When the Trademark Trial and Appeal Board sided with Dr. August Wolff GmbH & Co. KG Arzneimittel in its efforts to register VAGISAN, Combe Inc., the maker of the widely known feminine product VAGISIL, called on Finnegan to defend its trademark. Combe argued that consumers would confuse the two brands and after hearing Finnegan’s arguments, the Eastern District of Virginia agreed. Law360 contacted Finnegan partners Douglas A. Rettew and Anna B. Naydonov to find out how they were able to secure the victory for Combe.
Survey evidence proved to be a critical component of the case. Finnegan hired one expert to conduct a survey on the fame of the VAGISIL mark, and another expert to conduct a second survey to see whether the VAGISAN mark would cause confusion. In the first survey, almost 40% of respondents named Vagisil when asked to name a vaginal care product. Ninety percent of respondents said they recognized Vagisil when asked whether they had heard of certain vaginal care brands. Rettew noted that these results were incredibly high for this type of survey. In the second survey, one fifth of respondents confused the two products.
When Dr. Wolff made the argument that buyers are going to be careful and pay close attention to what they’re buying when purchasing a product dealing with vaginal health, Rettew countered by saying, “It's not something [buyers are] going to want to showcase when they're running into CVS. They're going to grab it quickly and go. [The embarrassment] was part of the satire for the 'Saturday Night Live' skit and the 'South Park' episode. Because they're going to be embarrassed, they're going to grab it quickly, put in their cart and get out of the store. As a result, they're not going to pay as much attention and they'll be more likely to confuse something like Vagisan with Vagisil."
In addition to the surveys, Finnegan presented 1,500 exhibits to prove how popular Vagisil had become, including video clips from "South Park," "Saturday Night Live," "The Big Bang Theory," and more than 40 years of advertisements. But the challenge was presenting all of this evidence to a judge with a full docket and not much time. The Finnegan team opted to use Rule 1006 summaries, a rule that allows you to summarize large amounts of evidence, but is rarely used in trials. Naydonov said, “Usually people just use representative examples, and that's what happened [at the TTAB], which led the board to conclude there's no evidence of fame. Here, we really needed to make an impact and, in an efficient way, show ... there were hundreds of ads over the years.”
