June 24, 2019
World Trademark Review
After a full bench trial, the Eastern District of Virginia recently issued a decision in favor of Combe, the maker of the VAGISIL feminine-care products, blocking registration by a competitor for the VAGISAN mark. This win marks an important milestone for the client’s enforcement efforts, with the court holding that VAGISIL is a famous mark that has attained substantial commercial strength.” Consumer surveys were at the forefront of delivering this victory.
The case was a de novo appeal from an adverse ruling against Combe before the TTAB (Combe was represented by different counsel below). The TTAB found that Combe fell short of establishing fame of the VAGISIL mark. Because fame plays a dominant role in weighing the likelihood-of-confusion factors, establishing fame via robust evidence was critical. And given the defendant’s reliance on third-party uses of VAGI marks for feminine products, it was important to neutralize the claims that those third-party uses somehow diminished consumer recognition of the VAGISIL brand.
Working with Hal Poret - a well-respected survey expert - we conducted a fame survey, which showed 38% unaided and 90% aided recognition of the VAGISIL mark among the general public. The 38% unaided recognition resonated with the court, especially because the survey included the general population (not just purchasers of vaginal care products).
For the aided portion of the fame survey, respondents were shown a total of eight names (including VAGISIL), one at a time, and for each name were asked whether or not they have ever seen or heard of the name in connection with any vaginal-care product. An array of names was carefully constructed to include an assortment of well-known vaginal care products (MONISTAT and SUMMER’S EVE), lesser known but commonly available products, and relatively unknown products, including a fictional control name VAGIZOX. Selecting a control with the “VAGI” prefix (which, the defendant claimed is commonly used for vaginal-care products) ensured that respondents were not claiming awareness of VAGISIL simply because it contained the prefix.
Moreover, we used the fame survey to show that third-party VAGI marks did not diminish the strength of the VAGISIL mark because less than 1% of respondents in the unaided portion of the survey named a third-party VAGI mark they had seen or heard of. The court agreed that “[t]his empirical evidence reinforce[d] the conclusion that the third-party marks submitted by defendant are commercially insignificant.”
Additionally, we relied on a likelihood-of-confusion survey to reverse the TTAB ruling. There, we faced novel questions regarding proper stimulus for confusion surveys in 15 USC §1071(b) appeals from an 6/25/2019 Survey evidence takeaways: inside the VAGISIL versus VAGISAN dispute adverse TTAB ruling to a district court.
Specifically, we argued that surveys in district court §1071(b) appeals involving issues of registrability only (not infringement) should display the defendant’s mark as it appears in the application, not as it may be used in the marketplace.
Here, the defendant’s VAGISAN mark appeared in block letters in its trademark application (with no stylizations, logos, or packaging). The defendant’s expert, Dr Itamar Simonson, criticized the survey design, arguing that because this was an appeal to the district court, Combe should have used the defendant’s actual packaging. And even though the defendant has not yet offered any products in the US, Simonson argued that Combe should have used the defendant’s foreign packaging as a proxy for the packaging that may eventually be launched in the US.
Rejecting Simonson’s criticism, the court concluded that Combe properly displayed the VAGISAN mark in block letters (as it appears in the application) and found that the results of the confusion survey were “powerful evidence of actual confusion.”
In addition to clarifying the standard for survey methodology in § 1071(b) appeals involving registrability only, the court’s opinion addresses a criticism commonly advanced by defendants in attacking likelihood-of-confusion surveys. The defendant argued that Poret incorrectly tabulated survey results by deducting the percentage of confused respondents in the control cell from the percentage of confused respondents in the test cell. Instead, the defendant claimed, Poret should have analyzed the answers to the follow-up “why?” questions for those who answered VAGISIL in response to the Eveready questions designed to test confusion. If, in response to confusion questions, participants named VAGISIL for reasons other than similarity with VAGISAN, those participants, the defendant claimed, should not have been counted.
The court disagreed and held that a control group is a more scientifically-sound way to whittle out noise. The court noted that “the methodology advocated by defendant is scientifically inferior to using an effective control.” Sifting through verbatim respondents for signs of trademark confusion is subjective and unreliable because survey respondents are lay people who may not know or accurately articulate the actual reason VAGISIL came to mind when they were shown the VAGISAN mark. The take-away? As we all know, surveys are key—especially when trying to reverse an adverse TTAB ruling. But surveys are not only helpful to show fame and likelihood of confusion. Survey responses may be used to neutralize third-party evidence. Indeed, third-party evidence diminishes the strength of the plaintiff’s mark only if consumers are familiar with/have been exposed to the third-party uses. If, in response to-open ended survey questions participants fail to identify any third parties, it may serve as empirical proof that the third parties are commercially insignificant (and thus cannot decrease the strength/fame of the asserted mark).
Originally printed in World Trademark Review ion June 24, 2019. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm’s clients.
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