FOR IMMEDIATE RELEASE
June 13, 2019
WASHINGTON, DC— Finnegan secured a victory for client Combe Inc. 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 client’s enforcement efforts, as the court held that “VAGISIL is a famous mark that has attained substantial commercial strength.”
Finnegan won the case 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. Finnegan 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. Finnegan also marshalled voluminous evidence of the VAGISIL mark’s fame amassed over 40 years of the brand’s history, combined with powerful admissions on cross-examination.
Finnegan effectively neutralized evidence of third-party “VAGI”-formative marks for feminine care products 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.
This full trial win underscores the depth of Finnegan’s renowned trademark practice. Year over year, the firm has been honored by peers and in-house counsel as a go-to firm for trademark litigation, prosecution, and counseling. Already in 2019, World Trademark Review, Managing Intellectual Property, and The Legal 500 have ranked Finnegan as a top firm for trademark litigation and non-contentious work.
The case is Combe Inc. v. Dr. August Wolff GMBH & Co. KG Arzneimittel, 1:17-cv-00935, E.D. Va.
Contacts:
Douglas (Chip) A. Rettew
doug.rettew@finnegan.com
Anna B. Naydonov
anna.naydonov@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, copyright, and trade secret law, including counseling, prosecution, licensing, and litigation. Finnegan also represents clients on IP issues related to 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.
