Eleventh Circuit Finds No “Use” of a Mark on Christmas Card, Affirms Denial of Preliminary Injunction

Most trademark practitioners will not be surprised by the Eleventh Circuit’s decision in New Wave Innovations, Inc. v. McClimond,  No. 14-11466 (11th Cir. Jan. 21, 2015), which affirmed the denial of a preliminary injunction after finding that plaintiff made only de minimis use of its mark.

In the dispute, plaintiff New Wave claimed it used the Mr. Foamer mark before the defendants based on a single,  coupon-enclosed Christmas card sent in 2011 that depicted a cartoon foam-generator with the caption: “Christmas Wishes from Mr. Foamer.” After the defendants incorporated Mr. Foamer, Inc. in 2012 and began using the mark for car washing services and goods, New Wave brought suit alleging trademark infringement and unfair competition.

 In an unpublished decision, the Eleventh Circuit held that New Wave’s use of the mark constituted nothing more than de minimis use. “The card did not infer that New Wave had a new name or was marketing a product with the name Mr. Foamer; it was a cartoon of one of its products in a Santa hat with a greeting attached,” the court wrote in its opinion. Because New Wave did not establish trademark ownership rights, and did not demonstrate a substantial likelihood of success on the merits, the court affirmed the district court’s decision to deny New Wave’s motion for preliminary injunction.

The TTAB will now be tasked with deciding whether New Wave’s application for the Mr. Foamer mark─filed in June 2014─or Mr. Foamer, Inc.’s application filed in November 2013 receives registration. In light of the Eleventh Circuit’s decision, New Wave faces an uphill battle.