Priority between competing trademarks for purposes of a Section 2(d) likelihood of confusion analysis may be established through prior use analogous to trademark use, such as advertising brochures, trade publications, catalogues, newspaper advertisements and Internet websites that created a public awareness of the designation as a trademark as the source of the relevant goods. See 15 U.S.C. §§ 1052(d) and 1127; Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (“prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights”). Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1142 (TTAB 2013) (“even before proper trademark use commences, advertising or similar pre-sale activities may establish priority if they create the necessary association in the mind of the consumer”).

“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).

It is well settled that one may ground one's opposition to an application on the prior use of a term in a manner analogous to service mark or trademark use. Such an “analogous use” opposition can succeed, however, only where the analogous use is of such a nature and extent as to create public identification of the target term with the opposer's product or service.

T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1882 (Fed. Cir. 1996).

Public Identification Arising from Analogous Use

While the analogous use must have “significant impact” on the purchasing public to give rise to such public identification, it does not require proof of “a fixed percentage, like 20%, much less 51%, of the potential customers must have formed the required ‘prior public identification.'” T.A.B. Sys., 77 F.3d at 1377, 37 USPQ2d at 1883.

Followed by Actual Trademark Use Within a Commercially Reasonable Time

Furthermore, the theory under which use analogous to trademark use can provide a party with priority over another user of the same mark also requires that actual trademark use must follow the analogous use within a commercially reasonable period of time. Dyneer Corp. v. Auto. Prods., plc, 37 USPQ2d 1251, 1255 (TTAB 1995) (“With use analogous to trademark use, the proper inquiry generally is whether any delay between such use and actual, technical trademark use is commercially reasonable.”).

Analogous Use of CAPTAIN CANNABIS

The Trademark Trial and Appeal Board (“TTAB”) addressed the issue of priority based on use analogous to trademark use for comic books with CAPTAIN CANNABIS in Andrusiek v. Cosmic Crusaders LLC, Cancellation No. 92064830 (TTAB Sept. 6, 2022). Because there was no dispute that there was a likelihood of confusion, the prevailing party would be the one with the earlier priority date for using the CAPTAIN CANNABIS mark.

For purposes of priority, Respondent Cosmic Crusaders had a constructive date of first use of April 2, 2014 based on the filing date for Reg. No. 4782920.

Petitioner Andrusiek, on the other hand, obtained a Canadian copyright for an “unpublished” comic book titled “CAPTAIN CANNABIS” in 1977, and promoted the character at trade shows.

In October 2006, he printed 5000 copies of a “420” comic book that did not use the words, “Captain Cannabis” on the front cover, but the back cover included a reference to “Captain Cannabis” as the main character of the story.

The Captain Cannabis character continued to appear in the “420” comic books, which was promoted on social media and at comic book conventions.

By 2017, Petitioner Andrusiek started selling comic books under the CAPTAIN CANNABIS mark.

The evidence of record included an Amazon listing for “Captain Cannabis: 40th Anniversary,” and a 2017 article about the comic book.

The petition for cancellation of Reg. No. 4782920 was filed in November 2016.

Necessary Association in the Mind of the Relevant Consumer?

Priority based on “analogous use” can succeed only where the analogous use is of “such a nature and extent as to create public identification of the target term with the [petitioner's] product or service.” T.A.B. Sys., 37 USPQ2d at 1882.

Here, the TTAB found that Petitioner Andrusiek “has been selling the ‘420' comic book that included the CAPTAIN CANNABIS character continuously since 2006 to the present, including during 2013-14.” By the Respondent's priority date of 2014, the CAPTAIN CANNABIS 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.” T.A.B. Sys., 37 USPQ2d at 1882.

The TTAB held that “Petitioner's CAPTAIN CANNABIS mark is reasonably well-known within these [comic book and marijuana consuming] communities, even if the numbers are not large in absolute terms, and was reasonably well-known prior to Respondent's priority date.”

Actual Trademark Use Within a Reasonable Time?

The second prong of the test for finding analogous use sufficient to support priority requires that the analogous use be followed up within a reasonable time frame by actual trademark use. “[A]ctual, technical trademark use must follow the use analogous to trademark use within a commercially reasonable time.” Dyneer Corp. v. Automotive Products PLC, 37 USPQ2d 1251 (TTAB 1995).

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. Dyneer Corp., 37 USPQ2d at 1256.

Although the “analogous use” of CAPTAIN CANNABIS apparently began in 2006 as the name of a character in the published “420” comic, the TTAB apparently found the relevant “analogous use” period was 2013-2014 because of Respondent Cosmic Crusaders' constructive first use date of April 2, 2014.

The three or so years from the relevant “analogous use” period of 2013–2014, and not the first instance of analogous use in 2006, was the relevant time from which the TTAB found to be the commercially reasonable time frame to follow up with actual trademark use in 2017.

Thus, the TTAB granted the petition to cancel Registration No. 4782920 for the mark CAPTAIN CANNABIS is granted under Trademark Act Section 2(d).

Comment

In another recent TTAB decision, the Board held that a specimen depicting a character failed to function as a trademark. In re Caracol Televisión S.A., Ser. Nos. 87916944 and 879169481 (TTAB Aug. 24, 2022) (EL CABO mark for entertainment services). Where the usage of a character in the specimen of record fails to impart any commercial impression as a trademark or service mark, it is not registrable as such. See In re Burger King Corp., 183 USPQ 698, 700 (TTAB 1974).

The trademark attorneys at Thomas P. Howard, LLC enforce trademarks or defend against infringement nationwide including in Colorado.

Update: On October 19, 2023, the Federal Circuit affirmed this TTAB decision, holding that substantial evidence supported the Board's finding that Andrusiek engaged in trademark uses
with the CAPTAIN CANNABIS mark.