Captain Cannabis continues to make a name for himself, with the comic book character now linked with binding trademark precedent. The dispute over the “Captain Cannabis” trademark involved who had priority of using the cannabis trademark in comic books.

The Trademark Trial and Appeal Board (TTAB) ultimately concluded that Petitioner Laverne John Andrusiek had made analogous use of the mark before Respondent Cosmic Crusaders LLC’s trademark registration and, thus, prevailed on his petition to cancel under Section 2(d) of the Trademark Act. The decision highlights the power of analogous use to establish priority and defeat a registered mark.

The dispute began when Andrusiek (Petitioner) petitioned to cancel Cosmic Crusaders’ registration for the mark “Captain Cannabis” on the ground that its use of the mark was likely to be confused with his alleged prior use of the identical mark. Andrusiek maintained that he had used the mark for years before Cosmic Crusaders filed for trademark registration in April 2014.

A cancellation is a proceeding in which a party seeks to cancel an existing registration of a mark. To bring a petition for cancellation, the petitioner must demonstrate that it is being harmed or damaged by the existence of the registrant’s trademark registration, along with at least one legal ground for challenging a trademark registration. In many cases, the party challenging the registration asserts priority rights in a confusingly similar trademark. In other cases, petitioners maintain that registrations should no longer be in force because the registrant has abandoned the trademark or the mark has become generic.

Trademark Priority of Use

In Laverne John Andrusiek v. Cosmic Crusaders LLC, Andrusiek based his cancellation on section 2(d) of the Lanham Act. A party petitioning for cancellation under section 2(d) must show that it had priority and that registration of the new mark creates a likelihood of confusion with the petitioner’s earlier mark. Given that both parties used the same mark on the same goods, the only issue in dispute was the priority of use.

Because Andrusiek never registered the “Cosmic Crusaders” mark or technically used it as a trademark before Cosmic Crusaders’ registration, he relied on the theory of analogous trademark use. Under the theory, a party may attempt to show that it acquired proprietary rights in a mark based on “prior use analogous to trademark or service mark use.” Under existing trademark precedent, “[a]nalogous 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.”

As the TTAB explained, analogous uses can establish priority provided that 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.” Parties seeking to rely on analogous use must also satisfy a reasonable timeliness requirement, under which they must “actually use the mark in connection with goods within a commercially reasonable timeframe.”

Evidence of Analogous Use: Captain Cannabis Prevails in TTAB Decision

In support of his claim, Andrusiek cited extensive public usage of the “Captain Cannabis” to promote his comic books. His evidence included: registration and maintenance of; attendance at multiple trade shows and conventions and distribution of materials at each event; shipping of the comic book titled “420,” which included explicit references to “Captain Cannabis” as the “star attraction” of the comic; active social media profiles featuring references to Captain Cannabis; and multiple interviews and profiles in trade press referencing Captain Cannabis in connection with Andrusiek’s comic books.

Based on the evidence submitted, the TTAB concluded that Andrusiek engaged in analogous use of the mark from 2006 to the present, including during 2013–14, and engaged in actual trademark use in 2017. The Board further found Andrusiek’s trademark use “to be within a commercially reasonable period following his analogous use in 2013–14 to create a ‘continuing association of the mark’ with Petitioner’s goods.” Because the parties conceded that there was a likelihood of confusion between Andrusiek’s mark and Cosmic Crusaders’ mark, the Board canceled the mark.

TTAB Makes Captain Cannabis Decision Precedential

The U.S. Court of Appeals for the Federal Circuit(CAFC) affirmed the TTAB’s decision, concluding that substantial evidence supported the Board’s findings. In reaching its decision, the CAFC rejected Cosmic Crusaders’ argument that Andrusiek had not asserted analogous use of the mark, finding that using the term “common-law usage” was sufficient to put Cosmic Crusaders on notice that the theory would be argued. The appeals court also rejected Comic Crusaders’ argument that there was insufficient evidence to demonstrate that Andrusiek’s analogous use impacted the purchasing public.

Earlier this month, the TTAB redesignated its prior September 6, 2022 decision in Andrusiek v. Cosmic Crusaders LLC as a precedent. The Board did not comment on its decision. Nonetheless, its analysis of analogous use, particularly the evidence required to establish it, will now guide future decisions.

Animated Characters and Cannabis Marketing

The cannabis lawsuit is likely not the last involving comic books and other animated characters. One of the most famous — Mickey Mouse — recently entered the public domain. While the only version of Mickey no longer subject to trademark protection is the black and white version featured in Steamboat Willy, several projects featuring Disney’s most famous character have already been announced. In the cannabis industry, references to “cannabis Mickey” or “cannabis Willy” would not be unexpected.

However, as highlighted above, trademark law is rarely straightforward and often involves a complex web of intellectual property interests. As a result, cannabis companies must work with experienced counsel to protect their IP rights and prevent liability for infringing on the rights of others. With practice groups dedicated to both Intellectual Property and Cannabis Law, Scarinci Hollenbeck is uniquely positioned to provide personalized guidance, and we encourage you to contact a member of our team.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.