Experience
Combe Inc.
Dr. August Wolff GmbH & Co. KG Arzeneimittel
Finnegan secured a victory for client Combe 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.”
A fame survey showing 38% unaided and 90% aided recognition of the VAGISIL mark among the general public strengthened Combe’s position. Finnegan also marshalled voluminous evidence (over 1,500 trial exhibits were admitted during the direct testimony of Combe’s main marketing witness) of the fame of the VAGISIL mark 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.
Combe Inc. v. Dr. August Wolff GmbH & Co. KG Arzeneimittel, 1:17-cv-00935, E.D. Va., Judge Ellis
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