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TTAB Orders Cancellation Of CAPTAIN CANNABIS Registration For Comic Books: Petitioner Proved Priority By Use Analogous To Trademark Use – Trademark



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The Board granted 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 mark, for which he claimed prior use for
comic books. The parties agreed that the marks are confusingly
similar. 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.
Laverne J. Andrusiek v. Cosmic Crusaders LLC and
Lewis J. Davidson
, Cancellation No. 92064830 (September 6,
2022) [not precedential] (Opinion by Judge Frances S. Wolfson).

1228842a.jpg

“The analogous use doctrine allows a party to claim
priority as of when it is established that the mark is associated
in the mind of the consumer with a source for the goods.”
Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108
USPQ2d 1134, 1145 (TTAB 2013). However, “actual trademark use
must follow the analogous use within a commercially reasonable
period of time.”

Respondent Davidson was entitled to rely on the April 2, 2014
filing date of his underlying application as his date of
constructive first use. For what it’s worth, Davidson tried but
failed to prove a first use date in 2013.

Beginning in 1999, Andrusiek promoted “Captain
Cannabis” as the name of a character in an adult animated
series that was “in development.” In that year he also
registered the domain name “captaincannabis.com.” He sold
copies of comic books featuring the character and displayed the
comic books at a comic convention. He also received some media
attention. The evidence suggested that by 2013-2014,
Andrusiek’s CAPTAIN CANNABIS mark was “reasonably
well-known within these [niche] communities, even if the numbers
are not large in absolute terms, and was reasonably well-known
prior to Respondent’s priority date.”

Petitioner’s mark had received regional and national
attention in niche publications and media, and Petitioner had
promoted its mark on a national level, including through trade
shows, social media, and the Internet. We find that the evidence
considered in its entirety establishes that Petitioner 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 question, then was whether Andrusiek made technical
trademark use (or “actual use,” as the Board put it) of
the CAPTAIN CANNABIS mark within a reasonable time after his
analogous use. Andrusiek submitted evidence of such technical
trademark use from 2016 and 2017, including displays of comic book
covers on Amazon, on YouTube, and in other media.

Petitioner’s testimony and documentary evidence demonstrate
that he has been selling the “420” comic book that
included the CAPTAIN CANNABIS character continuously since 2006 to
the present, including during 2013-14, and that by 2017, Petitioner
sold comic books under the mark CAPTAIN CANNABIS. We find
Petitioner’s actual trademark use in 2017 to be within a
commercially reasonable period of time following his analogous use
in 2013-14 so as to create a “continuing association of the
mark” with Petitioner’s goods.

Viewing the evidence as a whole, “as if each piece of
evidence were part of a puzzle,” the Board found that
“when fitted together,” the puzzle pieces established
prior use by Andrusiek. And so the Board granted the petition for
cancellation.

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