Personal-care company Combe Inc. secured a victory after a bench trial before the Honorable T.S. Ellis in the U.S. District Court for the Eastern District of Virginia involving the VAGISIL brand of feminine-care products. The win marks an important milestone for the New York-based company’s enforcement efforts, as the court held that “VAGISIL is a famous mark that has attained substantial commercial strength.”
Combe were represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, known for their trademark litigation and non-contentious work, with the team being led by partners Douglas Rettew and Anna Naydonov.
The case was won on a de novo appeal from an adverse ruling against Combe before the Trademark Trial and Appeal Board (TTAB), where Combe was represented by different counsel. Among other things, the case involved novel questions regarding the proper methodology for trademark surveys in 15 U.S.C. § 1071(b) cases. It was successfully argued that in such cases, involving issues of registrability only, surveys should display the defendant’s mark as it appears in the challenged application (not as it may be used in the marketplace). Accepting Combe’s methodology and rejecting criticisms by the defendant’s expert, the court concluded that the results of Combe’s confusion survey were “powerful evidence of actual confusion.”
Combe’s position was strengthened with a fame survey showing substantial recognition of the VAGISIL mark among the general public. Voluminous evidence was also marshalled of the VAGISIL mark’s fame amassed over 40 years of the brand’s history, combined with powerful admissions on cross-examination.
Evidence of third-party “VAGI”-formative marks for feminine care products was effectively neutralized by showing that those uses were obscure and commercially insignificant. In a 52-page opinion, the court reversed the TTAB decision and found likelihood of confusion between the parties’ VAGISIL and VAGISAN marks.
The case is Combe Inc. v. Dr. August Wolff GMBH & Co. KG Arzneimittel, 1:17-cv-00935, E.D. Va.