Reversing the TTAB’s June 19, 2017 decision [TTABlogged here], the U.S. District Court for the Eastern District of Virginia found the mark VAGISAN for various feminine hygiene products likely to cause confusion with the registered mark VAGISIL for overlapping products. Appellant Combe’s survey evidence, sales figures, advertising, and unsolicited media recognition persuaded the district court that VAGISIL is commercially famous. Due to their “close similarities in sight, sound, and meaning,” the Board concluded that the marks are “sufficiently similar” to confuse consumers. Moreover, the results of Combe’s confusion survey was “powerful evidence of actual confusion.” Combe Incorporated v. Dr. August Wolff GmbH & Co. KG Arzneimittel, Civil Action No. 1:17-cv-00935 (E.D. Va. May 23, 2019) (Judge T.S. Ellis, III).

Combe filed its civil action under Section 1071(b), seeking review of the Board’s unfavorable decision. It tacked on counts for trademark infringement, unfair competition, and dilution, all of which claims were dismissed because the defendant does not currently use the VAGISAN mark in the United States. The parties introduced new evidence in addition to the USPTO record, and so the court was required to conduct a de novo review of the factual record.

In determining the issue of likelihood of confusion, the court applied the 4th Circuit’s Swatch factors. The court observed that since the only issue was the registrability of defendant’s mark, it must consider the depiction and description of the VAGISAN mark as set forth in its application to register, and not defendant’s actual use of the VAGISAN mark.

The court found plaintiff’s VAGISIL mark to be inherently suggestive, not descriptive, but the mark’s conceptual strength is weakened by the “prevalent use of similar ‘vagi-‘ prefix marks by third parties. As to commercial strength, however, “sales, marketing, unsolicited media attention, and brand recognition by consumers” convinced the court that VAGISIL is a famous mark. A “fame” survey conducted by Hal Poret showed 38.7% unaided brand recognition, and 85% recognition in the aided portion of the survey. The court noted that these rates “far surpass the degree of recognition from similar surveys that courts have found sufficient to demonstrate the commercial strength of a mark.”

The parties disputed whether conceptual strength or commercial strength carries more weight, but the court pointed to 4th Circuit precedent indicating the commercial strength “in certain circumstances . . . can be more important.”

The court found that the marks, when compared in their entireties, are confusingly similar, and “defendant has not shown that consumers have been educated to distinguish between the marks based on minor differences.”

As to the goods, certain of the parties’ goods are identical, and the court must presume that those goods travel in the same channels of trade.

There was no anecdotal evidence of actual confusion, but the court perceptively noted that “because defendant has not begun to use its VAGISAN mark in United States commerce, a lack of anecdotal evidence of confusion is unsurprising and is thus not meaningful in this case.” However, Plaintiff Combe introduced a “confusion” survey conducted by Mr. Poret, employing the well-established Evereadyformat, which survey showed a net confusion rate of 19%. That figure exceeds survey results that courts have deemed to be strong evidence of confusion. The court found the survey results to be “reliable and … powerful evidence of actual confusion.”

Finally, as to the care exercised by purchasers, the court found that some consumers will spend time researching the parties products while others purchase hastily because they are embarrassed about the conditions treated by the products. And so this factor was not entitled to significant weight.

Balancing these factors, the court concluded that “defendant’s VAGISAN mark is not registrable and that the ruling of the TTAB dismissing plaintiff’s opposition to defendant’s application to register the VAGISAN must be reversed.”

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TTABlog comment: The survey evidence was clearly decisive.

Text Copyright John L. Welch 2019.