Finnegan, Henderson, Farabow, Garrett & Dunner LLP

04/13/2021 | Press release | Distributed by Public on 04/13/2021 15:20

Finnegan Secures TTAB Win in VAGISIL Trademark DisputeFinnegan Secures TTAB Win in VAGISIL Trademark Dispute

FOR IMMEDIATE RELEASE
April 13, 2021

WASHINGTON, DC-Finnegan secured another win for client Combe Incorporated after a full trial before the Trademark Trial and Appeal Board (TTAB) involving Combe's VAGISIL and VAGISTAT brands of feminine-care products. This win marks another milestone for Combe's enforcement efforts. Among other things, the TTAB recognized 'fame' of Combe's VAGISIL mark-as did the U.S. District Court for the Eastern District of Virginia after a full trial in a separate case-and the 'wide latitude of legal protection' that VAGISIL deserves.

The TTAB found that Combe established a likelihood of confusion between both of its VAGISIL and VAGISTAT marks with the challenged VAGISERT mark. In so doing, the TTAB held that 'vagi-' 'is not a generic term' for the vaginal care products at issue because consumers must use their 'imagination to connect' this prefix with the parties' goods. Given that, and the TTAB's rulings on the other relevant likelihood-of-confusion factors, the TTAB sustained Combe's opposition and refused the applicant's two VAGISERT applications.

This case is Combe Incorporated v. Marke Enterprises, LLC, Opposition Nos. 91214779 (parent) and 91215509 (TTAB 2021).