How Finnegan Won the Vagisil-Vagisan Trademark Battle

Vagisil products, represented by Finnegan partners Douglas “Chip” Rettew and Anna Naydonov, won a district court judgment blocking competitor Vagisan from registering in the United States. Combe Inc., the maker of Vagisil, hired Finnegan after the U.S. Patent and Trademark Office (PTO) ruled to register the Vagisan mark in 2017.

“It’s been featured in South Park, the Big Bang Theory and, I think the coup de grace for a trademark, it had its own skit on Saturday Night Live,” said Rettew. Finnegan made the commercial strength of the Vagisil mark clear by presenting evidence of more than $1 billion in sales, some 90 TV commercials, 100-plus radio ads and survey results finding 90% of respondents recognized the brand, including 38% of men naming Vagisil by name when asked to list intimate care products. Surveying men may seem counterintuitive but Rettew explains “we wanted to show that this mark is famous not just among buyers, but among the whole general public.”

In presenting 66 U.S. products using the pre-fix “Vagi,” counsel for the defendants attempted to claim that a crowded field leads women to focus on the “suffix of the mark.” Finnegan revealed that the majority of these 66 products were very small, internet-only brands and the court agreed, ruling them “commercially insignificant.” Additionally, Rettew and the team found that many women are embarrassed about purchasing these products which could lead to confusion if the products are not easily distinguishable. “And so grabbing it quickly off the shelves, there’s more of a chance that they’re gonna make a mistake,” said Rettew.

Although trying a feminine product case could be considered awkward, Rettew responded “It is different than litigating a case involving sporting goods, but we played that to the strength of our case. That’s exactly what we’re talking about when we say this is the type of product that people grab and go when they’re in a store. And that’s why it’s something that we have to make sure another company can’t use a similar mark for, because there is high likelihood that people will confuse the brand.”