CAFC Affirms Cancellation of CAPTAIN CANNABIS Registration: Petitioner Established Priority Via Analogous Trademark Use

In a non-precedential ruling, the CAFC affirmed the TTAB's decision [TTABlogged here], granting a petition for cancellation of a registration for the mark CAPTAIN CANNABIS for comic books, on the ground of likelihood of confusion with Petitioner Laverne J. Andrusiek's identical common law mark, also for comic books. The court concluded that the Board did not abuse its discretion in construing the petition to include a priority claim based of use analogous to trademark use, and further concluded that substantial evidence supported the Board's findings regarding Andrusiek's prior use. Cosmic Crusaders LLC and Lewis J. Davidson v. Laverne J. Andrusiek, 2023 USPQ2d XXX (Fed. Cir. 2023) [not precedential].

The appellants were entitled to rely on the April 2, 2014, filing date of their underlying application as their constructive first use date. Andrusiek's "actual" trademark use on comic books did not begin until 2017, but from 2006 he used the term as the name of a character, which the Board accepted as use analogous to trademark use, leading to the award of priority to Andrusiek. Since Appellants had conceded that there was a likelihood of confusion, the Board ruled in Andrusiek's favor on his Section 2(d) claim.

The appellate court noted that a party may try to show that it acquired proprietary rights in a mark as a result of “prior use analogous to trademark or service mark use.” "Analogous uses are those which 'create an association in the minds of the purchasing public between the mark and the petitioner’s goods,' but which do not constitute 'technical' or 'actual' trademark uses."

Such analogous uses are sufficient to establish priority if they “create such an association” that it “must reasonably be expected to have a substantial impact on the purchasing public before a later user acquires proprietary rights in a mark.” Precedent also imposes “a reasonable timeliness requirement” on analogous uses: i.e., the party must "actually use the mark in connection with goods within a commercially reasonable timeframe."

The CAFC ruled that Appellants failed to show an abuse of discretion by the Board when it found that Andrusiek adequately pled analogous use. "The Board explained that Andrusiek’s petition gave fair notice of his analogous use argument when the petition distinguished between two distinct bases for Andrusiek's claim: Andrusiek’s 'marketing activities on the one hand (which correspond to analogous 'use), and his 'bona fide commercial trade' on the other (which correspond to actual use)."

Appellants also challenged the Board’s findings that (i) Andrusiek’s prior analogous use was sufficient to impact the purchasing public, and (ii) that Andrusiek engaged in actual trademark use within a reasonable time of the relevant analogous use. The CAFC concluded that Substantial evidence supported both Board findings.

The CAFC pointed out that the Board cited Andrusiek’s extensive public usage of CAPTAIN CANNABIS to promote comic books, including multiple news and magazine articles associating CAPTAIN CANNABIS with Andrusiek’s comic books, in periodicals whose readership totaled approximately 750,000 people per month.

Appellants next argued that the record lacked substantial evidence that Andrusiek ever used CAPTAIN CANNABIS as a trademark and therefore did not engage in trademark use within a reasonable time from the analogous use. "The primary issue with Appellants’ position is that it misstates the record" because the Board relied on multiple independent pieces of evidence showing Andrusiek’s trademark usage.

The court therefore affirmed the "cancellation of Appellant's mark." [Actually, registrations are cancelled, not marks - ed.]

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TTABlogger comment: An unappealing appeal.

Text Copyright John L. Welch 2023.