brand, a variety of products, but mainly, coolers and drinkware are the two things they're most known for. You can think to yourself, you imagine these big, rectangular, bulky coolers, take them deep sea fishing, take them to the pool, you're going to keep things cold for a long period of time. Then you can imagine the line of drinkware. These large tumblers, these insulated can sleeves, sort of a koozie, but quite a bit more robust. Those are the two lines of products that they've got.
Then RTIC comes along and says, “Cool, we can make these products. We can sell these products and we're going to market them as just like YETI's, but half the price.” If you're YETI, you're thinking, “Wait a minute. How is this possible that this company comes along, they're ripping off our products. They're saying they're just like our products, but they're cheaper. What can we do here to protect ourselves?”
As you might imagine, it led to some legal disputes. We speculated about how this came to be. As I think about this case, I just think about the frustration that the leadership at YETI must have had. We talked about how they took advantage of the patent system, the best they could. But it's not a perfect system when you're selling a consumer product, like a cooler. Coolers have been around for many, many years. Based on my very admittedly brief research, the first portable ice chests were sold in the 1950s. The first plastic cooler was sold in 1957. I found what I think was the first patent for a portable cooler ice chest, which was issued in December of 1953. If you look at the drawings in that patent, not a lot's changed, all right. Not a lot has changed since 1953. You think, okay –
Austin Padgett:
1953 is the first cooler as we know it?
Rusty Close:
It's the first portable –
Austin Padgett:
Portable cooler. Okay.
Rusty Close:
Yeah. Carry it around with you. I think that was the key in the patents it had. Again, it had the flip top, is rectangular. It looks just like what you would expect to see.
Austin Padgett:
Yeah. I remember reading old comic books where people would buy huge chunks of ice. And so, we were like the ice guy for the neighborhood, or whatever, the milk man. Like, this is not a part of our lifetime, but it really sticks out when you read the old comics. Total aside but keep going.
Rusty Close:
How quickly things change, right?
Austin Padgett:
Right. That's right.
Rusty Close:
They did have patents, but like we talked about, these were not patents to just generally cover an idea of a YETI cooler. What they really covered was that inverted T-shaped latch design. It gives them some coverage, but it's not enough coverage to say, “We've cornered this market. Nobody else can get into it.” What other ways did they go about trying to protect themselves? Which other ways did this cooler war play out? I mentioned above that they also had drinkware, and we didn't really get into the drinkware in the last episode. But if you've been to a neighborhood pool, like I have, and you've had to sit at the nerd end of the pool, like I have, because you don't have the right cooler, you don't have the big YETI, you probably also don't have all the nice YETI cups, tumblers, koozies, the whole bit. I'm sure your pantry is probably stocked full.
Austin Padgett:
You would think that. I would tell you that there was an instance, early in life where I thought I would create a cool club of guys who wore Bugle Boy clothing and that we would be better than everybody else. Then I realized it wasn't the luxury brand that I thought it was.
Rusty Close:
Can you put a time stamp on when you were having these thoughts?
Austin Padgett:
More recently than it should be. I mean, what, second grade, third grade, somewhere around there. We're talking 80s here. But I've never fit in like that. I'm more of the, “oh, I can get it for half price. Let's go,” type a guy. That's me.
Rusty Close:
I'm right there with you. If I can get the same quality, the same look for half the price, I'm going with the RTIC. You know what I mean?
Austin Padgett:
Right.
Rusty Close:
I think you can picture these tumblers, these cups, they have this tapered design, they have these plastic insertable lids that have this rubber gasket on them. They've got this magnetic slider that opens and closes the drinking spout on the cup. RTIC comes along and they say, “Well, we'll make these too. We make the coolers. We're going to make all the drinkware as well.”
You're YETI and you're trying to think, “Well, how do I protect these cups? Can you patent a cup?” You could patent aspects of a cup, but at least at the time of the cooler wars, when they kicked off, they had not done this. We haven't gotten into design patents, which is another aspect of IP protection. We're not going to get deep into the weeds in this episode either, but they did have, at least at the time, the cooler wars kicked off a single design patent. It covered a single design of one of those can sleeve, I call them koozies, but these really are more than koozies. If you've ever had one of these, it's got almost a screw top lid that you take off, drop the can in, and then you screw the lid back on. Keeps the can cold, keeps the can in place, brings you lots of friends, because of how cool you are.
The thing with the design patent, staying high level here, it only covers more or less explicitly what's shown in the drawing in the design patent. If you've got a variety of sizes and shapes of these products, you'd need a design patent for each and every one of them. It doesn't mean that you can't do that, but it also becomes a little bit financially questionable as to whether that's a good investment of your resources. You start thinking, well, okay, maybe this isn't the best way to protect ourselves either, until you get into the cooler wars and you start going, “I really wish we would have protected each and every one of these designs.” But that's not what they had done at the time.
Okay, we don't have patents to protect us. Our trademark is not helping us in this situation. Our copyrights aren't really protecting us in this situation. You start thinking, okay, how else can we go about protecting ourselves? What other tools are available to us? If you think about this drinkware line, it certainly has a vibe. You can imagine what it looks like. You can picture it in your head. You know what all these cups and bottles and koozies look like when you line them up next to each other and think about the whole thing.
Okay, you're YETI and you're thinking, the designs have become well-known indicators of their origin and quality. They have distinctive and non-functional features that identify their origin to consumers. We haven't trademarked this term, but all of them are part of our rambler line of drinkware. Boom, what pops into your head? What's the type of protection that might be available to you?
Austin Padgett:
Yeah. I think where we're going in this episode is trade dress, I imagine.
Rusty Close:
When they file their lawsuits, one of the claims is for infringement of trade dress.
Austin Padgett:
Mm. Yeah, you just tick through all of the considerations of what makes a good trade dress lawsuit for sure.
Rusty Close:
Can you give us some 101 on trade dress law and what it means?
Austin Padgett:
Yeah, it's whatever you want it to mean. That's a joke. A trade dress is about the visual appearance of the product, or its packaging. The important part is that this has to come to signify, or that it signifies the source of the product to the consumer. You’re usually talking about something, like the design, the shape, colors, texture, the overall look and feel of the product or packaging. Trade dress is best thought of as a subset of trademark law. When I say best thought of, that is how it is thought of.
What I mean by that is that you have to remember that trademark law, we've touched on this in a couple of episodes now, is that trademark law is about consumer protection, at the consumer protection idea that we're going to prevent consumer confusion here. That is the epicenter of trademark law. If you keep that in mind, you usually don't go too far astray when thinking through these cases. Trade dress law is that little subset that's taking those concepts of trademark law, applying it to the look and feel of a product, or its packaging. It's still rooted in what we call common law, which for the uninitiated, common law is this state level protection that's much older than anyone you've ever known in your lifetime.
On the trademark side, it goes back to medieval England. There's this case from 1618 called Southern v. How, that's about a brand being on clothing. Then you continue to develop these concepts over time, and that just becomes the law. You don't necessarily have to write it down. It's these case decisions that start forming this network of ideas and thoughts. They're usually collected somewhere, but not necessarily in a code or a statute that's put forth by a legislative body. It's court cases, or it's some major thinker in the area has collected everything and put it forth as this is the rules around this type of thing.
Later on, of course, it gets codified into state law and then federal law, which particularly called the Lanham Act of 1946, which is also getting close to older than anyone, some of our listeners will know.
Rusty Close:
Okay. Do you as a source of goods, or products, what do you do? Where do you go to register your trade dress rights?
Austin Padgett:
Yeah. You've already gone through the network of things that didn't work in this case. We didn't have design patents. We didn't have copyright. Those are two things you can think of around, of course, utility patents for the non-design utilitarian aspects of the product. Where you're going to register is the trademark office, or different trademark offices, depending if you're just in the US, or abroad, wherever you might be. You're going to face the items that you ticked over, you're going to be thinking about, and the examiners are going to ask you these questions as well, okay. How is this distinctive? How is this non-functional? They'll also check and see if there is a likelihood of confusion against other registered marks.
Rusty Close:
Is there, because my sense here, looking over these lawsuits, is that this is something that YETI kind of reverse engineered and said, “We meet all of these criteria. Therefore, we have these rights.” Is it possible that you have these rights without having registered these?
Austin Padgett:
Yeah, absolutely. You don't have to have a registration on any trademark right. The registration gives you a lot of advantages, and particularly in this space, because it creates some legal presumptions. They're rebuttable, but they're presumptions in your favor, because you've got a piece of paper from the federal government, if it's from the US trademark office, that you can wave and say, “Look, the government recognizes that I have these rights,” in your face. What you're going to do about it? Now, you need to knock off what you're doing, because it's too close to mine. It's likely to cause consumer confusion. But you can certainly assert rights without a registration.
In fact, this is a good time to talk about the tactics of trade dress is that sometimes your trade dress can be so amorphous, or even changing from case to case, or letter to letter that you might write. That all of a sudden, doesn't look like you have really anything at all. You're just comparing to products and you're claiming, “Oh, well, that looks like mine in this similar way, or in this similar way.” Usually, when I'm dealing with clients that have trade dress issues, we're usually trying to figure out, okay, what is it that we're trying to protect here? What are these different elements that we can combine and at least think through, okay, well, maybe that one thing by itself is so common that there's no way we can get a piece of protection on it by itself. But if we combine it in the whole, the way it looks in the whole, or however, whatever trade dress is in front of us, maybe we can claim something on that, the combination, those sorts of things.
It starts to look more like a patent type of analysis. But that's really the important part in trade dress. If you want to have a really effective campaign or something that's not easily upended by someone who's actually going to take you to task is to have some definition around what it is, so that when people come and ask, what is it you're trying to protect? You've got your answer, this, this and this, and you do at least two of these three things, that sort of analysis.
Rusty Close:
When you say that, the definition, do you mean in some registration, or some maybe internal document where we have written down on paper, this is what we consider to be our trade dress?
Austin Padgett:
For sure in a registration, because the trademark office is going to require – that's the essence of the registration is that you have to tell them what you're seeking to protect. You're going to have to describe those elements that you're seeking to protect, and probably disclaim the items that you're not seeking to protect. We had a case, this was several years ago where we were protecting some candy, that packaging. You can't claim up the shape of a box, but we had other elements that were on the box that we were claiming. When you look at the actual registration that was issued, you'll see the box is in dotted line and it says, “Oh, we're disclaiming that anyone can put candy in a box. We understand that. What we're trying to protect here, examiner, is that these distinctive elements that are in the box. But we have to use that box to show the context of where all this sits.” That's what's happening in the registration process.
What would be great for a client is if they have an internal document where they've thought through that as well, but where it really comes to bear is on a cease-and-desist letter, or something. Some enforcement action, maybe it's litigation, where you walk up and you say, “We have trade dress on X, Y and Z.” Then you write your next letter, and you say, “We have trade dress on ABC.” You just completely change it. All of a sudden, that starts to look suspicious. You need to have a unified concept of what this trade dress is, or maybe you have some concept as to why it's different in different contexts. Maybe you have multiple trade dresses. You could come up with some theory to justify how you're enforcing it.
Your letters are going to come out. If you ever get to litigation, your letters are going to come out in discovery, because you've sought to protect it in other instances and they're going to say, “Okay, what do you claim there and what happened?” Those sorts of things. We don't want it as they hoist you in your own petards. All of a sudden, they say, “You don't even really have a trade dress at all, because you keep changing it from scenario to scenario.”
Rusty Close:
Yeah, that sounds like the risk of best case, you get a registration for your trade dress, but you've also locked yourself in as to what your trade dress is. Is it a situation where you get a registration, you have a competitor and they have to also be doing A, B and C, because that's what's in your registration? Or can you say, “Well, you're not doing it exactly the same, but it is pretty close here.”
Austin Padgett:
Yeah. It's that likelihood of confusion stand up. When I jokingly said, it's anything you wanted to be, that's the essence of the joke is that there's a lot of room and gray area in the analysis, because it's multi-factored and it's looking at similarities. At a high level, as you know, you can find a similarity virtually between anything. Where the forest and the trees are delineated is where the case law matters and where you try to figure out, okay, what similarities matter here and how close do they have to be? That's going to really depend on the context of your case, like the marketplace, you're probably going to have all sorts of information from experts and perhaps, some surveys and stuff like that. These are factually intensive cases that are not easy on either side of them.
One, because the plaintiff can come in and make their claim. At some level, there's some level of similarities, so the case likely goes on. On the other side, you're looking at it and you're saying, “Yeah, but we have all these differences.” It's relatively rare that something is so dead on that there's nothing you can argue that's different in some meaningful way. A lot of times, it's coming down to discovery of okay, did they send this off to get prototyped? There's an email telling a vendor, “Hey, take a look at this cooler and let's make it look just like that.” Have no idea if that happened in this case, but we have had cases where that was at issue on both side, plaintiff and defendant, where there was some discussion about the products at issue and you're like, “Oh, man. This does not look good.” Because now you're talking about intent.
While the key question is, is there consumer confusion that's likely the party's intent can make a huge jump towards finding that, or not finding, because, oh, if you intended to look the same, then you're intending to cause confusion. It's the philosophical jump that goes with it. Not necessarily that it's true, but it's not a good look.
Rusty Close:
We've said several times that we were not involved in this case and we're only looking at it many years after the fact and making some assumptions. But looking at the products as they existed at the time, it's hard to imagine. There wouldn't have been some of those types of emails and some of those types of discussions with suppliers in terms of, yeah, just look at this and make it like that. Check the dimensions on this and make it like that. Because, at least to an untrained eye and without using sophisticated measuring equipment, these products look to be pretty identical.
Austin Padgett:
Yeah. As you know, there's totally legitimate reasons to look at a competitor's product and even to mimic it, right? Dimensions. Let's say, “Oh, we need it to be the same dimensions, because now there are all these aftermarket products where you can attach the cooler to your hitch on the back of your truck. We need the same dimensions so we can fit into that hitch. Dimensions are dimensions. We don't see that they have any protection over that type of thing. Let's use the dimensions.” It could be a totally valid reason, but it's going to raise a lot of questions in litigation. When you sit down for your depositions, you're going to spend a good 30 minutes, or an hour trying to backtrack and explain your way around those emails.
Rusty Close:
They don't look great in retrospect.
Austin Padgett:
That's right.
Rusty Close:
I'm going to read you a couple of things from the court filings that I think go along with what you've been talking about. YETI highlighted these different things. The visual flow, the curves, tapers, and lines, the visual connection and relationship between the curves, tapers, and lines, the style, design, and appearance of design aspects. These are all of those amorphous things, like you mentioned, that are hard to pin down and put a finger on. It's the classic, you know it when you see it kind of deal.
Austin Padgett:
Yeah, that's what they're going with and they're consistent about it and they can show – Let's get to this, because how do you show that you have this type of stuff? Well, I can tell you the first thing you don't do is you don't have a utility patent claiming these things, because that's the – it has to be non-functional. Once you're claiming functionality, you get some real problems. You go through and you're saying, how do I show this, because that's a factual question of, do I have some level of distinction here where I can claim rights to this stuff that I've listed?
A lot of times, it's what you say about your own product is the key component. Let's shorthand refer to as look for advertising. If you and I, and my daughter's really into crafting, and so we buy stamps at different crafting stores, or something, and they all look the same. I'm sure they're from different providers or whatever, but they're all a brown block and they have the design on the top and the stamps on the bottom. Old wood stamps. Well, what if you and I put a battery into those and put a red light on them? Not really functional towards the use of the stamp, but having a light on it, I don't know what level of distinction would that give us, but what we would do is we'd say, look for the red light. Go to your local store and look for the red light. They're blinking all over the place, drawing your attention.
Maybe they'd say, oh, it's functional, because it's drawing consumer attention. Maybe we can battle that by saying, it's nothing to do – that’s marketing attention. That's not the functionality of the product itself. The actual thing that's going on here is that we want you to look for this red light and come find us. I think we'd have a good case, because we'd be measured by what we're saying about our product, that we have all this advertising that's like, look for the red light. It's all about the red light. The stamp is the stamp. We have cool designs, or whatever, but we have hundreds of those and we can't market each design. Maybe we have some family of designs that we market, but the red light, that's the consistent branding feature across our products.
Something like that of look for advertising, or what you're saying about your product to try to draw some level of attention and distinction in the marketplace around this trade dress that you're claiming. You could also look at, in litigation, you get into surveys. We've done pre-market, or pre-litigation surveys, or just standard marketing surveys with clients where they need some answers to some questions. We're trying to think through, okay, how do we build our best protection? They're saying, well, we're already going to go do this marketing research and they'll involve a survey and then like, “Oh, can we tag on some questions to that?” And so, that we're getting the best bang for the buck out of it, so that if we ever have to enforce this, we're going to have all the survey evidence about what people think and what they recognize about our products, consumer testimonials. What's the buzz online about – have you seen those red-light stamps? Maybe that's what people are saying, that type of thing. Sales and advertising figures. Media coverage is a big one, too, particularly if it's unsolicited.
At some point here, though, you cross a threshold, where you have this thing that's not necessarily an inherently distinctive feature and it starts to carry some distinction in the marketplace, and then you've got trade dress.
Rusty Close:
It just magically appears one day.
Austin Padgett:
Absolutely.
Rusty Close:
I want to find the YETI ad that says, look for the cups with the visual connection between the curves, tapers and lines.
Austin Padgett:
Yeah, it only works in certain instances of that type of thing. Maybe if they had something like, you know it when you see it. Maybe it could be vague. I don't know how that would carry with a jury, or a judge. At least go to show, hey, our visual appearance, it's not just our name that’s stamped on the product. It is what it is. It insists upon itself, so to speak.
Rusty Close:
Yeah. I mean, it makes total sense. You mentioned the judge and the jury and unfortunately, we'll never know how that would have played out here, because if you'll allow me this cooler heads prevailed and the parties had settled the case.
Austin Padgett:
Oh, I like that. That's good.
Rusty Close:
Yeah. Thank you. I've been working on that one for a while.
Austin Padgett:
Classic.
Rusty Close:
Yeah. What you know about the parties and what about the products, would you be able to handicap a guess? Do you have a sense one way or the other, whether YETI could have prevailed?
Austin Padgett:
Yeah. Looking at it and the documents, at least we know about from the public filings, the case would have continued on, it seems. Now, you've got this costly litigation. My guess, is that there's going to be something in discovery that creates some real hair on this for the defendant, whether it's a bad email, or a third-party deposition where a vendor says, “Oh, yeah. They actually sent me one of your products.” I have no idea, again, if that's true or not. But it's not unusual in these cases.
We're developing things. We're taking a look at the market and we're trying to figure out, okay, how can we get the success of these types of products? Even if we're trying to design around them, we've got to take a look at their stuff, so we have it in front of us. It's a tough needle to thread. There's enough gray area in the trade dress and trademark law where cases can keep going on. They're not subject to early dismissal, or ripe for a summary judgment in the middle of the case. You're really looking at teeing things up for a trial. That's a really costly endeavor. My guess is that there would be at least something that YETI would have a strong chance to hang its hat on at that level. Of course, we're all guessing and these cases go a lot of different ways. I hate to give the listener some wishy-washy answer, but it really is. It’s a wishy-washy area of law.
Rusty Close:
We're lawyers. Maybe that's what it's all about.
Austin Padgett:
Exactly. It's what do you want the answer to be?
Rusty Close:
Exactly. Well, we try to frame these episodes around a question and it relates to the cooler wars. I think the question was something along the lines of, if you're a products brand and you're selling consumer products that have been around for more than half a century, how can you use IP as part of your strategy to hold off your competitors? I think what we've determined over the course of two episodes is none of it's perfect. None of it's a silver bullet. What you want to do is take advantage of all of it in the way that you can. You can use patents, whether it's utility in the latches, design, in the shape and look and feel of the koozies, whether it's trademarks in your name, whether it's copyrights.
Here, I think possibly the most effective thing they had was trade dress, even though it wasn't registered as far as I know. I think that might be the thing that gave them the most leverage to push for a settlement, or conversely, convey to RTIC, “Look, we can draw this out. We got some stuff on our side that's going to look bad for you and push them towards a favorable sum.”
Austin Padgett:
Yeah. The last thing I'm thinking about is picking your mark really well. That's tough for some clients, because sometimes you have to abide some stuff that you just don't like, but it's not close enough to get you a slam dunk case, or close enough to really make a splash in the circulars in your industry, or anything like that. It really is. Make sure that you've got the best case on the worst defendant that sometimes that you can get. What you get with that is if you hit with that and then all of a sudden, one of your objectives is to get some press out of it, you can really stop some other stuff that's a little more questionable as to whether you can go after it. You have what they call the prophylactic effect that you can hedge on.
The key thing there is picking your targets well, because a lot of companies will just go after everything and then they want to be known as a bully, and those sorts of things. A lot of times, their day comes when they meet the wrong target and then it's all over, or a lot of it is over because the bully gets bullied and gets exposed. That's the last thing I can think about of just picking your target well and strategically thinking about, okay, what are we going to do with this dispute?
Rusty Close:
Yeah. I mean, here, I think the target presented itself quite obviously and boldly. But I think there was a decent amount to take away from this. It doesn't have to be that there's perfect IP protection that specifically fits what you're doing. It's a matter of being strategic and using what's available to you. I don't know. I think we answered it.
Austin Padgett:
Love it.
Rusty Close:
You want to take us out?
Austin Padgett:
Well, I will. Thanks again, everyone, for listening. If you'll smash that like and smash that subscribe, you can make sure you subscribe because we have some other episodes for you to listen to and enjoy and get caught up, particularly the first episode of this series. That's necessary listening, for sure, but all the others are great as well. Look forward to seeing you next time.
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