Wednesday, June 21, 2017

VAGISAN Not Confusable With VAGISIL for Feminine Products, Says TTAB

The Board dismissed this opposition to registration of VAGISAN for various feminine hygiene products, finding no likelihood of confusion with the registered mark VAGISIL for overlapping products. The Board, relying on proof of applicant's capacity to produce its products, also dismissed opposer's claim that applicant lacked a bona fide intent to use the mark when it filed the opposed application. Combe Incorporated v. Dr. August Wolff GmbH & Co. KG Arzneimittel, Opposition No. 91209708 (June 19, 2017) [not precedential] (Opinion by Judge Bergsman).

Fame: Opposer asserted that VAGISIL is a famous mark but its proofs fell short. It proved use of the mark since the 1970's, substantial nationwide sales, a 50% market share for its powders and cream, a 90% share for anti-itch wipes, and substantial advertising expenditures. However, the Board found that opposer's commercial success does not make the VAGISIL trademark famous. There was no testimony or evidence regarding the size of the market or the percentage of women who purchase intimate feminine produce, and no evidence comparing opposer's advertising expenditures to those of comparable products. Although opposer's sales and market share were impressive, the Board could only speculate about the actual impact of opposer's mark on consumer perception.

Strength:  The prefix VAGI- is "obviously and indisputably highly descriptive when applied to a vaginal product." Third party registrations and uses of VAGI-formative marks showed that the VAGI-prefix means "something related to intimate feminine hygiene products (i.e., vaginal)." Also, relevant consumers have been exposed to these marks and products. Although there was no evidence regarding the extent of use of those marks, the number of them was sufficient to support the finding that "the VAGI-prefix is used to create a trademark that suggests an intimate feminine product."

The strongly suggestive nature of the VAGI-prefix (i.e., referring to intimate feminine products) means that Opposer’s mark VAGISIL cannot bar the registration of every mark beginning with a VAGI-prefix used in connection with intimate feminine hygiene products despite the commercial strength of Opposer’s mark. Marks incorporating the VAGI-prefix, including Opposer’s mark VAGISIL, will bar the registration of marks as to which the resemblance to [Opposer’s mark] is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two."

Goods/Channels: Because the goods overlap, the Board must presume that the channels of trade and classes of purchasers are the same.

Sophistication of Customers: This factor favored applicant because consumers exercise considerable care in purchasing these products.

The marks: The Board noted that when the common portion of a mark is weak, consumers may distinguish the marks based on otherwise minor differences. SAN and SIL are not similar. Therefore the marks in their entireties are distinguishable.

Other factors: The fact that applicant opposed the registration of VAGISIL in the UK is irrelevant here. In any case, contrary positions taken in other proceedings merely add shade and tone to the total picture before the decision maker. The Board is directed to decide the case on the record before it, and that duty may not be delegated to another body.

Conclusion: Balancing the relevant du Pont factors, the Board found that VAGISAN is not likely to cause confusion with opposer's mark VAGISIL.

Bona Fide Intent to Use: Applicant had not advertised or sold its products in the United States, nor did it have a written marketing plan for the United States. However, applicant has been in business since 1998 selling its products in Germany and other countries. An applicant's capacity to make or market the involved goods is evidence supporting a bona fide intent to use. Moreover, applicant met with a US company to discuss distribution of the products in this country, contemporaneous with the filing of the subject application.

The Board concluded that applicant did have a bona fide intent to use the mark "in a real and legitimate commercial sense" with it filed the subject application. And so the Board dismissed this claim as well.

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TTABlog comment: The Board found the capacity to market a product to be evidence of bona fide intent in Swatch AG v. M. Z. Berger & Co., 108 USPQ2d 1463, 1477 (TTAB 2013), aff’d 114 USPQ2d 1892 and in Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1643 (TTAB 2007).

Text Copyright John L. Welch 2017.


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