Ethan Van Sciver motions for summary judgment in #Comicsgate trademark trial after prevailing in ex parte reexamination hearing, sues Preston Poulter for $4 million

by 01.17.2023

Cyberfrog creator Ethan Van Sciver on Jan. 9 motioned for summary judgment in the Comicsgate trademark trial at the Trademark Trial and Appeals Board (TTAB) after prevailing in an ex parte reexamination proceeding on Jan. 6 in which he successfully proved the trademark was used in commerce by Antonio Malpica via licensed uses to Anthony “Dark Gift Comics” Romano, Mandy Summers and others in the class of comics in 2020.

Since nonuse and abandonment of the mark were among the principal allegations being made by Poulter in the TTAB trial to cancel the trademark, Van Sciver’s attorney Scott Houtteman argued in a TTAB motion on Jan. 9, TTAB is now left with no choice but to render judgment in favor of Van Sciver, since USPTO has already determined that the mark was used in commerce.

The motion stated, “In its Notice of Termination the USPTO found evidence that registrant demonstrated: ‘valid use of the relevant goods in interstate commerce. Registrant has also established that the relevant goods were provided through trade channels that directly affect interstate commerce.’ … As a result, the USPTO required no changes to the registration. This determination is final, cannot be appealed by Petitioner and no further review is available.”

Per federal regulations governing the reexamination proceedings, once commenced “the petitioner will have no further involvement”: “[I]f the USPTO determines that the petition establishes a prima facie case of nonuse during the relevant time period and institutes an expungement or reexamination proceeding, such proceeding is ex parte, and, as noted in the NPRM and reiterated above, the petitioner will have no further involvement.”

Meaning Poulter saved TTAB the trouble of having to hear most of the Comicsgate trial. The mark was used in commerce.

As a result, Houtteman argued, “In view of this USPTO finding that the mark was in use, Registrant moves for judgment in favor of Registrant and against Petitioner on two of the three grounds raised in this Cancellation, both of which required Petitioner to prove non-use of the mark: (1) COUNT I: Abandonment and non-use and (2) COUNT III: No use before statement of use.”

When Congress modernized trademark law via the Trademark Modernization Act of 2020 and a Nov. 2021 Biden administration regulation to create the ex parte reexamination proceedings, it was to expedite cancellation trials. Since it was an ex parte hearing, Poulter and his attorney — who opted for this process, he didn’t have to use it — were not allowed to challenge any of the evidence that Van Sciver provided showing the mark was affixed to goods sold and delivered before an Aug. 2020 legal deadline to show use.

There is some irony in the fact that Poulter was so litigious he opted to use every motion available to him, even apparently those like the reexamination proceeding that ultimately favored Van Sciver, hampering Poulter’s sagging legal effort to cancel the Comicsgate trademark by denying his own right to argue at the trial.

Not that it would have mattered much. As noted in this column, as a customer of both of the products at question in the reexamination proceeding, The Dark of Midnight by Anthony Romano and Wart the Wizard: Sunday Follies by Anthony Romano and Mandy Summers, both were definitely sold and delivered prior to the Aug. 2020 legal deadline.

I bought “The Dark of Midnight” in May 2020 on Lulu.com, where it remains on sale today.

I also backed the original “Wart the Wizard,” in which every backer got a copy of “Wart the Wizard: Sunday Follies,” in Oct. 2019, which remained on sale as a separate product on StuntmanComics.com while “Wart the Wizard” was in-demand before selling out recently.

As a customer, I can attest that I received both after my purchases, with “Wart the Wizard” fulfilling beginning in July 2020 and “The Dark of Midnight” which delivered in June 2020, all prior to the Aug. 13, 2020 legal deadline prescribed by USPTO. The pictures in this article are of my books that I bought.

I also kept my receipts.

Here’s “The Dark of Midnight,” bought on May 18, 2020 from Lulu.com:

And here’s “Wart the Wizard,” purchased on Oct. 12, 2019 from Indiegogo.com:

Very importantly, both bore the Comicsgate trademark, albeit Romano’s (no relation to this author) own iteration of it owing to his own application for the trademark dating to May 2020, which has now been joined with Van Sciver’s own application for the service mark, and the Malpica mark for comic books, which has been assigned to Van Sciver.

In terminating the reexamination proceeding, USPTO stated, “Upon review of the evidence of record, the USPTO determined that registrant has demonstrated use of the mark in commerce for all goods, subject to the proceeding. 37 C.F.R. §2.93(c)(3)(i). The evidence and arguments provided by the registrant demonstrates valid use of the relevant goods in interstate commerce. Registrant has also established that the relevant goods were provided through trade channels that directly affect interstate commerce during the period of time relevant to this proceeding. Accordingly, no change is required to the registration…”

In the meantime, Van Sciver, fresh off his win in the reexamination proceeding, is now suing Poulter in New Jersey Superior Court of Burlington County for up to $4 million for trademark counterfeiting and infringement for at least 15 products since spring 2020, arguing “Poulter knows that the federal government has not granted him ownership of the trademark COMICSGATE… Poulter is now engaged in a massive program of unauthorized commercial use of Van Sciver’s trademark as illustrated by the following fifteen (15) infringing products, each of which use the unauthorized COMICSGATE logo…” This author made a video noting this activity in July 2021.
 

 
Finally, Van Sciver has filed an for an additional trademark for Comicsgate in clothing and launched a new Comicsgate apparel campaign on Indiegogo, which has already raised more than $50,000. Some of the products denote the date, 2018, demarcating Van Sciver’s first use of the Comicsgate common law trademark in commerce on Twitter and YouTube. The federal trademark, originally registered by Antonio Malpica on Van Sciver’s behalf,  was assigned to Van Sciver in April 2021.

Robert Romano is the Editor-in-Chief of Comicsgate.org. 

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