Here’s What Happened:  

In the 1970s, Laverne John Andrusiek created a comic book featuring the title character, Captain Cannabis. Starting in 1999, Laverne promoted his character in an anticipated adult animated comic book series at a trade show. Also in 1999, he registered the domain name for a website to promote the character and sell merchandise. As the years went on, Laverne appeared at numerous trade shows to promote his character and comic books. In 2006, Laverne claims to have printed 5,000 copies of a Captain Cannabis comic book and sales were continuous thereafter.

Enter Cosmic Crusaders LLC.  In 2014, they applied to register CAPTAIN CANNABIS for “comic books”.  The mark was registered in 2015.

On learning of the registration, Laverne filed a petition to cancel on the registration on the basis that Cosmic Crusaders’ later use of CAPTAIN CANNABIS is likely to cause confusion with Laverne’s comic books. The Trademark Trial and Appeal Board agreed and cancelled the Cosmic Crusaders registration.

Cosmic Crusaders appealed to the Federal Circuit Court of Appeals.

Laverne did not register his mark. So, he had to establish his priority in the mark with sufficient evidence of both analogous and actual use. Analogous use is use of a mark in a manner that is not traditional trademark use (such as on the goods or the packaging) but still creates an association in the minds of consumers between the mark and the goods or services it represents. Types of analogous use are advertising brochures, trade publications, catalogues, newspaper advertisements and websites using the mark. 

The Court of Appeals cited the substantial evidence of Laverne’s prior analogous use of the trademark as well as his actual use. Not only did Laverne prove the promotional activities, advertising and sales but he also produced numerous articles about his Captain Cannabis comics in publications with large readerships. Both sides admitted that Captain Cannabis comic books were a small niche market. However, Laverne established that the relevant niche market would have been aware of Laverne’s Captain Cannabis.

The Federal Circuit affirmed the cancellation.

WHY YOU SHOULD KNOW THIS:  Trademark rights arise from use by the owner for certain goods and services. The trademark makes the connection between the owner of the trademark and consumer. As this case demonstrates, that connection can be established with evidence of promotional activities and media write-ups in addition to actual use. 

Note that a registered mark carries the presumption of validity. A common law trademark does not. So, proof of rights in a common law trademark is more burdensome than it is for a registered mark. Had Laverne registered the trademark, it’s likely that the USPTO would have rejected the later filed Cosmic Crusaders’ application. That would have saved Laverne a lot of time, money and aggravation.

Case Information: Cosmic Crusaders LLC v. Andrusiek, No. 2023-1150, 2023 WL 6889054 (Fed. Cir. Oct. 19, 2023)

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