Vericool World v. Igloo Products — Ninth Circuit Holds ‘First to Market’ Claims Not Actionable Under Lanham Act

Background

Vericool World, LLC manufactures biodegradable coolers made from molded plant pulp. Its predecessor, Vericool Inc., began developing these “green” alternatives to Styrofoam coolers in 2016 and released the first fully biodegradable cooler — the “Vericool III” — in 2017. Vericool later introduced the “Ohana” cooler for the consumer market in 2018.

In 2019, Igloo Products Corp. launched its competing biodegradable cooler, the “Recool,” marketing it as “the world’s first eco sensitive cooler, made from 100% biodegradable materials.” The Recool was sold through major retailers including REI, Target, and Walmart. Vericool objected, arguing that it had been first to market with a biodegradable cooler and that Igloo’s advertising was false.

Unable to resolve the dispute, Vericool sued under the Lanham Act’s false advertising provision, 15 U.S.C. § 1125(a)(1)(B), and California’s unfair competition statute. Vericool argued that Igloo’s “first to market” claims stripped Vericool of “the cachet that comes from producing a pioneering product,” depriving it of media attention and marketing advantages. The district court granted summary judgment for Igloo, and Vericool appealed.

The Court’s Holding

The Ninth Circuit affirmed. Writing for the majority, Judge Nelson framed the central question: whether claiming to be “first to market” with a product constitutes a misrepresentation of the product’s “nature, characteristics, qualities, or geographic origin” under § 1125(a)(1)(B).

Applying the Supreme Court’s framework from Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), the court held that a “characteristic” under the Lanham Act must be an “observable aspect” of the tangible product — not “the ideas or communications that ‘goods’ embody or contain.” Whether a cooler was the first biodegradable cooler on the market is not an observable characteristic of the cooler itself; it is a claim about the priority of the idea behind it. Because Vericool’s claim concerned the origin of an idea embodied in its coolers rather than the product’s physical attributes, the court concluded it was not cognizable under the Lanham Act.

The court also noted that Vericool had standing to sue as an assignee of Vericool Inc.’s claims, despite being a successor entity. However, it found that Vericool waived its alternative argument — that Igloo’s advertising caused confusion about whether Vericool’s coolers were actually biodegradable — because it was raised for the first time on appeal.

Judge Bumatay dissented, arguing that “nature, characteristics, or qualities” includes intangible and non-observable attributes. In the dissent’s view, claiming to have made “the first” biodegradable cooler is a statement about the product’s “qualities” and is therefore actionable if false. Because Vericool adequately alleged a material misrepresentation, Judge Bumatay would have remanded for further proceedings.

Key Takeaways

• Dastar’s reach extends to “first to market” claims. The Ninth Circuit has now applied Dastar‘s limitation beyond intellectual-origin cases into the broader area of market-priority claims. Saying “we made it first” is a claim about ideas, not about observable product attributes.
• Lanham Act false advertising is limited to tangible product characteristics. For a § 1125(a)(1)(B) claim to succeed, the alleged misrepresentation must concern an observable feature of the physical product — its composition, performance, safety, or similar tangible trait.
• Appellate waiver matters. Vericool’s potentially stronger argument — that Igloo’s ads caused confusion about whether Vericool’s coolers were biodegradable (a true product characteristic) — was waived because it was first raised on appeal.
• The dissent signals a live circuit split risk. Judge Bumatay’s dissent stakes out a broader reading of “characteristics” that other circuits may follow, potentially teeing up further review.

Why It Matters

This decision narrows the scope of false advertising claims available to companies that believe a competitor is falsely claiming to be first to market. Under this ruling, “we made it first” advertising — even if factually wrong — cannot be challenged under the Lanham Act unless it also causes confusion about an observable, physical characteristic of the product itself. Companies relying on their pioneer status as a marketing advantage will need to look beyond the Lanham Act for legal recourse, potentially turning to state unfair competition statutes or common-law fraud.

The case also matters for the growing “green” products space, where being the first sustainable alternative carries significant marketing value. Manufacturers of eco-friendly products should carefully frame their legal claims around product characteristics (biodegradability, materials, performance) rather than market priority if they want Lanham Act protection.