FOR IMMEDIATE RELEASE
April 13, 2021
WASHINGTON, DC—Finnegan secured another win for client Combe Incorporated after a full trial before the Trademark Trial and Appeal Board (TTAB) involving Combe’s VAGISIL and VAGISTAT brands of feminine-care products. This win marks another milestone for Combe’s enforcement efforts. Among other things, the TTAB recognized “fame” of Combe’s VAGISIL mark—as did the U.S. District Court for the Eastern District of Virginia after a full trial in a separate case—and the “wide latitude of legal protection” that VAGISIL deserves.
The TTAB found that Combe established a likelihood of confusion between both of its VAGISIL and VAGISTAT marks with the challenged VAGISERT mark. In so doing, the TTAB held that “vagi-” “is not a generic term” for the vaginal care products at issue because consumers must use their “imagination to connect” this prefix with the parties’ goods. Given that, and the TTAB’s rulings on the other relevant likelihood-of-confusion factors, the TTAB sustained Combe’s opposition and refused the applicant’s two VAGISERT applications.
This case is Combe Incorporated v. Marke Enterprises, LLC, Opposition Nos. 91214779 (parent) and 91215509 (TTAB 2021).
Contacts
Anand K. Sharma, Managing Partner
anand.sharma@finnegan.com
Mark D. Sweet, Chair
mark.sweet@finnegan.com
About Finnegan
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is one of the largest IP law firms in the world. From offices in Atlanta, Boston, London, Palo Alto, Reston, Seoul, Shanghai, Taipei, Tokyo, and Washington, DC, the firm practices all aspects of patent, trademark, and copyright law, including counseling, prosecution, licensing, and litigation. Finnegan also represents clients on IP issues related to advertising, trade secret law, European patents and trade marks, international trade, portfolio management, the Internet, e-commerce, government contracts, antitrust, and unfair competition. For additional information on the firm, please visit www.finnegan.com. Follow us on LinkedIn and Twitter.
