Historically trademark rights are acquired by using the mark in commerce to sell goods or services prior to such use by a competing user. The use must be more than minimal or token. A recent case from Florida demonstrates that basic rule and serves as a reminder of basic trademark principles. At the time of decision, neither side had yet successfully registered their competing marks so neither had the benefit of federal registration.
A supplier of car wash equipment sent its customers a zany Christmas card featuring a foam generator as a cartoon character wearing a Santa cap. It said “Christmas Wishes from Mr. Foamer.” The card mentioned no specific product or service, but apparently also had a coupon within it, which was not introduced in evidence. The character was not used again for some time if at all.
A competitor formed Mr. Foamer, Inc. to market foamers. Relying solely on its Christmas card to establish its trademark, the supplier sought a preliminary injunction against the competitor. They lost, but a little early trademark advice might have helped the case.
The Eleventh Circuit found the supplier “used the mark a single time, in a Christmas card that purportedly contained a coupon; this coupon and its terms have not been entered into evidence. Thus we do not know how the coupon acted in placing Mr. Foamer in commerce.” It added that the “card did not infer that [the supplier] 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.” Finding this use insufficient to enjoin the competitor from using Mr. Foamer, the Eleventh Circuit affirmed the District Court holding that the use was too limited: “it was a de minimis use of the mark.“
Lessons to be learned include:
- associate the new mark as designating the source or sponsor of a specific product or service, such as using Mr. Foamer on the packaging for the foamer to indicate the source of the product;
- preserve the evidence of first use in commerce, such as a coupon that might tie the use on the card to some specific product or service;
- do not rest on limited use, but instead use the mark continuously in commerce while accumulating that evidence in written form.
Since the appeal only affirmed the denial of the preliminary injunction, the case will be returned to the District Court for further proceedings. New Wave Innovations, Inc. v. McClimond, No. 14-11466 (11th Cir. Jan. 21, 2015).
The parties continue to pursue competing registrations for Mr. Foamer in the U.S. Trademark Office.