Prior analogous trademark use proves fatal for Cosmic Crusaders in TTAB cancellation

The TTAB has cancelled a registration for CAPTAIN CANNABIS based on the plaintiff’s evidence of prior use that was “analogous to trademark use” (Laverne John Andrusiek v Cosmic Crusaders LLC and Lewis J Davidson, cancellation 92064830, 3 January 2024, Wolfson, Lynch, Larkin, ATJs).

Case background  

Laverne John Andrusiek claimed to have first created a comic book featuring the title character Captain Cannabis during the 1970s. Although Andrusiek’s sale of comic books under the CAPTAIN CANNABIS mark did not begin until 2017, he promoted his Captain Cannabis character much earlier. For example, Andrusiek stated that he attended a trade show in New Orleans in 1999, where he distributed flyers describing an animated series that was “in development” and featured the Captain Cannabis character.  

That same year, Andrusiek registered the domain name captaincannabis.com, on which he alleged that he promoted and sold Captain Cannabis products online. In 2006, Andrusiek claimed to have printed 5,000 copies of a comic book that included a Captain Cannabis character, and to have first sold these via an online retailer, where sales continued through 2017.

Cosmic Crusaders – a comic book and cartoon company – registered CAPTAIN CANNABIS under comic books in Class 16. The subject application was filed on 2 April 2014 and issued on 28 July 2015. Andrusiek petitioned to cancel this registration in 2016 under Section 2(d) of the Trademark Act, claiming that use of the mark was likely to cause confusion with his prior common-law use of the same mark in connection with identical goods.

Cosmic Crusaders did not contest that contemporaneous use of both marks would be likely to cause confusion, and there was no dispute that the marks were not distinctive. Therefore, the only issue for the TTAB to determine was priority.

Establishing priority

Andrusiek had to show that he owned a trademark previously used in the United States that had not been abandoned. Since priority was based on common-law use in this case, he was also required to establish prior actual trademark use or prior analogous trademark use, “such as use in advertising brochures, trade publications, catalogues, newspaper advertisements and Internet websites that created a public awareness of the designation as a trademark identifying Petitioner as the source of the relevant goods”.

Analogous use does not require survey or direct evidence of public recognition of Andrusiek’s mark as the source of comic books or other related products. Rather, Andrusiek had to show that he had used the CAPTAIN CANNABIS mark in the United States in a manner that was “sufficient to create an association in the mind of the relevant consumers between the mark and the goods”, followed by use of the mark within a “commercially reasonable time”.

Key findings

The board found that Andrusiek’s CAPTAIN CANNABIS mark was reasonably well known within the niche communities to which it was marketed, “even if the numbers are not large in absolute terms”. The board also found that the mark was “reasonably well-known prior to [Captain Cannabis’s] priority date”, such that the “notoriety from his pre-sales activities…support[s] a finding [of] analogous use”.

Further, the TTAB also found that Andrusiek used his mark within a commercially reasonable time following the analogous use. His testimony and documentary evidence demonstrated that he “has been selling the…comic book that included the CAPTAIN CANNABIS character continuously since 2006 to the present, including during 2013-14, and that by 2017, [Andrusiek] sold comic books under the mark CAPTAIN CANNABIS”. Therefore, the board granted the petition to cancel Cosmic Crusaders’ mark based on Andrusiek’s prior analogous use pre-2014 and actual use post-2014.

This decision sheds light on the impact that prior use can have on a registrant’s priority over a competing trademark user.