IP Law Daily, TRADEMARK—TTAB: ‘CAPTAIN CANNABIS’ mark for comic books canceled based on prior use, (Sep 12, 2022)

By Brian Craig, J.D.

A comic book author used the character name in comic books, which is analogous to trademark use, and established priority.

Based on prior use of a comic book character, the Trademark Trial and Appeal Board has granted a petition for cancellation of the registered mark CAPTAIN CANNABIS for comic books. The Board concluded a comic book author and illustrator demonstrated priority of use over another comic book seller by selling a comic book that included the CAPTAIN CANNABIS character continuously since 2006. The Board also concluded that actual trademark use in 2017 was within a commercially reasonable period of time following analogous use in 2013 so as to create a continuing association of the mark (Andrusiek v. Cosmic Crusaders LLC, September 6, 2022, Wolfson, F.).

A comic book author and illustrator, Laverne John Andrusiek, also known as Verne Andru, petitioned to cancel the registration for the mark CAPTAIN CANNABIS under Section 2(d) of the Trademark Act. The comic book author argued that the use of the CAPTAIN CANNABIS mark by the registrant, another comic book seller, Cosmic Crusaders LLC, was likely to cause confusion with the petitioner’s alleged prior use on comic books of the identical mark CAPTAIN CANNABIS. Cosmic Crusaders later dissolved and assigned interest to another individual. The parties agreed that the marks are confusingly similar but disagreed on prior use of the mark.

Abandonment. The Board concluded that the respondent comic book seller waived its abandonment argument. While the respondent comic book seller argued that the petitioner abandoned any rights he may have had prior to the respondent’s priority date, the respondent failed to pursue the affirmative defense of abandonment at trial.

Prior use. The Board next concluded that the petitioner comic book author and illustrator established prior use of the CAPTAIN CANNABIS mark. Character names are registrable as trademarks where the character name is perceived by the purchasing public as a mark which identifies and distinguishes the source of goods or services. Rights in the asserted mark may arise from prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights.

The Board established the registrant's first use as April 2, 2014, or the date of the application for registration. The Board found the petitioner comic book author demonstrated prior analogous use by selling a comic book that included the CAPTAIN CANNABIS character continuously since 2006. The petitioner comic book author garnered sufficient notoriety from his pre-sales activities to support a finding that his analogous use is of such a nature and extent as to create public identification of the target term with the petitioner’s product. The author’s mark received regional and national attention in niche publications and media, and the petitioner promoted its mark on a national level, including through trade shows, social media, and the Internet. The Board considered evidence showing analogous use, including the author’s Amazon author page, the author’s IMBD profile, and screenshots of the author’s website displaying a cover of a movie script. In addition, the Board considered a magazine article written in 2017 celebrating the 40th anniversary of the Captain Cannabis character.

Actual trademark use. The Board also concluded that the petitioner comic book author followed up the analogous use with actual trademark use within a reasonable time. The evidence demonstrates that the comic book author has been selling the “420” comic book that included the CAPTAIN CANNABIS character continuously since 2006 to the present. By 2017, the petitioner sold comic books under the mark CAPTAIN CANNABIS. Thus, the comic book author’s trademark use in 2017 was within a commercially reasonable period of time following his analogous use in 2013–2014 so as to create a continuing association of the mark with the petitioner’s goods. Accordingly, the Board canceled the registration of the CAPTAIN CANNABIS mark.

The case is Cancellation No. 92064830.

Attorneys: Michael P. Matesky, II (Matesky Law PLLC) for Laverne John Andrusiek. Joseph J. Weissman (Johnson Pope Boker Ruppel & Burns LLP) for Cosmic Crusaders LLC.

Companies: Cosmic Crusaders LLC

Cases: Trademark USPTO