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The Conan Barbarian and pizza

The CONAN character was created in 1929 by Robert Howard. But the character remained relatively dormant until the 1950’s, when L. Sprague deCamp, a contemporary author, rediscovered and began writing books featuring CONAN THE BARBARIAN. Many of deCamp’s works were illustrated by Frank Frazetta. In 1970, the Howard estate licensed Marvel Comics to publish a series of comic books featuring CONAN THE BARBARIAN.

To avoid litigation over who had rights in CONAN THE BARBARIAN, the Howard estate and deCamp united their interests in the CONAN character in 1976 and formed CPI. DeCamp is one of the two 50% shareholders of CPI. In that same year the United States Patent and Trademark Office (USPTO) granted CPI a federally registered trademark for the title “CONAN THE BARBARIAN” for comic books.

Also in this same year, Scott Leist and Jerry Strader opened “Conans Pizza”, a restaurant in Austin, Texas. The restaurant’s menus, signs, promotional material, specialty items, and general decor featured a barbarian-like man who closely resembled CPI’s CONAN character. The owners decorated the restaurant with dozens of reproductions of Frank Frazetta’s artwork, although only a few of the reproductions actually represented CONAN THE BARBARIAN.

In January 1981, CPI wrote to Conans Pizza and for the first time objected to Conans’ use of CPI’s mark. CPI demanded Conans cease using the mark. Later in 1981, Conans discontinued using much, but certainly not all, of the CONAN THE BARBARIAN indicia. It continued using “Conan” in its trade name and describing the featured pizza as “The Savage”. It removed only those Frazetta prints that actually depicted CONAN, though the remaining prints closely resembled those few that featured CONAN. CPI filed suit in March 1982, approximately 5 1/2 years after deCamp first saw Conans Pizza.

From 1976 to 1980, Conans had opened four additional “Conans Pizza” restaurants in the Austin area. In April 1980, before CPI had sent its letter objecting to the use of the name “Conans Pizza”, Conans filed with the USPTO an application for the service mark “CONANS PIZZA” for restaurant services. That application was granted by the USPTO in July 1982, after this suit had been filed. In the meantime, in January 1982, before this suit was filed but after Conans had received CPI’s letter of objection, Conans opened a Conans Pizza restaurant in San Antonio, Texas. This restaurant was the sixth in the chain and the first outside the Austin area. Conans’ combined sales from its six restaurants increased thirty-fold from 1976 to 1982, accounting for gross annual sales exceeding $3,000,000.

In its suit CPI sought injunctive relief, damages, and an accounting for profits. CPI alleged that the name Conans Pizza and Conans’ activities infringed CPI’s federally registered trademark under section 32(1) of the Lanham Trademark Act, 15 U.S.C. § 1114(1) (1982), created a false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1982), and constituted unfair competition and misappropriation of its merchandising property under Texas common law. Conans denied each of CPI’s allegations and asserted the equitable defenses of laches and acquiescence.

Prior to trial Conans moved for partial summary judgment on CPI’s common law claim for misappropriation of a merchandising property. The district court granted the motion and dismissed this claim. The remaining issues were tried and submitted to the jury. By a special verdict, the jury found that CPI had proved all of the elements of both a trademark infringement claim under the Lanham Act and an unfair competition claim under Texas common law.

The jury found, however, that CPI had not proved all of the elements under the Lanham Act of its false designation of origin claim. In response to other special interrogatories, the jury determined that Conans’ acquiescence and laches defenses were valid and precluded either the recovery of damages or an accounting for profits by CPI. After the trial CPI moved for injunctive relief, seeking to prevent Conans from using the mark CONANS PIZZA both locally and nationally. A nationwide injunction was particularly important to CPI because Conans was tentatively planning a national franchising scheme. The district court denied CPI’s post-trial motion for injunctive relief.

The evidence adduced at trial revealed that Conans was aware of the CONAN THE BARBARIAN character prior to its adoption of the name Conans Pizza. Additionally, Conans’ menus, advertising material, specialty items, and general decor featured a character unmistakably similar if not identical to CONAN THE BARBARIAN. Although CPI never licensed any entity to use its mark in connection with restaurant services, ordinary consumers may well believe that Conans was in fact licensed by CPI. The appeal held that CPI has not carried its burden of proving that Conans subjectively and knowingly intended to use its mark for the purpose of deriving benefit from CPI’s goodwill. Conans therefore was able to assert the equitable defenses of laches and acquiescence.

Conans received CPI’s cease and desist letter prior to opening the San Antonio restaurant. Conans therefore opened that restaurant at its own peril, without the defenses of laches and acquiescence. In cases where the defendant actually relies upon the plaintiff’s affirmative act, however, the fiction of implied consent is inapplicable and an injunction may not issue. In this case CPI unreasonably delayed in protecting its rights in Austin, and its dilatoriness prejudiced Conans. Moreover, through the affirmative acts of L. Sprague deCamp, one of its agents, CPI implicitly if not explicitly authorized Conans to continue using the CONAN THE BARBARIAN name and image in connection with restaurant services in Austin.

Responding to the special interrogatories, the jury found that Conans had proven all of the elements of the defenses of laches and acquiescence. The jury’s affirmative finding of acquiescence establishes the reliance necessary to preclude the issuance of an injunction,  and the record supports the jury’s implicit conclusion that Conans relied upon deCamp’s conduct. The appeal therefore held that the district court properly denied CPI’s post-trial request for injunctive relief related to the Austin area. The appeal concluded that CPI is entitled to an injunction prohibiting Conans from infringing its mark in CONAN THE BARBARIAN in areas outside Austin, Texas.

CPI argued that it has exclusive rights in the name Conan in any form and in connection with any product or service. The appeal rejected this argument. Although CPI has protectable rights in the CONAN THE BARBARIAN name and character, the appeal held that CPI lacks similar rights in merely the name Conan. “Conan” is a surname and can be regarded as a descriptive term rather than an inherently distinctive mark. Descriptive terms may acquire trademark protection only with a showing that through usage the name has acquired distinctiveness (the so-called secondary meaning requirement) in the minds of ordinary consumers.

At trial CPI failed to introduce any evidence, testimonial, statistical, or otherwise, demonstrating that its use of merely the name Conan established the requisite distinctiveness in the minds of ordinary consumers. CPI’s failure to introduce any evidence establishing secondary meaning in the name Conan mandated denying the extraordinarily broad injunction it sought. The appeal concluded, therefore, that Conans’ use of its trade name on existing and future restaurants outside Austin poses no legally significant threat to CPI’s mark.