Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA653400
`ESTTA Tracking number:
`01/31/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91218363
`Defendant
`Mr. Foamer, Inc.
`ISABELLE JUNG
`CAREY RODRIGUEZ GREENBERG & O'KEEFE LLP
`7900 GLADES RD STE 520
`BOCA RATON, FL 33434-4105
`UNITED STATES
`pto@crgolaw.com;ijung@crgolaw.com
`Motion to Dismiss - Rule 12(b)
`Isabelle Jung
`ijung@crgolaw.com
`/Isabelle Jung/
`01/31/2015
`Supplemental_Memo.pdf(193876 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91218363
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`NEW WAVE INNOVATIONS INC.
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`vs.
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`MR. FOAMER, INC.
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`MR. FOAMER’S SUPPLEMENTAL MEMORANDUM IN SUPPORT OF MR.
`FOAMER’S MOTION TO DISMISS THE AMENDED OPPOSITION
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`MR. FOAMER, INC. (“MR. FOAMER” or “Applicant”) submits this Supplemental
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`Memorandum in Support of MR. FOAMER’s Motion to Dismiss the Amended Opposition
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`(“Opposition”) filed by NEW WAVE INNOVATIONS, INC. (“NEW WAVE” or “Opposer”).
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`SUPPLEMENTAL MEMORANDUM
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`On December 19, 2014, the Applicant filed its Reply to NEW WAVE’s Opposition to the
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`Motion to Dismiss the Amended Opposition (the “Reply,” Docket Entry No. 9). The Reply was
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`filed because NEW WAVE’s Opposition to the Motion to Dismiss the Amended Opposition
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`discussed new grounds in support of the Amended Opposition not previously discussed in the
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`Amended Opposition. On January 21, 2015, NEW WAVE filed a Supplemental Response in
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`Opposition to the Motion to Dismiss the Amended Opposition (the “Supplemental Response,”
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`Docket Entry No. 10). Even though the Certificate of Service of the Supplemental Response
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`stated that the Supplemental Response was served upon the Applicant’s counsel on January 21,
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`2015, the Supplemental Response was not served on that date but was actually served on the
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`Applicant’s counsel on January 23, 2015. Thus, the filing of this Supplemental Memorandum
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`which amounts to a supplemental reply to the Motion to Dismiss the Amended Opposition is
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`timely per 37 C.F.R. 2.127(a).
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`This Supplemental Memorandum will address the arguments raised in the Supplemental
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`Response by the Opposer as well as a recent development in a parallel proceeding in the United
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`States Court of Appeals for the Eleventh Circuit (the “Court of Appeals”) that directly relates and
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`confirms the lack of ownership of trademark rights by the Opposer in the MR. FOAMER Mark.
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`I. BECAUSE THE COURT OF APPEALS FOR THE 11TH
` CIRCUIT FOUND THAT THE OPPOSER DID
`NOT ESTABLISH USE OF THE MR. FOAMER MARK IN COMMERCE, THE AMENDED
`OPPOSITION FAILS TO STATE A CLAIM UNDER SECTION 2(D) OF THE LANHAM ACT
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`As recently as January 21, 2015, the Court of Appeals affirmed the finding of fact of the
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`United States District Court for the Southern District of Florida that the Opposer lacked
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`trademark rights in the MR. FOAMER Mark. A copy of the decision from the Court of Appeals
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`is attached as Exhibit “1” to this Supplemental Memorandum (the “Decision on Appeal”). More
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`specifically, though the Opposer had argued that the lower court erred in finding that the Opposer
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`failed to show use of the MR. FOAMER Mark in commerce in connection with the sale of any
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`good or service, the Court of Appeals disagreed finding that the Opposer only could establish de
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`minimis or token use of the mark. (See Exh. 1, Decision on Appeal, p. 2.) The Court of Appeals
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`particularly stated the following:
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`“New Wave 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. 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 character of one
`of its products in a Santa hat with a greeting attached. As such, it was a de
`minimis use of the mark. Thus, New Wave has not established trademark
`ownership rights.”
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`(See Decision on Appeal, Exh. 1, p. 4.) Thus, upon review of the New Wave Christmas card, the
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`Court of Appeals found that the Opposer did not establish trademark ownership rights of the MR.
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`FOAMER Mark.
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`Importantly, the Opposer previously relied exclusively upon the Christmas card referred
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`to by the Court of Appeals in Opposer’s trademark application for the mark MR. FOAMER,
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`Application Serial Number 86/304,665 (the “Opposer’s Word Mark”). The trademark examiner
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`in examining the Opposer’s Word Mark application, however, rejected the Christmas card as a
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`specimen sufficient to demonstrate use in commerce by the Opposer of the MR. FOAMER mark.
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`The Court of Appeals, too, appears to have found that the Christmas card failed to demonstrate
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`use because the Christmas card did not infer that the Opposer’s company had a new name or was
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`marketing a product with the name “Mr. Foamer.” Thus, it seems that the Court of Appeals and
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`the trademark examiner both agree that the Christmas card does not show use of the MR.
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`FOAMER mark in commerce by the Opposer in connection with services or goods. Rather, as
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`explained by the Court of Appeals, the term MR. FOAMER as used in the Christmas card “was a
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`cartoon character of one of [the Opposer’s] products in a Santa hat with a greeting attached. As
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`such, it was a de minimis use of the mark.”
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` As a consequence, the Opposer fails to state a claim under Section 2(d) of the Lanham
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`Act because the Opposer fails to establish ownership rights and use of the MR. FOAMER mark
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`in commerce. The Amended Opposition should be dismissed for failure to state a claim under
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`Section 2(d) of the Lanham Act.
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`II. BECAUSE THE SUPPLEMENTAL RESPONSE DOES NOT SHOW USE OF THE MR. FOAMER
`MARK IN COMMERCE BY THE OPPOSER, THE AMENDED OPPOSITION STILL FAILS TO STATE
`A CLAIM UNDER SECTION 2(D) OF THE LANHAM ACT
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`As explained in the Motion to Dismiss the Amended Opposition, the USPTO issued an
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`office action in the Opposer’s Word Mark application in which the USPTO rejected the registration of
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`the Opposer’s Word Mark because the specimen filed with the application did not show use in
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`commerce of the mark in connection with any of the services specified in the application, and the
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`USPTO requested that the Opposer submit a substitute specimen, if any.
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`3
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`Recently, on January 20, 2015, the Opposer filed a response to the office action (the
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`“Response to the Office Action”) which was submitted to the Board by the Opposer on January 21,
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`2015 as an exhibit to the Opposer’s Supplemental Response. (Docket Entry No. 10.) In the
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`Supplemental Response, the Opposer explained that the Response to the Office Action included a
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`substitute specimen (the “Substitute Specimen”) along with an explanation of its content and the
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`Opposer requested that the Amended Opposition be supplemented with the Response to the Office
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`Action. The Substitute Specimen, however, remains deficient and does not show use of the mark
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`MR. FOAMER in connection with the offering for sale of the services applied for in the Opposer’s
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`Word Mark application.
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`In fact, the Substitute Specimen consists of the same Christmas card which had been
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`originally submitted with the Opposer’s Word Mark application as well as a new one page document
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`consisting of a gift certificate. As to the Christmas card, the Court of Appeals and the USPTO in the
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`first office action both found that the Christmas card was not a proper specimen of use of the MR.
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`FOAMER mark and that the Christmas card failed to show use of the MR. FOAMER mark in
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`connection with any services or goods. As to the new one page document included in the Substitute
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`Specimen, the Opposer described this one page document as a discount coupon to purchase the
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`Opposer’s commercial car wash products, and Opposer argued that the Substitute Specimen showed a
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`direct connection between the MR. FOAMER Mark and the Applicant’s services “the distribution of
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`commercial car wash products.” (See Supplemental Response, p. 4, para. 2.) Of importance, the
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`Opposer’s applied-for services are not “distribution of commercial car wash products” as alleged by
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`the Opposer, but instead are “online retail store services featuring car wash equipment and parts
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`thereof.”
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`Here, the Opposer’s argument that the inclusion of the coupon as part of the Christmas card
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`as shown in the Substitute Specimen manifests a direct connection between the MR. FOAMER mark
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`and the Opposer’s applied for services is not convincing. As to the Christmas card, the only place
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`where the term MR. FOAMER appears is as part of a Christmas greeting: “Christmas wishes from Mr.
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`Foamer.” As to the gift certificate, it does not refer to the term MR. FOAMER at all and instead
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`states: “this certificate entitles our valued customer to receive $100 dollars off any order of $500.00
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`dollars or more. Authorized by New Wave Innovations Inc.” Thus, when reviewed collectively, the
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`Christmas card and the gift certificate found in the Substitute Specimen do not show use of the MR.
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`FOAMER Mark in connection with the services applied for by the Opposer in the Opposer’s Word
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`Mark application, namely, “online retail store services featuring car wash equipment and parts
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`thereof.” Without proof of use of the MR. FOAMER mark in connection with an online retail store,
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`the Opposer cannot allege it owns trademark rights in the MR. FOAMER mark in connection with the
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`services the Opposer applied for in the Opposer’s Word Mark application.
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`Therefore, because the Substitute Specimen filed by the Opposer in the Opposer’s Word
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`Mark application still does not show use of the MR. FOAMER mark in connection with the Opposer’s
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`applied for services (online retail store services), the Opposition still fails to state a claim under
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`Section 2(d) of the Lanham Act because the Opposer failed to establish use of the MR. FOAMER
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`mark in commerce and priority of use of the MR. FOAMER mark in commerce. The Amended
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`Opposition should be dismissed for failure to state a claim under Section 2(d) of the Lanham Act.
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`WHEREFORE, the Applicant respectfully requests that the Board dismiss the
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`Opposition as the Opposition fails to state a claim upon which relief can be granted.
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` 
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`/Isabelle Jung/
`Isabelle Jung
`Attorney for Applicant, MR.
`FOAMER, Inc.
`CRGO Law
`7900 Glades Road, Suite 520
`Boca Raton, FL 33434
`Phone: (561) 922-3845
`Fax: (561) 244-1062
`Email:   ijung@crgolaw.com 
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`5
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing Supplemental
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`Memorandum in support of Mr. Foamer’s Motion to Dismiss the Amended Opposition has
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`been served on the Opposer New Wave Innovations, Inc. by electronic message sent to counsel
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`for New Wave Innovations, Inc., John Faro, on January 31, 2015.
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`/Isabelle Jung/
`Isabelle Jung
`Attorney for Applicant, MR.
`FOAMER, Inc.
`CRGO Law
`7900 Glades Road, Suite 520
`Boca Raton, FL 33434
`Phone: (561) 922-3845
`Fax: (561) 244-1062
`Email: ijung@crgolaw.com
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`6
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`EXHIBIT 1
`EXHIBIT 1
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`Case: 14-11466 Date Filed: 01/21/2015 Page: 1 of 4 (1 of 5)
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` [DO NOT PUBLISH]
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`IN THE UNITED STATES COURT OF APPEALS
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`FOR THE ELEVENTH CIRCUIT
`________________________
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`No. 14-11466
`Non-Argument Calendar
`________________________
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`D.C. Docket No. 1:13-cv-22541-MGC
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`NEW WAVE INNOVATIONS, INC.,
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`Plaintiff-Appellant,
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`versus
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`JAMES MCCLIMOND,
`an individual,
`MR. FOAMER, INC.,
`a Florida corporation,
`CAR WASH EXPERTS, INC.,
`a Florida corporation,
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`Defendants-Appellees.
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`________________________
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`Appeal from the United States District Court
`for the Southern District of Florida
`________________________
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`(January 21, 2015)
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`Case: 14-11466 Date Filed: 01/21/2015 Page: 2 of 4 (2 of 5)
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`Before HULL, MARCUS, and ANDERSON, Circuit Judges.
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`PER CURIAM:
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`New Wave Innovations appeals the district court’s adoption of the
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`magistrate judge’s recommendation of denial of New Wave’s motion for
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`Preliminary Injunction. New Wave argues that the court erred when it accepted
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`the magistrate judge’s finding that New Wave failed to show use of the “Mr.
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`Foamer” mark in commerce in connection with the sale of any good or service and
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`that New Wave could only establish de minimis or token use of the mark.
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`New Wave brought suit against the Appellees for trademark infringement,
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`unfair competition/false designation of origin, unfair competition/trade dress
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`infringement, violation of the Florida Deceptive and Unfair Trade Practices Act,
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`and breach of confidential business relationship. It moved for a preliminary
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`injunction, seeking to enjoin Appellees from operating any business using the
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`name Mr. Foamer or using the name in conjunction with its business. New Wave
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`asserts that it used the name Mr. Foamer before Appellees did and that Appellees’
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`use of the name has caused confusion. Specifically, New Wave used the name in a
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`Christmas card that it sent in November 2011; the card depicted a foam generator
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`as a cartoon character and said “Christmas Wishes from Mr. Foamer.” Appellees
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`incorporated Mr. Foamer, Inc., in July 2012.
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`2
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`Case: 14-11466 Date Filed: 01/21/2015 Page: 3 of 4 (3 of 5)
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`We review the district court’s decision to deny a preliminary injunction for
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`abuse of discretion. Forsyth Cnty. v. U.S. Army Corps of Eng’rs, 633 F.3d 1032,
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`1039 (11th Cir. 2011). We review the court’s findings of fact for clear error and its
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`legal conclusions de novo. Id. “This scope of review will lead to reversal only if
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`the district court applies an incorrect legal standard, or applies improper
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`procedures, or relies on clearly erroneous factfinding, or if it reaches a conclusion
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`that is clearly unreasonable or incorrect.” Schiavo ex rel. Schindler v. Schiavo,
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`403 F.3d 1223, 1226 (11th Cir. 2005) (per curiam).
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`A party seeking a preliminary injunction must establish that “(1) it has a
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`substantial likelihood of success on the merits; (2) irreparable injury will be
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`suffered unless the injunction issues; (3) the threatened injury to the movant
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`outweighs whatever damage the proposed injunction may cause the opposing
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`party; and (4) if issued, the injunction would not be adverse to the public interest.”
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`Siegel v. LePore, 234 F.3d 1163, 1176 (11th Cir. 2000) (en banc) (per curiam).
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`“[A] preliminary injunction is an extraordinary and drastic remedy not to be
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`granted unless the movant clearly established the ‘burden of persuasion’ for each
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`prong of the analysis.” Am.’s Health Ins. Plans v. Hudgens, 742 F.3d 1319, 1329
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`(11th Cir. 2014) (quoting Siegel, 234 F.3d at 1176).
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`A party who bring an action for trademark infringement must show “that its
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`mark has priority and that the defendant’s mark is likely to cause consumer
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`3
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`Case: 14-11466 Date Filed: 01/21/2015 Page: 4 of 4 (4 of 5)
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`confusion.” Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330, 1335
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`(11th Cir. 1999). Trademark rights are gained in the common law via actual prior
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`use in commerce. Tally-Ho, Inc. v. Coast Comm. Coll. Dist., 889 F.2d 1018, 1022
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`(11th Cir. 1990). We have stated that, “[i]n general, uses that are de minimis may
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`not establish trademark ownership rights.” Planetary Motion, Inc. v. Techplosion,
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`Inc., 261 F.3d 1188, 1196 (11th Cir. 2001).
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`The district court did not abuse its discretion. New Wave used the mark a
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`single time, in a Christmas card that purportedly contained a coupon; this coupon
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`and its terms have not been entered into evidence. Thus we do not know how the
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`coupon acted in placing Mr. Foamer in commerce. The card did not infer that New
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`Wave had a new name or was marketing a product with the name Mr. Foamer; it
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`was a cartoon of one of its products in a Santa hat with a greeting attached. As
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`such, it was a de minimis use of the mark.1 Thus, New Wave has not established
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`trademark ownership rights and has not demonstrated substantial likelihood of
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`success on the merits.
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`AFFIRMED.
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`1
`We reject New Wave’s reliance on the Trademark Manual of Examining Procedure for
`its discussion of token use in this context. The discussion in the manual is about seasonal
`products, not a seasonal ad campaign. New Wave’s Christmas card was not akin to “test
`markets, infrequent sales of large of expensive items, or ongoing shipments of a new drug to
`clinical investigators.” TMEP § 902.02 (citing S. Rep. No. 515, 100th Cong. 2d Sess. 44-45
`(1988)).
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`4
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`Case: 14-11466 Date Filed: 01/21/2015 Page: 1 of 1 (5 of 5)
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`UNITED STATES COURT OF APPEALS
`FOR THE ELEVENTH CIRCUIT
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`ELBERT PARR TUTTLE COURT OF APPEALS BUILDING
`56 Forsyth Street, N.W.
`Atlanta, Georgia 30303
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`For rules and forms visit
`www.ca11.uscourts.gov
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`
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`January 21, 2015
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`John Ley
`Clerk of Court
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`MEMORANDUM TO COUNSEL OR PARTIES
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`Appeal Number: 14-11466-CC
`Case Style: New Wave Innovations, Inc. v. James McClimond, et al
`District Court Docket No: 1:13-cv-22541-MGC
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`This Court requires all counsel to file documents electronically using the Electronic Case Files ("ECF")
`system, unless exempted for good cause. Enclosed is a copy of the court's decision filed today in this appeal.
`Judgment has this day been entered pursuant to FRAP 36. The court's mandate will issue at a later date in
`accordance with FRAP 41(b).
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`The time for filing a petition for rehearing is governed by 11th Cir. R. 40-3, and the time for filing a petition for
`rehearing en banc is governed by 11th Cir. R. 35-2. Except as otherwise provided by FRAP 25(a) for inmate filings,
`a petition for rehearing or for rehearing en banc is timely only if received in the clerk's office within the time
`specified in the rules. Costs are governed by FRAP 39 and 11th Cir.R. 39-1. The timing, format, and content of a
`motion for attorney's fees and an objection thereto is governed by 11th Cir. R. 39-2 and 39-3.
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`Please note that a petition for rehearing en banc must include in the Certificate of Interested Persons a complete list
`of all persons and entities listed on all certificates previously filed by any party in the appeal. See 11th Cir. R. 26.1-
`1. In addition, a copy of the opinion sought to be reheard must be included in any petition for rehearing or petition
`for rehearing en banc. See 11th Cir. R. 35-5(k) and 40-1 .
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`Counsel appointed under the CRIMINAL JUSTICE ACT must file a CJA voucher claiming compensation for time
`spent on the appeal no later than 60 days after either issuance of mandate or filing with the U.S. Supreme Court of a
`petition for a writ of certiorari (whichever is later).
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`Pursuant to Fed.R.App.P. 39, costs taxed against the appellant.
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`The Bill of Costs form is available on the internet at www.ca11.uscourts.gov
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`For questions concerning the issuance of the decision of this court, please call the number referenced in the signature
`block below. For all other questions, please call Joe Caruso, CC at (404) 335-6177.
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`Sincerely,
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`JOHN LEY, Clerk of Court
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`Reply to: Djuanna Clark
`Phone #: 404-335-6161
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`OPIN-1A Issuance of Opinion With Costs