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Rules of Evidence Require Weighing Relevance of Evidence Against Potential Prejudice

by Karen Gover | Feb 8, 2024 | Life Sciences, Patents

The US Court of Appeals for the First Circuit affirmed the exclusion of a drug patent in a medical malpractice case, finding that the highly technical language of the patent would more likely confuse a lay jury than be probative of the issues in the case. Ward v. Schaefer, Case No. 22-1547 (1st Cir. Jan. 29, 2024) (per curiam).

In 2018 Edmund Ward sued his doctor, Ernst Schaefer, claiming that Dr. Schaefer had fraudulently induced Ward to participate in an experimental drug protocol and had otherwise failed to obtain his informed consent. Ward was born with a rare genetic disorder that caused his body to not produce a blood enzyme, lecithin-cholesterol acyltransferase (LCAT), that is critical for cholesterol production. As a result, Ward was at risk of kidney failure and would require either regular dialysis or a kidney transplant. When Ward met Dr. Schaefer, Ward’s condition was deteriorating. Dr. Schaefer suggested that Ward might be a suitable candidate for an experimental enzyme therapy with a drug called ACP-501, and Ward, under an expanded access application, was granted permission to start an experimental protocol.

Ward traveled from his home in Massachusetts to a National Institutes of Health (NIH) facility in Bethesda, Maryland, to receive infusions of ACP-501 and was monitored by Dr. Schaefer in Massachusetts. Unfortunately, Ward’s condition did not improve under the experimental protocol but instead worsened because he was compelled to delay dialysis treatments while using ACP-501. Ward stopped the experimental protocol; began regular dialysis; and sued Dr. Schaefer, the NIH doctors and the drug manufacturer. The district court dismissed the claims against most of the plaintiffs, but the claims of fraud and failure to obtain informed consent against Dr. Schaefer went to trial. Ward’s signed consent form was admitted into evidence at trial, but he claimed he had no memory of discussing it with his doctors or signing it. The jury found in favor of Dr. Schaefer on all claims. Ward appealed.

Ward argued that the court erred in refusing to allow the introduction of the patent for ACP-501 because the patent specified that it was a method for reducing arterial cholesterol in patients not suffering from LCAT deficiency. Ward argued that this language in the patent made clear that the drug was not appropriate for patients like him. The district court ruled that the patent was inadmissible because it had been offered without foundation, and that it had nothing to do with the issues of fraud and informed consent. On appeal, the First Circuit offered a different analysis but arrived at the same outcome, holding that the Fed. R. Evid. 403 balancing test “disposes of the matter.”

The First Circuit noted that the patent’s description of ACT-501 “is of absolutely no relevance to Dr. Schaefer’s alleged failure to apprise Ward of the potential risks and rewards of taking the drug through expanded access.” The Court went on to point out that even if the single sentence in the patent pointing to its exclusion for patients with LCAT [...]

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Google It: Federal Copyright Law Preempts California Causes of Action

by Katherine Pappas | Feb 1, 2024 | Copyrights

Addressing a state law-based challenge to the way search results are displayed on copies of websites, the US Court of Appeals for the Ninth Circuit held that copyright preemption precluded a website owner from invoking state law to control how the websites are displayed. Best Carpet Values, Inc. v. Google LLC, Case No. 22-15899 (9th Cir. Jan. 11, 2024) (Wallace, Thomas, Forrest, JJ.)

Best Carpet Values filed a class action against Google asserting California state law claims for trespass to chattels, implied-in-law contract and unjust enrichment based on the way Google’s search app displayed their websites on Android phones. If an Android user used the search app to navigate to a website, the app delivered a copy of the website, which was displayed with a frame at the bottom of the page saying, for example, “VIEW 15 RELATED PAGES” and which allowed the user to click a button to expand the frame to display half-page banners advertising related websites. For Best Carpet (the class representative), these displayed results included websites for its direct competitors and even news stories about Best Carpet’s owner. Best Carpet argued that Google thereby occupied valuable space on Best Carpet’s websites, obtaining all the benefits of advertising from its use of that space without paying for such advertising.

Google moved to dismiss the complaint for failure to state a claim upon which relief could be granted. After the district court denied the motion to dismiss, Google moved to certify the order for interlocutory appeal. The district court granted Google’s motion and certified four questions for interlocutory review that it believed were potentially dispositive. The Ninth Circuit found that only two of the interlocutory questions were dispositive:

Whether prior Ninth Circuit authority, Kremen (2003), should be extended to protect as chattel the copies of websites displayed on a user’s screen
Whether preemption under copyright law precluded state law from controlling how websites are displayed on a user’s screen.

On the issue of whether a website display can be protected as chattel, the Ninth Circuit agreed with the district court that the “chattels” at issue were copies of Best Carpet’s websites. The Ninth Circuit reasoned, however, that they could not serve as the basis for a trespass claim because Best Carpet had no cognizable property interest in the website copies on an app user’s Android phone. The Court reasoned that website copies – unlike a website’s domain name – were not “capable of precise definition” or “capable of exclusive control,” and there was no “legitimate claim to exclusivity” over the website copies (citing Kremen).

As for the copyright preemption issue, the Ninth Circuit considered the two-part test for determining whether the Copyright Act preempted the state law claims. The first prong assesses whether the subject matter of the state law claim falls within the subject matter of the relevant provisions of the Copyright Act. Here, the parties agreed that commercial websites are copyrightable, and after considering the body of precedent interpreting the relevant provisions of the [...]

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Stay in the Know: Informational Message Is Not a Source Identifier

by Sydney E. McDermott | Feb 1, 2024 | Trademarks

Addressing whether the mark EVERYBODY VS. RACISM was registrable, the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s final refusal to register the mark because it failed to function as a source identifier. In re: GO & Assoc., LLC, Case No. 22-1961 (Fed. Cir. Nov. 13, 2023) (nonprecedential) (Fed. Cir. Jan. 22, 2024) (precedential) (Lourie, Reyna, Hughes, JJ.)

On June 2, 2020, GO & Associates filed a trademark application seeking registration on the principal register of EVERYBODY VS. RACISM, identifying the goods and services as various apparel “promoting public interest and awareness of the need for racial reconciliation and encouraging people to know their neighbor and then affect change in their own sphere of influence.”

In a non-final office action, the examining attorney refused to register the mark, asserting that it “failed to function as a source identifier for GO’s goods and services.” The examiner noted that the mark “merely convey[ed] support of, admiration for, or affiliation with the ideals conveyed by the message.” The examiner presented examples of the mark being used in informational settings, such as by referees in the National Basketball Association; in YouTube videos; on clothing; and in titles of rap songs, podcasts and church sermons. Although GO presented evidence that the mark had hardly been used or searched prior to its use in May 2020, the examining attorney continued to reject the application. The examiner found that “the ornamental uses of the mark only reinforced the fact that consumers would likely view the mark as a sentiment rather than a source.” The examiner also noted that the applicant’s first use of the mark coincided with the “general timeline of the heated anti-racism protests throughout the nation in the wake of the George Floyd killing.”

GO appealed to the Board. The Board found “that the record as a whole show[ed] wide use of the proposed mark in a non-trademark manner to consistently convey an informational, anti-racist message to the public, as opposed to a source identifier of GO’s goods and services,” and affirmed the examiner’s refusal to register the mark. GO appealed to the Federal Circuit.

Affirming the Board’s decision, the Federal Circuit emphasized that the threshold requirement for the issuance of a mark is whether it is source identifying: “what makes a trademark a trademark under the Lanham Act is its source-identifying function.” The mark must identify the source for the public and distinguish that source from others.

The Federal Circuit noted that whether a mark is source identifying depends on “how the mark is used in the marketplace and how consumers perceive it.” In particular, the US Patent & Trademark Office prohibits registering marks that it calls “informational matter” (i.e., “slogans, terms, and phrases used by the public to convey familiar sentiments, because consumers are unlikely to perceive the matter as a trademark or service mark for any goods and services”). Reviewing the Board’s findings for substantial evidence, the Court found that the Board properly weighed the [...]

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Senate Holds Hearing on Legislative Initiative to Address Patent Eligibility

by Christopher M. Bruno and Kavya Rallabhandi | Feb 1, 2024 | Patents

Seeking to undo the current jurisprudence “mess” on the issue of patent eligibility, the Senate Judiciary Committee’s Subcommittee on Intellectual Property heard testimony on January 23, 2024, on the Patent Eligibility Restoration Act (PERA) (text here). PERA seeks to address the uncertainty and unpredictable outcomes created by the 2014 Supreme Court of the United States decision in Alice Corp. Pty. v. CLS Bank Int’l.

PERA is the latest iteration of 35 USC § 101 patent eligibility reform that Senators Thom Tillis (R-NC) and Chris Coons (D-DE) have been introducing for years. Although the language has been tweaked over time, the bill’s purpose is to eliminate “[a]ll judicial exceptions to patent eligibility” and in their place codify several categories of inventions as unpatentable, such as mathematical formulas; processes that are substantially economic, financial, business, social, cultural or artistic; processes that are mental or purely natural; unmodified human genes; and unmodified natural materials.

The January 23 hearing featured eight witnesses, divided into two panels. The first panel included:

Andrei Iancu, former US Patent & Trademark Office (PTO) director
Richard Blaylock, testifying on behalf of Invitae Corporation
Courtenay Brinckerhoff, partner at Foley & Lardner
Phil Johnson, steering committee chair at the Coalition for 21st Century Patent Reform.

The second panel included:

The Honorable David Kappos, former PTO director
Adam Mossoff, professor at the Antonin Scalia Law School
Mark Deem, operating partner of Lightstone Ventures
David Jones, executive director of the High-Tech Inventors Alliance.

Harkening back to prior panels, the testimony was largely in favor of reform considering what many characterized as inaction by all other stakeholders. Senators and witnesses alike recognized that legislative reform is likely the only way to gain clarity on § 101 considering the Supreme Court’s failure to take up more than 100 certiorari petitions seeking review, many with the Solicitor General’s endorsement.

During the first panel, Blaylock testified that PERA would improperly provide patent eligibility to new uses of natural phenomena, such as genetic material, and therefore “would stifle innovation and harm patient care in the fields of diagnostic genetic testing and precision medicine.” Iancu testified in response that “all human invention is the manipulation of nature towards practical uses by humans on this planet . . . and it should be eligible for a patent.” Brinckerhoff’s testimony also opposed Blaylock’s view; she explained that considerable research and development is needed to develop new uses for isolated natural products and would be disincentivized without patent eligibility. Brinckerhoff highlighted an important theme at the hearing: “PERA would bring eligibility back in line with other countries” by permitting patents on methods of detecting new diagnostic markers, thus maintaining international competitiveness. Lastly, Johnson testified that “[j]ust because something is eligible doesn’t mean it’s patentable” and stressed the importance of using §§ 102, 203 and 112 as additional filters to determine patentability.

During the second panel, venture capitalist Deem testified that “the United States is failing many of our most innovative startups” because [...]

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Scattered Disclosures May Not Lead to Inference of Fraud in FCA Claim

by Cecilia Choy, Ph.D. | Feb 1, 2024 | Patents

The US Court of Appeals for the Ninth Circuit denied a petition for panel rehearing and rehearing en banc and issued an amended opinion that reversed a district court’s decision regarding the False Claims Act’s (FCA) public disclosure bar. Silbersher v. Valeant Pharm. Int’l, Inc., Case No. 20-16176 (9th Cir. Aug. 3, 2023; amended Jan. 5, 2024) (Schroeder, Sanchez, Antoon, JJ.)

The FCA imposes civil liability on those who knowingly present a fraudulent claim for payment to the federal government and allows “relators” to bring fraud claims on behalf of the government.

Valeant owns a set of patents that cover a delayed-release formula for a medication prescribed to treat ulcerative colitis. In 2015, a generic drug manufacturer, GeneriCo, challenged one of Valeant’s patents in an inter partes review (IPR) proceeding. Ultimately, the Patent Trial & Appeal Board found Valeant’s patent unpatentable based on two articles co-authored by Valeant’s head of research.

Silbersher was GeneriCo’s lawyer in the IPR proceeding. He discovered that three years before applying for the challenged patent, Valeant had applied for another patent that disclosed the exact opposite of what Valeant would claim in the challenged patent. Silbersher brought an FCA action alleging that Valeant failed to disclose this information in the IPR proceeding. In response, Valeant argued that the public disclosure bar applied. The district court decided that an IPR qualified as an “other Federal hearing” under channel (ii) of the public disclosure bar and dismissed Silbersher’s action. Silbersher appealed.

On appeal, the Ninth Circuit reversed the district court. Valeant filed a petition for panel rehearing and rehearing en banc. The Court issued an amended decision that refocused on its analysis under its 2016 decision in Mateski v. Raytheon. Under Mateski, the public disclosure bar applies when “the disclosure at issue occurred through one of the channels specified in the statute; the disclosure was ‘public;’ and the relator’s actions are ‘based upon’ the allegations or transactions publicly disclosed.”

The Ninth Circuit discussed whether Valeant’s disclosures revealed “substantially the same allegations or transactions” as Silbersher’s qui tam action. As discussed in the original decision, this was a first for this court, which had not yet “interpreted substantially the same prong of the public disclosure bar” under the 2010 Congress amendments. Mateski explained that to disclose a public fraudulent transaction according to the formulation X+Y=Z (where Z is the fraud allegation and X and Y are the essential elements), “the combination of X and Y must be revealed from which readers or listeners may infer Z, the conclusion that fraud has been committed.”

The Ninth Circuit then applied the Mateski framework to conclude that the qualifying public disclosures here did not collectively disclose a combination of facts sufficient to permit a reasonable inference of fraud. It explained that although “scattered disclosures when viewed together possibly reveal some of these true and misrepresented facts,” fraud could not reasonably be inferred from the combinations. Neither Valeant’s patent prosecutions nor disclosures revealed the critical information necessary to support [...]

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R&D Expenditures Need Only Relate to Subset of Domestic Industry Product

by Alexander P. Ott | Feb 1, 2024 | Patents

Addressing a decision by the US International Trade Commission finding a violation of Section 337 based on importation of certain TV products, the US Court of Appeals for the Federal Circuit agreed that the patent holder had established a domestic industry based on research and development (R&D) relating to only a subset of the domestic industry products. Roku, Inc. v. ITC, Case No. 22-1386 (Fed. Cir. Jan. 19, 2024) (Dyk, Hughes, Stoll, JJ.)

In 2020, Universal Electronics filed a complaint at the Commission seeking a Section 337 investigation of certain streaming devices, TVs, set top boxes and remote controls sold by Roku and others that allegedly infringed six of Universal Electronics’ patents. During the investigation, the administrative law judge (ALJ) granted Roku’s summary determination motion that Universal Electronics lacked ownership of one of the patents, but the Commission promptly reversed that decision. Prior to the hearing, Universal Electronics terminated the investigation as to the three other patents and all respondents other than Roku. The ALJ subsequently issued an initial determination finding infringement and domestic industry for all three patents but held that two of the patents were invalid. The Commission agreed and issued a limited exclusion order barring Roku’s importation. Roku appealed.

Roku raised three challenges to the Commission’s decision on appeal. Roku renewed its ownership argument, disputed the domestic industry finding, and contested the holding of nonobviousness. The Federal Circuit affirmed on all issues.

On ownership, the Federal Circuit faced the question of whether an inventor had executed an automatic assignment or merely a promise to assign. The Court noted that Roku only addressed a 2004 agreement cited by the ALJ and disregarded a later 2012 agreement relied on by the Commission where the inventor agreed to “hereby sell and assign” the patent.

The Federal Circuit rebuffed Roku’s argument that the domestic industry prong was not satisfied on the basis that Universal Electronics failed to allocate expenses to specific domestic industry products. Instead, the Court noted that Section 337 requires investment in the exploitation of the intellectual property and explained that the expenditures can relate to only a subset of a product if the patent only involves that subset.

Finally, regarding obviousness, the Federal Circuit noted that Roku’s arguments regarding secondary considerations ignored the Commission’s finding that the prior art combination failed to satisfy the key claim limitation. As to secondary considerations, the Court dismissed Roku’s lack of nexus argument by finding that it did not matter that the news articles showing a long-felt but unmet need also discussed features other than what was claimed by the patent.

First Amendment Bowled Over by Lanham Act – Again

by Anisa Noorassa | Jan 25, 2024 | Trademarks

In response to the Supreme Court of the United States’ ruling in Jack Daniel’s, the US Court of Appeals for the Ninth Circuit reconsidered its 2022 decision in Punchbowl v. AJ Press and determined that Jack Daniel’s reset prior Ninth Circuit precedents regarding the interaction of First Amendment rights and the Lanham Act. The Ninth Circuit reversed its original decision and remanded the case to the district court to conduct a likelihood of confusion analysis under Lanham Act precedent. Punchbowl, Inc. v. AJ Press, LLC, Case No. 21-55881 (9th Cir. Jan. 12, 2024) (Owens, Bress, Fitzwater, JJ.)

The Ninth Circuit had previously held that despite use of the PUNCHBOWL trademark for a news service covering politics, AJ Press was not subject to liability under the Lanham Act. The PUNCHBOWL mark was registered by Punchbowl, Inc., a website specializing in online communications “with a focus on celebrations, holidays, events and memory making.” The Ninth Circuit’s original decision was based on the Court’s understanding of the Rogers test, which protected creative use of trademarks if the defendant could “make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the First Amendment.” This test was easily met if the artistic relevance of the trademark’s use was “above zero.” Shortly after the Ninth Circuit issued its initial decision, the Supreme Court granted certiorari in Jack Daniel’s Properties v. VIP Products, a case that addressed the same basic underlying precedent.

In its Jack Daniel’s decision, the Supreme Court held that the Rogers test exception to the Lanham Act did not apply when the expressive mark was used as a mark. The Supreme Court therefore drew a line between VIP’s use of “Bad Spaniels,” a direct play on “Jack Daniel’s” that was an expressive use of a mark as a mark, and use of a mark that was expressive but not used as a trademark. The Supreme Court’s ruling prompted the Ninth Circuit to reconsider its original decision in Punchbowl.

In its new decision, the Ninth Circuit, applying the rule of Jack Daniel’s, held that the Rogers test did not apply and that AJ Press’s use of the mark “Punchbowl” was not excepted from the Lanham Act as protected First Amendment expression. Rather, AJ Press’s use of “Punchbowl” was as a mark identifying its news service.

The Ninth Circuit stressed that this was not an automatic victory for Punchbowl, however. The Ninth Circuit instructed the district court on remand to proceed with a likelihood-of-confusion analysis test under the Lanham Act – an analysis that would consider many of the factors (such as the expressive nature of the trademark’s use) that had been relevant to the application of the Rogers test.

Keep Calm and Party On: New Issue Prohibition Doesn’t Apply to Motions to Amend

by Amol Parikh | Jan 25, 2024 | Patents

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board obviousness determination, explaining that inter partes review (IPR) statutory provisions that prohibit an otherwise time-barred party from introducing new issues into the proceeding do not apply to motions to amend. CyWee Group Ltd. v. ZTE (USA), Inc. et al., Case No. 21-1855 (Fed. Cir. Jan. 18, 2024) (Prost, Hughes, Stoll JJ.)

CyWee owns a patent directed to a “three-dimensional (3D) pointing device capable of accurately outputting a deviation including yaw, pitch and roll angles in a 3D reference frame and preferably in an absolute manner.” ZTE filed a petition for IPR of the patent asserting that certain claims were unpatentable. The Board instituted the IPR. LG later filed an IPR petition challenging the patent and moved to join ZTE’s ongoing IPR, stating that it would “act as a passive ‘understudy’ and [would] not assume an active role unless [ZTE] ceases to participate in the instituted IPR.”

While LG’s motion was pending, CyWee moved to amend its patent claims, contingent on cancellation of the original claims. ZTE opposed the motion to amend. The Board gave preliminary guidance that the proposed claims lacked written description support and introduced new matter, and also that one of the proposed claims was invalid over the asserted prior art.

The Board granted LG’s motion to join ZTE’s IPR proceeding but placed restrictions on LG’s participation that required LG to consolidate filings with ZTE, rely on ZTE to take and defend depositions, refrain from requesting or reserving additional deposition or oral hearing time, and agree to other procedural concessions to minimize delay to the IPR proceeding.

After LG’s joinder, CyWee filed a revised motion to amend. ZTE indicated that it did not oppose the motion. LG, arguing that ZTE was no longer actively participating in the IPR, moved for leave to oppose CyWee’s motion to amend. Ultimately, the Board permitted LG to present argument and evidence independent from ZTE. LG filed an opposition arguing that CyWee’s proposed revised claims were obvious over Withanawasam, Bachmann and Bachmann2. Notably, ZTE had not cited Withanawasam in its opposition to CyWee’s initial motion to amend.

After the Board issued its final decision finding that the proposed revised claims were obvious over Withanawasam, Bachmann and Bachmann2, CyWee appealed.

CyWee argued that the Board erred by allowing LG to oppose CyWee’s motion to amend in a manner that violated the terms of LG’s joinder and by allowing LG to raise Withanawasam in opposition to the motion to amend. The Federal Circuit rejected both arguments. The Court explained that the Board concluded that although ZTE still participated in the IPR, the proceeding “no longer appear[ed] to be meaningfully adversarial” as to the revised motion to amend. The Court found no error in the Board’s conclusion that ZTE was no longer an active participant in the IPR proceeding, and thus there was no violation of the joinder terms.

The Federal Circuit also concluded that the Board did not err [...]

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Don’t Cut, Paste, Copyright: Bonding over Borrowed Words

by Keval Amin | Jan 25, 2024 | Copyrights

The US Court of Appeals for the Seventh Circuit affirmed a district court’s award of attorneys’ fees and its determination that trivial additions to existing documents were not copyrightable. UIRC-GSA Holdings, LLC v. William Blair & Company, L.L.C., and Michael Kalt, Case Nos. 23-1527; -2566 (7th Cir. Jan. 12, 2024) (Brennan, Flaum, Kirsch. JJ.)

UIRC, a property management company overseeing leases for the US General Services Administration, sought copyright protection for two documents it produced related to a bond offering: a private placement memorandum (PPM) and an indenture of trust. UIRC did not create these documents from scratch but instead borrowed most of the language from the Idaho Housing and Finance Association. Nevertheless, UIRC secured copyright registrations by explicitly focusing on the “additional and revised text” it contributed, not the “standard legal language.”

While aiding UIRC in transactions utilizing its copyrighted documents, William Blair concurrently assisted a third party in a similar transaction. During that transaction, William Blair used UIRC’s copyrighted PPM and indenture of trust documents. In response, UIRC filed a copyright infringement suit against William Blair. The district court granted William Blair’s summary judgment motion, finding that UIRC’s documents lacked valid copyright protection because of the trivial nature of the language added to the bond documents, such as “facts, short phrases, and functional elements.” The district court also awarded attorneys’ fees to William Blair under 17 U.S.C. § 505, finding that three of the four factors from the 1994 Supreme Court of the United States decision in Fogerty v. Fantasy favored an award. UIRC appealed.

The Seventh Circuit affirmed, stressing that UIRC was not the original author of the copyrighted works since it did not independently create the PPM and indenture of trust documents. The Court explained that copyright protection requires original works with a minimal degree of creativity, a criterion UIRC failed to meet because its contributions resembled facts, fragmented phrases or language driven by functional considerations.

The Seventh Circuit heavily relied on the Supreme Court’s 1991 Feist Publ’ns v. Rural Tel. Serv. decision, drawing parallels to emphasize that UIRC’s bond documents, being “incredibly similar” to the Idaho Housing and Finance Association documents, lacked the necessary creative expression for copyright protection. The Seventh Circuit deemed trivial additions made by UIRC, which the Court categorized as “facts, short phrases, and functional language” ineligible for copyright protection. The Court highlighted the importance of independent creation using examples where even photographs of familiar characters were copyrightable due to the photographer’s “unique angle, perspective, lighting, and dimension.” In the present case, the Court found that UIRC’s contributions lacked the necessary creative expression. Accordingly, the Court concluded that UIRC’s bond documents were not protected by valid copyrights.

In addressing the attorneys’ fees award to William Blair, the Seventh Circuit applied the Fogerty factors:

Frivolousness of the Suit: The Court found that UIRC’s suit lacked merit, emphasizing the frivolousness factor in favor of William Blair.
Losing Party’s Motivation: UIRC’s lack of disclosure about the Idaho Housing and Finance Association documents was deemed [...]

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SHAZAM! CAPTAIN CANNABIS Registration Defeated by Prior Analogous Trademark Use

by Eleanor B. Atkins | Jan 18, 2024 | Trademarks

Addressing the issue of analogous trademark use, the Trademark Trial & Appeal Board designated precedential a September 6, 2022, decision in which the Board cancelled a registration for CAPTAIN CANNABIS based on the petitioner’s evidence of prior use that was “analogous to trademark use.” Laverne John Andrusiek v. Cosmic Crusaders LLC and Lewis J. Davidson, Cancellation No. 92064830 (TTAB Jan. 3, 2024) (Wolfson, Lynch, Larkin, ATJs).

Laverne John Andrusiek claimed to have first created a comic book featuring the title character, Captain Cannabis, during the 1970s. Although Laverne’s sales of comic books under the CAPTAIN CANNABIS mark did not begin until 2017, he promoted his Captain Cannabis character much earlier. For example, Laverne stated that he attended a trade show in New Orleans in 1999 where he distributed flyers describing an adult animated series “in development” featuring the character Captain Cannabis. That same year, Laverne registered the captaincannabis.com domain name, where he alleges he operated a website promoting and selling Captain Cannabis products. In 2006, Laverne claims to have printed 5,000 copies of a comic book that included a Captain Cannabis character and to have first sold those comic books via an online retailer, where sales continued through 2017.

Cosmic Crusaders registered CAPTAIN CANNABIS for “comic books” in Class 16. The subject application was filed on April 2, 2014, and issued on July 28, 2015. Laverne petitioned to cancel this registration in 2016 under Section 2(d) of the Trademark Act, claiming that use of this mark was likely to cause confusion with his prior common-law use of the identical mark in connection with identical goods. Cosmic Crusaders did not contest that contemporaneous use of both marks would be likely to cause confusion, and there was no dispute that the marks were not distinctive. Therefore, the only issue for the Board to determine was priority.

To establish priority, Laverne had to show (by a preponderance of the evidence) that he owns a trademark previously used in the United States that has not been abandoned. Because priority was based on common-law use in this case, Laverne was also required to establish prior actual trademark use or prior use analogous to trademark use, “such as use in advertising brochures, trade publications, catalogues, newspaper advertisements and Internet websites that created a public awareness of the designation as a trademark identifying Petitioner as the source of the relevant goods.”

Analogous use does not require “survey evidence or other direct evidence of the consuming public’s identification of the CAPTAIN CANNABIS mark with [Andrusiek] as the source of comic books or related goods such as DVDs and animated videos.” Rather, Laverne had to show that he had used the CAPTAIN CANNABIS mark in the US in a way that was “sufficient to create an association in the mind of the relevant consumers between the mark and the goods, followed by actual trademark use of the mark within a ‘commercially reasonable time.’”

The Board found that Laverne’s CAPTAIN CANNABIS mark was reasonably well known within the niche [...]

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