Combe Inc. v. Dr. Aug. Wolff GMBH & Co.
382 F. Supp. 3d 429
E.D. Va.2019Background
- Combe Inc. (VAGISIL) has sold vaginal-care products in the U.S. since 1973, obtained federal registrations beginning in 1978, and built substantial commercial prominence (over $1 billion sales since 1991; high market shares in key segments).
- Defendant Dr. August Wolff (VAGISAN) has used/registered VAGISAN abroad since 1998 but has never sold VAGISAN products in U.S. commerce; it applied to register VAGISAN in the U.S. (standard characters, broad goods) in 2012.
- TTAB dismissed Combe’s opposition in 2017 (found no likelihood of confusion and bona fide intent), and Combe appealed to the district court under 15 U.S.C. § 1071(b).
- At bench trial both sides introduced expert consumer surveys: Combe’s Fame and Eveready-style Confusion surveys (showing high aided/unaided awareness for VAGISIL and a net 19% confusion rate), and defendant’s expert critiqued survey methodology.
- Defendant submitted numerous third‑party marks with the “vagi‑” prefix (many inactive or commercially insignificant) and evidence of private‑label generic products (e.g., “Vagicaine” sold under store brands).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Scope of likelihood‑of‑confusion analysis in a §1071(b) registrability appeal | Court should assess confusion based on the mark as presented in the application (standard character) and the goods listed there | Court should consider actual marketplace use/packaging where available | Held for plaintiff: analysis limited to the mark and goods as described in the application, not narrower foreign or marketplace uses |
| Strength (distinctiveness/fame) of the senior mark VAGISIL | VAGISIL is suggestive and commercially strong (extensive sales, advertising, unsolicited media, surveys showing 38.7% unaided and 90% aided recognition) | Third‑party “vagi‑” marks and private‑label uses weaken VAGISIL’s distinctiveness | Held for plaintiff: VAGISIL is famous and overall strong despite conceptual weakening from third‑party registrations; commercial strength dominates |
| Reliability and probative value of surveys (Fame and Confusion) | Surveys used accepted methodologies (Eveready format for confusion), adequate controls, and produced significant metrics (85% net fame; 19% net confusion) | Surveys are flawed: poor controls, not marketplace‑replicating stimuli, and improper respondent coding | Held for plaintiff: surveys reliable; controls adequate; criticisms unpersuasive given registrability context and corroborating unaided fame results |
| Likelihood of confusion and registrability of VAGISAN | Similarity in sight, sound, meaning; overlapping goods and channels; actual‑confusion survey evidence show consumer confusion | Defendant lacked intent to deceive; many third‑party “vagi‑” uses and some different product packaging reduce confusion risk | Held for plaintiff: applying the nine‑factor test (strength, similarity, goods, trade channels, advertising, intent, actual confusion, product quality, consumer sophistication) the court found a likelihood of confusion and reversed the TTAB — VAGISAN not registrable |
Key Cases Cited
- Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150 (4th Cir. 2014) (district court reviews registrability appeals de novo and may consider new evidence)
- B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (U.S. 2015) (likelihood‑of‑confusion standard applies to both registration and infringement, but context differs)
- CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263 (4th Cir. 2006) (defines focus of infringement confusion inquiry and factors for strength analysis)
- George & Co. LLC v. Imagination Entertainment Ltd., 575 F.3d 383 (4th Cir. 2009) (sets out framework for comparing marks and weighing likelihood‑of‑confusion factors)
- Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir. 1984) (discusses distinctiveness spectrum and relevance of intent in infringement/registration cases)