IP Law Daily VAGISAN is confusable with VAGISIL for feminine care products
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Wednesday, April 14, 2021

VAGISAN is confusable with VAGISIL for feminine care products

By Cheryl Beise, J.D.

Trial evidence supported the district court’s judgment, blocking registration of VAGISAN in the United States.

The federal district court in Alexandria did not err in finding that a German company’s mark VAGISAN used on feminine care products was likely to cause confusion with Combe, Inc.’s VAGISIL brand used on identical and overlapping goods, the U.S. Court of Appeals in Richmond has held. The district court properly evaluated the relevant likelihood of confusion factors in light of the evidence presented at trial, including overwhelming evidence of the commercial strength of VAGISIL brand products and Combe’s Eveready consumer survey and a brand recognition, or "fame," survey (Combe Inc. v. Dr. August Wolff GmbH & Co. KG Arzneimittel, April 13, 2021, per curiam).

Since 1973, Combe, Inc. has sold a variety of feminine care products under the mark VAGISIL. Combe owns several registrations for VAGISIL for feminine and personal care products, the oldest dating to 1978. Germany-based Dr. August Wolff & Co. KG Arzneimittel ("Wolff") sells VAGISAN products throughout Europe, Asia, and the Middle East. Wolff owns trademark registrations for VAGISAN in more than a dozen countries.

In 2012, Wolff filed an application under Section 66(a) of the Trademark Act, seeking an extension of protection for its VAGISAN mark. Combe opposed Wolff’s application on the ground of likelihood of confusion with VAGISIL. In June 2017, the Trademark Trial and Appeal Board dismissed the opposition, finding that VASISIL and VAGISAN were not likely to be confused. Combe sought review of the dismissal in the federal district court in Alexandria, Virginia, pursuant to 15 U.S.C. § 1071(b). Following a bench trial, the district court ruled in favor of Combe. The court found that six likelihood of confusion factors weighed heavily in favor of a determination that confusion would likely result if VAGISAN were registered. Wolff appealed.

On appeal, Wolff contended that the district court erred in finding likelihood of confusion, In particular, Wolff challenged the court’s assessment of four likelihood of confusion factors relating to: the strength or distinctiveness of the VAGISIL mark, the similarity of the parties’ marks, actual confusion, and consumer sophistication. The Fourth Circuit reviewed each factor.

Strength of the VAGISIL mark. The district court found that VAGISIL mark was a suggestive mark whose conceptual strength was "weakened" by the existence of a number of third-party marks using the letters "vagi-" as a prefix. However, any conceptual weakness was overcome by overwhelming evidence of VAGISIL’s commercial strength. Wolff argued that the district court erred by not recognizing that the evidence of third-party products beginning with "vagi-" also demonstrated Vagisil’s commercial weakness. According to Wolff, consumers are used to distinguishing between multiple products that begin with the letters "vagi-." Wolff also contended that the district should have rejected Combe’s brand recognition survey, the "fame survey." The survey showed that 38.7% of the respondents named Vagisil on the unaided portion; Vagisil has an 85% recognizability rate on the aided portion.

The Fourth Circuit saw nothing clearly erroneous about the district court’s finding that the strength factor favored Combe, particularly in view of the undisputed substantial evidence establishing the commercial strength of VAGISIL. Since 1991, products sold under the VAGISIL mark have totaled more than one billion dollars in sales revenue. VAGISIL brand products account for more than half of the market share in the feminine anti-itch cream and feminine power markets and 94% of the feminine medicated wipes segment.

The court was not persuaded by Wolff’s argument that the presence of third-party products that begin with the letters "vagi-" diminished the commercial strength of VAGISIL. The district court noted that almost most 60 percent of the marks Wolff identified had been abandoned or were found in applications for mark registration (39 were cancelled or expired) and thus had no actual commercial presence that could affect Vagisil’s strength.

According to the Fourth Circuit, the district court also appropriately gave little weight to generic "Vagicaine" products sold by big-box retailers because consumers did not associate them "as a source-identifying brand," but instead recognized them as a generic product seeking to imitate VAGISIL’s anti-itch cream. The Fourth Circuit found that the district court properly considered the evidentiary value of the fame survey, weighing the testimony of both parties’ experts. The appeals court declined to second guess the credibility of witnesses. The record also supported the survey’s use of "vagizox" as the control brand.

Similarity of marks. Wolff argued that the district court erred in finding the marks were similar. According to Wolff, the district court should not have considered the marks as a whole when considering their similarities, but instead should have focused solely on their "dominant" last three letters. The Fourth Circuit rejected this argument as contrary to precedent. The court reiterated that courts should consider the entire word when analyzing the similarity of single-word marks. The district court’s reasoning for finding the marks to be similar in sight, sound, and meaning was sound.

Actual confusion. Because the parties’ products have not been sold together on store shelves domestically there was no opportunity for actual confusion to arise in the marketplace. The district court instead relied on Combe’s consumer survey in finding actual confusion.

Below and on appeal, Wolff argued that Combe’s confusion survey had design flaws that skewed the results and that Combe’s expert, Hal Poret, compounded those errors in how he tabulated the survey’s results. Employing the Eveready methodology, the survey polled 400 female consumers of vaginal-health products, using the word "Vagisan" in the test group and "Vagipur" in the control group. Wolfe objected to the use of "Vagipur" and to presenting its VAGISAN mark apart from its packaging. Poret testified that the survey yielded a statistically significant net confusion rate of 19%. For its part, Wolff tabulated the confusion rate to be about 11%.

The Fourth Circuit declined to usurp the role of factfinder and reweigh the evidence. Poret’s survey followed the widely accepted Eveready methodology. The district court adequately explained it reasoning for finding the survey persuasive, including why "Vagipur" was an appropriate control. The district court’s assessment of the actual confusion factor was not clearly erroneous.

Purchaser sophistication. The district court deemed the purchaser sophistication factor to be neutral. Wolff contended that the record showed that consumers select vaginal-health products with a high degree of care. The Fourth Circuit explained that this factor is only of moment when the target market is not the public at large, but rather a specialized group of purchasers with particular knowledge or expertise. In this case, the parties’ products were marketed broadly to female consumers as a whole. The court found no error in the district court’s determination.

Finding that the district court did not clearly err as to any of the challenged factors, the appellate court affirmed the district court’s judgment.

Practitioner comments. Representing Combe in this case, Finnegan attorneys Sydney English, Anna Naydonov, and Douglas Rettew said they were pleased with ruling, particularly the Fourth Circuit’s finding that the district court "appropriately considered the evidentiary value" of Combe’s fame survey, which showed 38% unaided and 90% aided recognition of the VAGISIL mark among the general public. This win follows on the heals of the team’s recent trial victory before the Trademark Trial and Appeal Board in Combe, Inc. v. Marke Enterprises LLC, where registration for VAGISERT was refused as confusingly similar to Combe’s VAGISIL and VAGISTAT marks.

This case is No. 19-1674.

Attorneys: Sydney N. English, Anna Naydonov, and Douglas Rettew (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) for Combe Inc. Michael Abbott Grow (Arent Fox LLP) for Dr. August Wolff GmbH & Co. KG Arzneimittel.

Companies: Combe Inc.; Dr. August Wolff GmbH & Co. KG Arzneimittel

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